I Don't Have to Show You Any Stinkin' Badges

In John Huston's 1948 movie, "The Treasure of the Sierra Madre," the putative heroes come across some bandits. One of the bandits, the character Gold Hat, played by Alfonso Bedoya, claims that his group of bandits are Mexican police. Humphrey Bogart then asks to see their badges if they are police. Bedoya then responds in one of the great lines of film history: “Badges? We ain't got no badges. We don't need no badges. I don't have to show you any stinking badges! Here is a link to a video clip of the scene.

Last week, there was an interesting opinion issued by Justice Rimmer of the English High Court, Chancery Division, involving flashing novelty badges. The opinion is here, from the fantastic BAILII website of UK opinions. The badges do indeed flash as can be seen on plaintiff's website here, and consist of messages like "Happy Birthday," "Princess" (but no Di), and "16 Today." Each badge has a distinctive style, some with "flamboyant" script, and all with six flashing, battery powered LED's. The badges are secured to garments by magnets. Defendant's badges were examples of what the Eleventh Circuit would call "virtual identicality." (Justice Rimmer thankfully describes them as being "virtually identical.").

The case presents issues involving the intersection of design law and copyright law, as well as a peculiar feature of the UK copyright act, Section 51:

"51. Design documents and models
(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 or communicate to the pubic, 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 case centered on the outline of the badge and not the surface decoration. The outline of the badge might be protected under a separate design right, but in this case registration for such protection was not sought. Plaintiff claimed that nevertheless, the outline too was an artistic work with the meaning of the copyright act, while defendant asserted that Section 51 provided it with a defence to the copyright infringement claim. After a wonderful review of the parties' arguments and the various opinions by the Justices of the Court of Appeals in the leading case of Lambretta Clothing Co. Ltd v. Teddy Smith (UK) Ltd., [2005] RPC 88, Justice Rimmer sided with plaintiff and found Section 51 inapplicable.

In the U.S., the result would have been the same, I think, but the analysis would, I think, have been different. Thanks to the enlightened decision of Register of Copyright Marybeth Peters (60 Fed. Reg. 15605, March 24, 2005), applicants for copyright registration need no longer choose between copyright and design patent protection. Under the U.S. Copyright Act, there is no analog to Section 51 of the UK statute, so the analysis would have been simply whether the outline for the badge was original. The closest provision in the U.S. statute to Section 51 of the UK statute is Section 113(b):

"(b) This title does not afford, to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title."

I doubt though, whether a decorative badge constitutes a useful article, and thus whether Section 113(b) would prevent the copyright owner in the design of such badge from enjoining others from manufacturing the badges, as defendant appearently argued in the UK case.