Copyright: Response Clothing Ltd v The Edinburgh Woollen Mill Ltd
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Jane Lambert
Intellectual Property Enterprise Court (HH Judge Hacon) Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC) (29 Jan 2020)
This was an action for infringement of copyright. The questions that His Honour Judge Hacon had to decide were whether copyright could subsist in the wave design fabric appearing in Annex 1 to his judgment in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 and, if so, whether it had been infringed by the sale of tops made from the fabrics shown in Annexes 3 to 6. The learned judge answered both questions in the affirmative. By so doing, he boldly departed from the decision of the House of Lords in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64. [1975] RPC 31 and offered his own interpretation of the words "a work of artistic craftsmanship" in s. 4 (1) (c) of the Copyright, Designs and Patents Act 1988.
The claimant is a company based in Oswaldtwistle that designs and markets clothing while the defendant is a substantial retailer with some 400 branches at tourist destinations around the UK. Between December 2009 and 2012, the claimant supplied the defendant with ladies' tops similar to those in Annex 1. In 2012 the claimant raised its prices. The defendant refused to place any more orders with the claimant at the new price. Instead, it circulated samples of the claimant's top or swatches of their fabric to other garment suppliers and invited them to tender. Between 2012 and 2015, orders were placed with Visage Ltd. for garments in the fabrics shown in Annex 3. Since 2015 the defendant has bought tops from a Vietnamese company called Cingo in the fabric shown in Annex 4 and from a Bangladeshi company called Bengal Knittex in Annexes 5 and 6.
The claimant's sole director and shareholder claimed to have thought up a number of design ideas before April 2012. One of those ideas was of a wave pattern running through the fabric of a ladies' jacquard top. He passed his idea on to a Korean company called GIN Textile which made the fabric for the garment in Annex 1. According to the president of GIN Textile, the wave fabric was the original work of the employee who had created it and had not been copied from any other design.
In determining whether copyright could subsist in the wave design fabric, the judge reviewed s.1 and s.4 (1) of the Copyright, Designs and Patents Act 1988. Focusing on the words "a work of artistic craftsmanship", he noted that neither the Copyright Act 1911 not the Copyright Act 1956 gave any indication as to what they mean. They were considered by the House of Lords in Hensher but, as he observed, that was not a straightforward decision, as had been acknowledged by the Supreme Court in Lucasfilm Ltd and others v Ainsworth and another [2012] 1 All ER (Comm) 1011, [2011] 3 WLR 487, [2011] FSR 41, [2011] 4 All ER 817, [2011] UKSC 39, [2011] Bus LR 1211, [2012] EMLR 3, [2011] ECDR 21, [2012] 1 AC 208. At first instance in Lucasfilm Ltd, and others v Ainsworth and another [2009] FSR 2, [2008] ECDR 17, [2008] EWHC 1878 (Ch), Mr Justice Mann had considered the following dicta of Mr Justice Tipping of the High Court of New Zealand in Bonz Group (Pty) Ltd. and another v Cooke [1994] 3 N.Z.L.R. 216:
"… [F]or a work to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal."
Mr Justice Mann had found those words helpful. He noted that Mr Justice Tipping had been prepared to combine the artistry of the designer with the craftsmanship of knitters and to conclude that the resulting sweaters fell were works of artistic craftsmanship, rejecting authorities which tended to suggest that they had to be the same person. Mr Justice Tipping's dicta had also been approved by Mr Justice Evans-Lombe in Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1) [2001] FSR 5. Applying Mr Justice Tipping's reasoning, Judge Hacon concluded at paragraph [41] of his judgment that the wave design fabric fell within the definition of a work of artistic craftsmanship.
However, even though Mr Justice Tipping's dicta had been approved by Mr Justice Mann and Mr Justice Evans-Lombe, it was inconsistent with Hensher. Lord Reid, Lord Simon and Viscount Dilhorne said that a work of artistic craftsmanship must be hand-finished. The House of Lords also appeared to think that such a work should have some artistic quality.
Hensher had been decided before Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society had harmonized member states' copyright laws. In Case C-310/17, Levola Hengelo BV v Smilde Foods BV EU:C:2018:899, [2018] WLR(D) 696, ECLI:EU:C:2018:899, [2018] Bus LR 2442, [2018] EUECJ C-310/17, the Court of Justice considered what could be protected by copyright law. It concluded that "a copyright work" can be any literary or artistic creation that is original and the expression of the author's intellectual creativity.
