| Design Right — Infringement — Design document — Whether words “by making a design document recording the design for the purpose of enabling such articles to be made” requiring proof of particular state of mind in infringer — Copyright, Designs and Patents Act 1988, s 226(1)(b)
Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd and others [2007] EWHC 2875 (Ch)
Ch D: Lindsay J: 5 December 2007
It was a necessary component of a successful allegation within the documents class of s 226(1)(b) of the Copyright, Designs and Patents Act 1988 that it should be proved of the alleged infringer that at the material time what he did or authorised by way of the making of a design document recording the design in question was done with the purpose that articles to the design should thereby be enabled to be made.
Lindsay J so held when finding the third defendant, Stephen Cardy, personally liable in respect of infringement of design right relating to dense metal penetrator work by the first defendant, Ordnance Technologies (UK) Ltd, at the trial of claims brought by, Societa Esplosivi Industriali SpA, concerning various classes of intellectual property rights.
LINDSAY J said that the claimant was a manufacturer of explosives for both military and civil uses. It also manufactured munitions and weapon systems but at the relevant time it did not have expertise in designing warheads of the shaped charge variety. The third defendant was the only director and shareholder in the first defendant. A question arose, whether, leaving aside proof of a commercial purpose, the words “by making a design document recording the design for the purpose of enabling such articles to be made” in s 226(1)(b) of the 1988 Act required the proof of a particular state of mind in the infringer in the (unenlarged) documents class. It could perhaps be that the words did no more than describe the type of design document as to which the owner had an exclusive right of reproduction and which, accordingly, by way of s 226(3), a defendant must not himself reproduce for commercial purposes. That, though, would be an excessively tortuous reading. The more natural way of reading s 226(1)(b) was as it was in fact framed to read the words “for the purpose of enabling such articles to be made” to relate back so as to qualify the words “by making...” so that it was the making of the document which was required to have been made for the specified purpose. Phrases that would have avoided any assessment of the infringer’s subjective state of mind, as, for example, “of a kind such as would enable” or “such as to enable” the making of the design were not used. Moreover, the first specified purpose, “for commercial purposes”, plainly required a particular view to be demonstrated to be in the infringer and it would at least be consistent to require that the other specified purpose “for the purpose of enabling such articles to be made” should similarly require a state of mind to be demonstrated to have been or to be in the infringer. It was, in point of construction, a necessary component of a successful allegation within the documents class of s 226(1)(b) that it should be proved of the alleged infringer that at the material time what he did or authorised to be done by way of the making of a design document recording the design in question was done with the purpose in him that articles to the design should thereby be enabled to be made.
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