Protection extended to prototypes

Roger Pearson looks at a ruling which should help safeguard those producing copyright designs from prototype models. A recent decision by Sir John Knox in the Chancery Division has left many who work in intellectual property feeling relieved.

Had the judge decided differently in the case, it could have caused considerable problems for anyone wanting to protect plans and designs produced before the commencement date of the Copyright Designs and Patents Act 1988, and which did not originated on the drawing board but were reduced to drawings after the initial creation of prototypes.

Knox's decision in WJ Morray Engineering v Pace Machinery Services & anor, has reinforced established case law relating to the status of plans drawn up on the basis of prototype models rather than overturning existing principles.

The action was over potato-bagging equipment which the plaintiff claimed was protected by copyright, and which it claimed the defendant had copied and was marketing.

The case was launched as a two-pronged action on copyright and breach of fidelity.

The plaintiff's legal team was led by Sara Ellacott, head of the intellectual property department at Nabarro Nathanson's Reading office.

Ellacott says that virtually at the eleventh hour she received notification from the defendant in the action, Rustons & Lloyd, that it was withdrawing all its evidence.

Instead it intended to argue the case on the grounds that the plans for the equipment in question, which were said to be copyright protected, had in fact been created after creation of a miniature prototype of the equipment.

In those circumstances, the defendant argued, there was no copyright in them to be protected.

The argument was that drawings created from a prototype did not have sufficient originality in themselves to merit copyright protection.

The judge, however, took the view such drawings could be copyright protected.

In his 61-page judgment Knox said that as long as there was a continuous process of design, copies in two-dimensional form of a three-dimensional prototype did have the requisite originality, even though they were intrinsically just the product of skill and labour in copying.

This was a result of a cont inuous design history being pleaded in relation to one of the machines. That view, says Ellacott, backed earlier decisions.

She points out that many designs begin life, not on the drawing board, but in prototype form, and the later production of drawings for them are more of a copying exercise than anything else.

Nevertheless, she says that if courts took the view that the reduction of a prototype to drawings was no more than a copying exercise involving little or no originality in itself – and, as such, not meriting copyright protection – life would become "pretty difficult" for those in the design world with drawings still protected under the transitional provisions of the 1988 Act.

Such a ruling could have destroyed valuable protection on a large number of designs which have resulted from this sort of process.

"It would be a pretty difficult world to live in if the arguments of the defendants in this case had succeeded," she says.