"Under art. 2 (1) of the Berne Convention, literary and artistic works include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression may be. Moreover, in accordance with art.2 of the WIPO Copyright Treaty and art.9 (2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which is mentioned in [6] of this judgment and which also forms part of the EU legal order (see, to that effect, judgment of 15 March 2012, Societa Consortile Fonografici (SCF) v Del Corso (C-135/10) EU:C:2012:140, [39] and [40]), copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such (see, to that effect, judgment of 2 May 2012, SAS Institute Inc v World Programming Ltd (C-406/10) EU:C:2012:259, [33])."
In C‑683/17 Cofemel – Sociedade de Vestuário SA, v G-Star Raw CV [2019] EUECJ C-683/17, ECLI:EU:C:2019:721, EU:C:2019:721, the Court referred to its decision in Levola and held that national law cannot impose a requirement of aesthetic or artistic value. Judge Hacon said at paragraph [59] that subject to his being satisfied that the wave fabric is original in that its design was its author's own intellectual creation, that design is a work within the meaning of Directive 2001/29. He added that if no sufficiently similar design existed before that fabric design had been created, it must have been the expression of the author's free and creative choices. He directed himself at [61]:
"Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU, see Marleasing SA v La Comercial Internacional de Alimentación SA (Case C-106/89) EU:C:1990:395; [1990] ECR I-4135."
He concluded at paragraph [64]:
"I will adopt the Bonz Group summary definition of a work of artistic craftsmanship with clarifications which I believe to be consistent with the definition: (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed. No binding English authority has been drawn to my attention which prevents me from construing s.4 (1) (c) in that way. Accordingly, the Wave Fabric is a work of artistic craftsmanship."
In the absence of any evidence of an antecedent fabric design like the wave design, the judge accepted the evidence of GIN Textile's president that the wave fabric design was original in the sense of the fabric designer's intellectual creation,
Having found that copyright subsists in the wave fabric design as an original artistic work it followed that GIN Textile was the first owner of that copyright pursuant to s.11 (2). It assigned that copyright to the claimant by an assignment dated 23 June 2016.
The learned judge compared each of the fabrics in Annexes 3, 4. 5 and 6 and held at [74] that the similarities were sufficient for him to infer that in each case there was direct or indirect copying of the wave design fabric. He added at [77]:
"The design of the Wave Fabric was not copied in every detail in any of the accused fabrics, but in each case, it has been reproduced closely enough for a substantial part of the design of the Wave Fabric to have been copied. I am satisfied that in every case the intellectual creation of the unidentified GIN Textile employee was taken. The Visage, Cingo and Bengal Knittex Fabrics are all infringing copies of the Wave Fabric"
The claimant had argued that the defendant had infringed its copyright by issuing copies of the copyright work to the public contrary to s.16 (1) (b) of the 1988 Act. The antecedent provision in the Copyright 1956 was s.3 (5) (b) which restricted "publishing the copyright work" to the copyright owner. In Infabrics Ltd v Jaytex Ltd (No.1) [1982] AC 1, [1981] 2 W.L.R. 646, [1981] 1 All E.R. 1057, [1981] 3 WLUK 188, [1981] E.C.C. 405, [1981] F.S.R. 261, 1984] R.P.C. 405, (1981) 125 S.J. 257, [1981] C.L.Y. 325, the House of Lords had held that in respect of an artistic work "publishing" meant making public a work hitherto unpublished in the UK. Neither party drew the judge's attention to that authority.
Judge Hacon reached the same conclusion but by a different route. He held that s.16 (1) (b) and s.18 of the 1988 Act have to be construed in accordance with Directive 2001/29. He referred to Judge Birss's decision in Abraham Moon & Sons Ltd v Thornber and others [2012] EWPCC 37 (5 Oct 2012) and Case C-16/03) Peak Holding AB v Axolin-Elinor AB [2005] ETMR 28 before concluding that the m\rketing and distribution of the claimant's tops exhausted the exclusive right of issuing copies and that there had been no primary infringement.
