England and Wales High Court (Chancery Division) Decisions

Mackie Designs Inc v. Behringer Specialised studio equipment (UK) Ltd, Ulrich Bernhard Behringer & Behringer Spezielle Studiotechnik GmbH [1999] EWHC Ch 252 (22nd February, 1999)

CH 1997 M 6568

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Mr Justice Pumfrey

BETWEEN

I direct pursuant to RSC Order 68 rule 1 that no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.

DATED 23 April 1999

1. This is an action for infringement of the literary or alternatively the artistic copyright which is alleged to subsist in circuit diagrams of a piece of electrical equipment called a mixer. The circuit diagrams were drawn by a citizen of the United States in 1993. The second Defendant is alleged to have obtained an example of the plaintiff’s mixer, and to have analysed the circuits contained in it to produce a "net list" of the components and their interconnections. From the net list, it is alleged that a computer program was used to produce layouts for circuit boards to be manufactured by the third Defendant. The alleged infringements are alleged to be the circuit boards manufactured by the third Defendant from the net lists.
    
2. On 15 December 1998, Master Moncaster directed two questions of law to be decided:

1. Whether the circuit diagrams relied on by the Plaintiff are design documents within the meaning of section 51 of the Copyright Designs and Patents Act 1988; ("the CDPA") and
2. If so, whether the Defendants and each of them have a defence to copyright infringement by reason of section 51 of the CDPA.

If the first question is answered in the affirmative, the Plaintiff’s action is to be dismissed. If it is answered in the Plaintiff’s favour, then the Defendants’ defence based on section 51 of the CDPA is to be struck out. The background facts upon which the validity of the section 51 defence is to be decided are those deposed to by the Plaintiff’s expert, Mr Epton.

3. The CDPA introduced a new right into the law of the United Kingdom, called design right. The unsatisfactory history of copyright in the industrial context is too well known to require repetition here. Design right was introduced for the purpose of providing protection of comparatively brief duration to designs which had been applied industrially. The issue in the present case is of some importance for two reasons. First, this is the first case concerning copyright in circuit diagrams which has arisen in respect of diagrams made after the coming into effect of the CDPA in which the acts of infringement involve making an article to the design or copying something made to the design. Second, it is of importance because if the copyright in circuit diagrams originating in the US is not infringed by acts of the kind complained of here, American authors of circuit diagrams have no protection in the United Kingdom against persons copying their circuits at all unless they enjoy patent protection, because the only other form of protection, by means of registered design, is certainly not available. If, on the other hand, copyright protection is available the duration of this copyright (if literary) may be the life of the author and seventy years thereafter and (if artistic) for 25 years from first marketing rather than the 15 years from first recording or marketing as in the case of design right.

4. The circuit diagrams are exhibited to the second Defendant’s affidavit as UBB2. They are circuit diagrams which follow the usual conventions. Conventional signs are used for discrete components such as diodes, light-emitting diodes, resistors, variable resistors, capacitors, jack sockets and the like. Certain components, such as operational amplifiers which come in packages, are depicted by the conventional sign for an amplifier accompanied by a recognised component number. Some interconnections are shown explicitly by continuous lines; others are shown implicitly.
    
5. Mr Epton (whose evidence it is common ground I must accept for the purpose of the following discussion) divides the process of design of an electronic device into a number of stages: the production of a "functional requirement specification", the drawing of the circuit diagram or diagrams; the mechanical design of the device; the design of the printed circuit board; the making and testing of a prototype or prototypes and modification of the preceding design materials in response to the results of the tests; and the preparation of final production drawings.
    
6. It is not in dispute that what a circuit diagram shows is (1) the components that are to be present in the device and (2) the manner in which they are to be electrically connected together. Any device which contains these components connected together in this way will be a circuit according to this diagram, regardless of its physical appearance. The physical article must contain electrical components having the desired characteristics (regardless of their appearance or their physical relationship one with another) connected together by electrical connections (of whatever sort: they may be tracks on a printed circuit board, or wires) which fulfil the requisite electrical function. That is all. The circuit diagram does not finally determine either the mechanical design, or the design of the printed circuit board, for both of which a wide range of possibilities for implementing a given circuit exists.
   

