Aesthetic appeal and craftsmanship are not enough: WaterRower fails to secure copyright protection as a UK work of artistic craftsmanship
The term "artistic craftsmanship" has no statutory definition under UK copyright law – a position that has only been made more challenging by a conflict between EU and UK case law in this area.
In this hotly anticipated judgment1, the Intellectual Property Enterprise Court (IPEC) sought to determine what it means to be a work of artistic craftsmanship in the context of s 4(1)(c) of the Copyright Designs and Patents Act 1988 (CDPA).
Ultimately, the court held that the WaterRower Machine was designer John Duke's own intellectual creation and an original work within the meaning of the InfoSoc Directive, but did not meet the threshold for a work of artistic craftsmanship under the CDPA. This has created a distinctive UK/EU divide when it comes to copyright protection of applied art works.
Background
WaterRower UK Ltd (WaterRower), the claimant, has been making its rowing machines for several decades. The product at issue in this claim, a water-resistance rowing machine (the WaterRower Machine) had been designed by John Duke to mimic the aesthetics and feel of wooden scull-style rowing boats. Liking Ltd (Liking) also makes water-resistance rowing machines under the brand "Topiom" (the Topiom Machine).
WaterRower issued proceedings against Liking in the UK for copyright infringement of its WaterRower Machine (in the absence of other IP rights available to protect the WaterRower Machine). Liking denied that copyright could subsist in the WaterRower Machine but admitted that if copyright did subsist their Topiom Machine copied the WaterRower Machine.
Copyright subsistence
The key question for the court in WaterRower was how to assess what constitutes a work of artistic craftsmanship in accordance with s 4(1)(c) of the CDPA. In making this assessment, the court recognised that the meaning of a "work of artistic craftsmanship" and the limits of its application involve a difficult tension between the operation of the CDPA and EU law.
This tension stems from two CJEU decisions: Cofemel and Brompton Bicycle that have produced conformity issues with UK law when applied to works of applied art. In Cofemel, the CJEU confirmed that the "author's own intellectual creation" test that determines whether a work is original, applies to applied art as well as other works. Under this test the work must reflect the personality of the author as an expression of their free and creative choices. The constraint added by Brompton Bicycle is that if the subject matter has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work. Under EU law, only these conditions apply and there can be no additional requirement, for example, for aesthetic appeal or artistry.
In the UK, under the CDPA, copyright subsists in certain defined categories of works. It is a closed list approach. Works of applied art usually fall under the category of artistic works and within that, works of artistic craftsmanship. Leading, cited copyright texts take differing views on how to approach the assessment of what is a work of artistic craftsmanship. The UK's House of Lords authority: Hensher appears to require something beyond "eye appeal" for there to be artistry in the craftsmanship of a work. However, the decision is widely acknowledged to contain several inconsistencies and differing analyses such that it is generally accepted that there is no unifying binding principle of law (to be taken from Hensher). To navigate these challenges, many UK cases have been guided by New Zealand case, Bonz which interpreted "artistic craftsmanship" in relation to a work to mean it must be possible "fairly to say that the author was both a craftsman and an artist" who produces something with "aesthetic appeal" and the subject matter must have "some artistic quality".
Several UK cases decided after Cofemel have taken the approach of skirting around these obvious conformity issues. In this case about a rowing machine, many "spectators" were looking to the IPEC for some firm navigation and a steadying of the waters.
The court's approach
The court's starting position was to consider the Marleasing2 case which sets out the principle that domestic legislation, such as that implementing the InfoSoc Directive, must be construed, as far as possible, in conformity with that directive3. Liking's position was that this principle did not allow the Judge to distort the meaning of domestic legislation and also that it was not possible to reconcile Cofemel with UK case law, including Hensher4. Acknowledging this difficulty, the following approach taken by Hacon J in Response5 of seeking to marry the EU and UK frameworks was followed:
- In Response, the court conducted an initial assessment of whether the work is original and entitled to protection under the InfoSoc Directive. If a work is not original, copyright cannot subsist and it would not be necessary to consider the question of artistic craftsmanship; and
- Once it was decided that the work was original under the InfoSoc Directive, the summary definition of work of artistic craftsmanship from Bonz was applied, with some clarifications. On the facts in Response, the court found the design, additionally, to be a work of artistic craftsmanship under UK law.