There was, however, ample evidence of secondary infringement. The judge said at [102]:
"In my view, the similarities between the Wave Fabric on the one hand and each of the Visage, Cingo and Bengal Knittex Fabrics on the other, would have been apparent to a reasonable person and would have led that person to believe that dealing in the latter fabrics would be in breach of rights likely to be held by Response. EWM's sales of the Visage, Cingo and Bengal Knittex Fabrics were all secondary infringements."
This is a very interesting and closely reasoned judgment and if it is upheld it will increase significantly the scope for copyright protection of fabric and possibly other product designs. Parts of his judgment were surprising. For example, his finding that the wave design must be original if neither party could find an antecedent fabric design and, of course, the sidestepping of Henshaw. Should anyone wish to discuss this article or copyright generally, I can be contacted on +44 (0)20 7404 5252 during British office hours and at all other times through my contact page.
"Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU, see Marleasing SA v La Comercial Internacional de Alimentación SA (Case C-106/89) EU:C:1990:395; [1990] ECR I-4135."
He concluded at paragraph [64]:
"I will adopt the Bonz Group summary definition of a work of artistic craftsmanship with clarifications which I believe to be consistent with the definition: (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed. No binding English authority has been drawn to my attention which prevents me from construing s.4 (1) (c) in that way. Accordingly, the Wave Fabric is a work of artistic craftsmanship."
In the absence of any evidence of an antecedent fabric design like the wave design, the judge accepted the evidence of GIN Textile's president that the wave fabric design was original in the sense of the fabric designer's intellectual creation,
Having found that copyright subsists in the wave fabric design as an original artistic work it followed that GIN Textile was the first owner of that copyright pursuant to s.11 (2). It assigned that copyright to the claimant by an assignment dated 23 June 2016.
The learned judge compared each of the fabrics in Annexes 3, 4. 5 and 6 and held at [74] that the similarities were sufficient for him to infer that in each case there was direct or indirect copying of the wave design fabric. He added at [77]:
"The design of the Wave Fabric was not copied in every detail in any of the accused fabrics, but in each case, it has been reproduced closely enough for a substantial part of the design of the Wave Fabric to have been copied. I am satisfied that in every case the intellectual creation of the unidentified GIN Textile employee was taken. The Visage, Cingo and Bengal Knittex Fabrics are all infringing copies of the Wave Fabric"
The claimant had argued that the defendant had infringed its copyright by issuing copies of the copyright work to the public contrary to s.16 (1) (b) of the 1988 Act. The antecedent provision in the Copyright 1956 was s.3 (5) (b) which restricted "publishing the copyright work" to the copyright owner. In Infabrics Ltd v Jaytex Ltd (No.1) [1982] AC 1, [1981] 2 W.L.R. 646, [1981] 1 All E.R. 1057, [1981] 3 WLUK 188, [1981] E.C.C. 405, [1981] F.S.R. 261, 1984] R.P.C. 405, (1981) 125 S.J. 257, [1981] C.L.Y. 325, the House of Lords had held that in respect of an artistic work "publishing" meant making public a work hitherto unpublished in the UK. Neither party drew the judge's attention to that authority.
Judge Hacon reached the same conclusion but by a different route. He held that s.16 (1) (b) and s.18 of the 1988 Act have to be construed in accordance with Directive 2001/29. He referred to Judge Birss's decision in Abraham Moon & Sons Ltd v Thornber and others [2012] EWPCC 37 (5 Oct 2012) and Case C-16/03) Peak Holding AB v Axolin-Elinor AB [2005] ETMR 28 before concluding that the m\rketing and distribution of the claimant's tops exhausted the exclusive right of issuing copies and that there had been no primary infringement.
There was, however, ample evidence of secondary infringement. The judge said at [102]:
"In my view, the similarities between the Wave Fabric on the one hand and each of the Visage, Cingo and Bengal Knittex Fabrics on the other, would have been apparent to a reasonable person and would have led that person to believe that dealing in the latter fabrics would be in breach of rights likely to be held by Response. EWM's sales of the Visage, Cingo and Bengal Knittex Fabrics were all secondary infringements."
This is a very interesting and closely reasoned judgment and if it is upheld it will increase significantly the scope for copyright protection of fabric and possibly other product designs. Parts of his judgment were surprising. For example, his finding that the wave design must be original if neither party could find an antecedent fabric design and, of course, the sidestepping of Henshaw. Should anyone wish to discuss this article or copyright generally, I can be contacted on +44 (0)20 7404 5252 during British office hours and at all other times through my contact page.
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