7. There is no doubt that circuit diagrams are artistic works (see section 4 CDPA). The definition of ‘artistic work’ contained here is in some respects even wider than that in the Copyright Act 1956: see the judgment of Jacob J in Anacon Corporation Ltd v Environmental Research Technology Ltd [1994] FSR 659, a case concerned with circuit diagrams made before the CDPA came into effect. Section 51 did not apply to the drawings with which Jacob J was concerned at the time of the hearing before him by virtue of paragraph 19 of Schedule 1 to the CDPA.
   
8. In that case, Jacob J held that a circuit diagram is also entitled to copyright as a literary work, being, in effect, a list of components together with a special notation for their interconnection. In coming to this conclusion, Jacob J based himself on section 178 of the CDPA:

‘writing’ includes any form of notation or code, whether by hand or otherwise and regardless of the method by which or medium in or on which it is recorded and ‘written’ shall be construed accordingly.

Jacob J’s conclusion has been criticised by Laddie J in Electronic Techniques (Anglia) Ltd v Critchley Components Ltd. [1997] FSR 401 at 412-3. Laddie J takes the view that only one copyright can subsist in a given work: either information is communicated graphically or it is communicated by words. Happily, I do not have to decide whether or not Jacob J is correct, or to decide whether ‘any form or notation or code’ can include a drawing made up entirely of conventional signs. I do not have to decide the issue because section 51, to which I now turn, plainly relates to all relevant copyrights.

9. Section 51 of the CDPA is as follows:

   Design documents and models

   51.—(1) It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.

   (2) Nor is it an infringement of the copyright to issue to the public, or include in a film, broadcast or cable programme service, anything the making of which was, by virtue of subsection (1), not an infringement of that copyright.

   (3) In this section—

   "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and

   "design document" means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer, or otherwise.

   The definitions of ‘design’ and ‘design document’ echo the definitions relating to design right in sub-s 213(2) and sub-s 263(1). The mutual exclusivity of design right protection and copyright protection is created by section 236:

   236. Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work.

10. The basic question is whether a circuit diagram is a design document. It is as usual helpful to write out the definition substituting the definition of ‘design’:

    "design document" means any record of a design of any aspect of the shape or configuration (whether internal or external) of the whole or part of any article, other than surface decoration, whether in the form of a drawing, a written description, a photograph, data stored in a computer, or otherwise.

    The same definition of ‘design’ is used for the purpose of design right in section 213 of the CDPA. Design right is conferred on ‘designs’ other than those which are disqualified by the criteria which are set out in sub-section 213(3). In so far as exploitation by the manufacture of industrial articles is concerned, the definition is used to demarcate the respective territories of design and copyright protection.

11. It seems to me that at first sight the answer to the basic question is almost too clear for argument if one gives the words ‘aspect of the … configuration…’ their ordinary English meaning. Webster gives two relevant primary meanings:

    (a) Relative arrangement of parts or elements as (1): SHAPE (2) contour of land (3): functional arrangement

    (b) something (as a figure, contour, pattern or apparatus) produced by such an arrangement.

    The configuration of an article includes its relative arrangement of parts or elements. An ‘aspect’ of such an arrangement can be readily identified when encountered. So far as an electric circuit is concerned, the components present and their interconnection are, in my view, plainly an aspect of the structure of the article. Of course they are not the whole story, but they are, in fact, the most important, being that which differentiates one electronic circuit from another in terms of function. I do not think it matters whether the circuit diagram is correctly to be characterised either as a drawing or as a written description or as having aspects of both. The words of the definition which characterise the nature of the record constituting the design document ("whether in the form of…") are plainly not limiting but exemplary of possible ways in which the record of an aspect of a design may be made.