Application to the WaterRower Machine
Considering the overall shape (rather than the component elements) of the WaterRower Machine, the Judge established that the WaterRower Machine was original, as it amounted to Mr Duke's own intellectual creation and was an original work under the InfoSoc Directive. However, unlike in Response, the WaterRower Machine was not entitled to copyright protection as a work of artistic craftsmanship under s 4(1)(c) CDPA on the application of Hensher and the line of related authorities.
Although Mr Duke was considered to be a craftsman who had used his skills to create a work with aesthetic appeal, the Judge did not consider that he had the "character of an artist craftsman" in creating the work. In reaching this conclusion the Judge relied upon the fact that contemporaneous evidence suggested that Mr Duke's primary driver was to create a commercially successful product, rather than to "produce something of beauty which would have an artistic justification for its own existence" (as per Hensher). The machine had aesthetic appeal but not artistic quality and the Judge did not accept, in the alternative, that Mr Duke was an "artist-craftsman" (under Bonz).
Infringement and Liking's counterclaim
As Liking had admitted that the Topiom Machines are copies of the WaterRower Machine, the Judge found that copying had been proved. However, given the finding that copyright did not subsist in the WaterRower Machine, this finding had no impact.
Liking also counterclaimed for a declaration of non-infringement, on the basis that no copyright subsisted in the WaterRower Machine. When deciding whether to grant a negative declaration, the court must find that the declaration needs to have a purpose that is useful to help ensure the aims of justice. Liking sought the negative declaration for the purposes of certainty in the market place. However, the Judge noted that his judgment would achieve the same aim and so declined to grant the declaration sought.
Procedural points
Towards the end of the trial, there was a dispute between the parties relating to the copyright works being asserted in the proceedings. Liking argued this did not include an early prototype of the WaterRower Machine, whereas WaterRower claimed it did. The dispute arose from the pleadings and common definitions not being adopted by the parties. While the Judge ultimately concluded that the prototype was included in the claim, it underlines the importance of clearly and precisely identifying the copyright works claimed, and where any party is unclear or disagrees with a pleaded position, that clarification should be sought early in the case. The court may not accept such arguments later on in the proceedings.
After the trial concluded but before the judgment was handed down there were two interposing decisions which related to certain aspects of this case: Equisafety6 and Kwantum7. While the Judge asked the parties to provide post-trial submissions on these cases, he ultimately reached the decision that they supported and did not change his decision.
Comment
This is likely to be a disappointing decision for many designers, who may have hoped that the UK courts would follow Cofemel, enabling them to use copyright to protect a wider variety of works. However, as a lower court, the IPEC's hands were tied by the requirements of the CDPA and the UK authorities on works of artistic craftsmanship. If WaterRower appeals this decision to a higher court and/or if Parliament intervenes to make any changes to UK copyright law, we may yet obtain further clarification in this still somewhat unresolved area.
One of the factors that counted against Mr Duke was the fact the contemporaneous evidence suggested creating a commercially successful product was Mr Duke's priority, rather than creating an artistic work. However, often a product is commercially successful because it has aesthetic appeal and artistry and, creators can only continue to create artistic works if they can also be commercialised. This aspect of the case emphasises the need for creators to record all of the factors that feed into the creation of a work during the creative process – both commercial and aesthetic/artistic. While this may seem artificial, failing to do so may result in an inability to protect a work in the future.
Going forward, artists, designers and companies seeking to exploit applied art works may find it much harder to protect their works in the UK. Given that EU law does not impose the same standards for artistic works, creators may choose to prioritise EU markets.
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