12. Mr Whittle submits that the meaning of the word ‘configuration’ which I have set out above is too wide. He says that it takes its colour from the word ‘shape’: and that it just means ‘physical geometry’. My difficulty with that is that ‘physical geometry’ is just another term for ‘shape’. He reinforces his submission by saying that since (as I have observed above) section 51 and section 213 should be complementary, guidance is to be obtained from considering the test for infringement of design right. Since the infringing act is to ‘make an article according to the design’ Mr Whittle submits that the test for deciding whether or not an article is made according to the design should be looked at to throw light on what the design consists of. He says that the test is essentially one of comparing shape. He refers to Parker v Tidball [1997] FSR 680 in the judgment of Mr Englehart QC at pages 703 and 706 and the judgment of Aldous J (as he then was) in C & H Engineering v F Klucznik & Sons Ltd [1992] FSR 421. In both cases the relevant comparison was primarily visual and related to geometrical shape.
    
13. Furthermore, Mr Whittle submits that there must be a single design recorded in a design document. He says, in effect, that a circuit diagram contains many potential designs of articles but says nothing about their shape: or alternatively that it is merely a specification which the circuit board has to achieve. He says that it is really no different in principle from a marketing specification ("pocket sized and of interest to eighteen-year-olds…"): and a marketing specification could not form an aspect of a design.
    
14. It seems to me that these arguments all depend upon the assumption that "configuration" means no more than "shape". In my view this assumption is not correct. While ‘design’ is concerned with the configuration of articles, it includes features of that configuration which could not be ascertained without careful and detailed examination. In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 Laddie J was concerned with a series of designs for soft contact lenses. The plaintiffs in that case were suing on a individual designs of a series of soft contact lenses of a particular overall diameter, differing only in their power, and in the detailed dimensions required to achieve that power. He said this:

    "At one stage during the argument, I expressed doubt as to whether the detailed dimensions on which the plaintiffs were relying could really be ‘designs’ within the meaning of the Act. For example, the –3.00 dioptre and –3.5 dioptre lenses in the plaintiffs’ D1–Edge III Thin range would appear to any normal observer to be identical. In fact, it would take sophisticated measuring equipment in the hands of a skilled technician to tell them apart. Surely they are a single design. Mr Waugh said this was not so. He said that the use of dimension is just another way of describing or defining the shape or aspect in issue. He argued that there is nothing in the Act to indicate that a shape defined by such detailed dimensions was excluded from protection. On reconsideration, I think Mr Waugh is right. This is one of those areas in which it is necessary to bear in mind that the design right provisions are not derived from the Registered Designs Act 1949. By section 1(1) of the latter Act, the word "design" is defined as meaning

    "features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye."

    Furthermore, the 1949 Act excludes from consideration features of shape or configuration which are dictated solely by the function which the article has to perform. As that Act and numerous decisions under it demonstrate, appearance is everything where registered design law is concerned. Althought the same word "design" is used in relation to design right, its meaning is different. There is no reference in the relevant provisions of the 1988 Act to features which appeal to and are judged by the eye. The Act was intended to give protection to wholly functional designs. The worth and ingenuity of a functional design over designs of similar overall appearance may be due to its detailed relevant dimensions. Its detailed shape will, because of the different dimensions, be different. The eye may not be able to distinguish the shapes but that does not mean they are not different. That being so, it seems to me that it is not possible to exclude detailed dimensional shapes on the ground that they are not designs. This does not mean that mere changes in scale produce different designs.

    It seems to me that the approach underlying these words applies with equal force when one is considering that aspect of the design of an article (a printed circuit board) which gives it its particular merit as a piece of electronics, that is, the components present and their interconnection. This aspect of the design does not derive its merit from the particular physical layout of the components, or their appearance, or their colour. It derives its merit from the selection of the components and the manner in which they are to be interconnected. To say that a central feature of a particular piece of electronic circuitry is not an aspect of its design is in my judgment artificial and wrong. Essentially, I suppose that the answer to Mr Whittle’s point can be summarised by observing that it all depends what is meant by shape. I am sure that if infringement of the design right in an electronic circuit board were alleged the court would be bound to examine the similarities between the plaintiff’s and defendant’s circuits. Indeed, it would be strange if the court examined anything else. Since the design of the circuit would encompass the circuit design divorced from its particular layout on the board, that would be a matter which would necessarily have to be examined. I think that to adopt Mr Whittle’s approach and approach the question of subsistence and disqualification from copyright by analysis of existing decisions on infringement of design right puts the cart before the horse.

15. There are a number of more general considerations which in my judgment support this conclusion. It was clearly the intention of the framers of the CDPA that copyright protection was no longer to be available to what can be compendiously described as ordinary functional commercial articles. This principle applies to all industrially produced articles whether they be pig fenders, cases for mobile telephones or printed circuit boards. I would in any event lean against a construction of section 51 which introduced copyright as an important consideration in the protection of industrially produced articles, the more so in a case in which it is arguable that one of the relevant copyrights endures for the life of the author and seventy years beyond his death. But in my judgment the simple construction of section 51 is the correct one. The first preliminary issue must be decided in favour of the defendants.
    
16. The answer to the second issue can only be in the plaintiff’s favour if it is possible to find a pleaded act of infringement of which the plaintiff complains which is not making an article to the design or copying an article made to the design. The Statement of Claim alleges indirect copying. It is said that the Defendants’ circuit boards reproduce the circuit diagrams in a material form, and the Plaintiff relies on the substantial similarity of (i) the components and (ii) their interconnections. These are precisely the design which I have identified in the circuit diagrams which fall within section 51. Mr Whittle submits that the story of what the defendants did is incomplete. They admit for the purpose of this application that they purchased one of the Plaintiff’s circuit boards to copy it; and they admit taking the circuit, or a substantial part of it, and using it in their own board. Given the meaning which I have given to the word "design" it seems to me that since the since the Plaintiff’s circuit board has the circuit design shown in the circuit diagrams, the Defendants have copied an article made according to the design. If they effectively regenerated the design in the form of a net list, then they made an article according to that design. Either way, they have a defence under section 51. In my judgment the concluding words of sub-section 51(1) relate to any act of copying the article whatever the result of the copying, and, in particular mean that the Defendants’ net list and circuit diagrams cannot be infringement of the copyrights subsisting in the Plaintiff’s circuit diagrams. I agree with Laddie J’ s decision on this point in the Teletubbies case, BBC Worldwide Ltd v Pally Screen Printing [1998] FSR 665 when he accepted that section 51(1) had this effect. Although in that case Laddie J needed to find only that the point was arguable, it seems to me that he came to a clear construction for reasons which I find compelling.

16. The Defendants contend that this case is not suitable for resolution under Order 14A. I have left this question until last in my judgment, although it is logically anterior to providing an answer to the issues. I consider that since there is no relevant difference between the parties on the relevant facts it is an appropriate question for resolution now. Had a question of technical appreciation of the actual circuits in question arisen, the case could not have been suitable for Order 14A, but since the only technical question arose on the nature of a circuit diagram and electronic circuits and no further evidence could carry the matter any further I think that it is necessary and desirable to dispose of this issue at this stage.

17. In the result, the action must fail. I do not come to this conclusion with any great enthusiasm, but the real anomaly, if anomaly it be, is that citizens of the United States of America are not entitled to design right under the CDPA unless habitually resident in the European Union or one of the comparatively limited list of qualifying countries: see section 217 of the CDPA and the Design Right (Reciprocal Protection) (No 2) Order 1989. The scope of the copyright protection to which they are entitled has been legislatively adjusted so as to complement the existence of a design right which they do not possess.