Copyright - WaterRower (UK) Ltd v Liking Ltd.
Intellectual Property Enterprise Court (Mr David Stone) Waterrowe (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC) 5 Aug 2022
This was an application by the defendant to strike out or, alternatively, obtain summary judgment to dismiss, an action for copyright infringement. The defendant also applied for summary judgment on its counterclaim for a declaration that the work in which copyright was alleged to subsist was not a work of artistic craftsmanship. The claimant claimed that copyright subsisted in its water resistance rowing machine shown above as a work of artistic craftsmanship and that the defendant had infringed that copyright by making copies of the claimant's machine. The defendant admitted copying but denied the subsistence of copyright in the machine. The action and counterclaim therefore depended on the single issue of whether the machine was or was not a work of artistic craftsmanship. The applications came on before Mr David Stone sitting as a deputy judge of the High Court on 28 July 2022. At para [81] of his judgment which he handed down on 5 Aug 2022 he rejected the applications and gave directions for trial (see WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC) (5 Aug 2022).
Design Protection
Before 31 July 1989 functional designs in the UK were protected by artistic copyright. Copyright could subsist in design drawings as original artistic works pursuant to s.3 (1) (a) of the Copyright Act 1956 and such copyright could be infringed by copying an article made to such drawings. Since copyright would last for the life of the author plus 50 years the designs of such articles as a motor vehicle's exhaust pipe received more extensive protection than life-saving pharmaceuticals or advanced electronic equipment.
That anomaly was brought to an end by the Copyrights, Designs and Patents Acy 1988. S.51 (1) of that Act provided:
The reason for that section is that Part III of the Act protects designs in the United Kingdom with a new intellectual property right known as unregistered design right.
Works of Artistic Craftsmanship
It will be noted that s.51 (1) applies to design documents and models recording or embodying designs for things other than artistic works or typefaces. That is because s.4 (1) (c) of the 1988 Act includes works of artistic craftsmanship within the definition of "artistic work". The statute provides no guidance as to what is meant by the words "work of artistic craftsmanship" but the issue was considered by the House of Lords in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] A.C. 64 | [1974] 2 W.L.R. 700 | [1974] 2 All E.R. 420 | [1974] 4 WLUK 83 | [1974] F.S.R. 173 | [1975] R.P.C. 31 | (1974) 118 S.J. 329 Lord Reid defined a "work of artistic craftsmanship" as a work of craftsmanship which any substantial section of the public genuinely admires and values for its appearance and gets pleasure and satisfaction, whether emotional or intellectual, from looking at. Lord Morris and Viscount Dilhorne suggested a work of craftsmanship which is artistic adding “artistic” needs no interpretation since it is an ordinary English word, although it means more than mere appeal to the eye. In their view, it was a question of fact to be decided in the light of the evidence. Lord Simon said that "works of artistic craftsmanship" is a composite phrase which must be construed as a whole in the light of the social and legal circumstances surrounding the Copyright Act, 1911, and in particular of the arts and crafts movement associated with William Morris, Ruskin and others. He offered the following test: "is this the work of one who was in this respect an artist-craftsman?" but continued that that is a matter of evidence, and expert evidence is the most cogent. Lord Kilbrndon said that the meaning of "artistic" is a matter of law for the judge not witnesses, although it is not possible to define the adjective. The first essential of a work of art is that it should have come into existence as the product of an author who is consciously concerned to produce one and that a decision on artistic merit is not required.
The Work
The work in which copyright was claimed was the water-resistant rowing machine known as the "WaterRower". It had been designed by one John Duke in the USA between 1985 and 1987. The machine did not qualify for design right protection because Mr Duke was not a qualifying individual under Part III of the Act and his design came into existence before the commencement of the Copyright Designs and Patents Act 1988. The only way that the work could be protected was as a work of artistic craftsmanship.
Mr Duke had been a member of the US national rowing team. He held a science degree from Yale and a master's degree in ocean systems management from the Massachusetts Institute of Technology which included a study of naval architecture. He had designed and built many boats and had a life-long interest in various forms of art, crafting with wood, and artistic design.
According to the amended particulars of claim, Mr Duke was inspired by wooden shells that had been created by George Pocock and George Sims. They were well-known rowing equipment designers who had crafted in wood. He considered their shells to be works of art. He also claimed to be influenced by US furniture maker Thomas Moser, the Arts and Crafts movement and the aesthetics of Shaker furniture design. In creating the WaterRower, Mr Duke’s aim was to recreate the sparse elegance of a Shaker design. In his rowing machine, the user would have “a welcoming emotional connection, as they would with a piece of art or furniture”. Mr Stone said that the WaterRower had been recognized as an “iconic design” in the UK and USA. It was on display in the Design Museum and had been mentioned in publications from the Museum of Modern Art and the Conran shop as well as other design museums.
The Defendant's Submissions
The defendant argued that the WaterRower was neither artistic nor a work of craftsmanship. It referred to para 4.37 of the 5th edition of Laddie Prescott & Vitoria:
The defendant contended that without artistry and craftsmanship, there could be none of the “interplay” to be expected of a work of artistic craftsmanship and therefore, the claim would fail. Finally, the defendant submitted that the decisions of the Court of Justice in C-683/17 Cofemel-Sociedade de Vestuário SA v G-Star Raw CV [2020] ECDR 9, ECLI:EU:C:2019:721, [2019] EUECJ C-683/17, EU:C:2019:721 and C-833/18 SI and another v Chedech/Get2Get (Brompton) [2021] 1 CMLR 2, [2021] CEC 670, ECLI:EU:C:2020:461, [2020] Bus LR 1619, [2020] EUECJ C-833/18, EU:C:2020:461, [2020] ECDR 10, [2020] FSR 36 precluded copyright protection,
Whether the WaterRower was "artistic"
The deputy judge rejected the submission that the WaterRower was not artistic on any view of the speeches in Hensher at para [44] of his judgment for the following reasons:
"i) First, Lords Reid, Morris and Kilbrandon all held that the intention of the creator was at least relevant to whether or not a work of craftsmanship is artistic. Indeed, Lord Kilbrandon held that it was the “primary test”. In this case, there is already some evidence as to Mr Duke’s artistic intention, and the Claimant has sought permission to adduce a further witness statement from Mr Duke for the purposes of the trial. Defendant has said in the inter partes correspondence that it wishes to cross-examine Mr Duke as to his intentions. This evidence, relevant to three of the five Law Lords in Hensher, is therefore the very thing which the authorities emphasise ought to cause hesitation prior to striking out a claim. The evidence before me is that Mr Duke intended to recreate the sparse elegance of a Shaker design and to create a rowing machine in which the user has “a welcoming emotional connection, as they would with a piece of art or furniture”. This evidence is, in my judgment, sufficient to avoid a strikeout. There is in any event likely to be more to come.
(Several of the Defendant’s submissions appeared to suggest that it is the primary purpose of the creator that is relevant, and that here Mr Duke’s primary purpose was to create a water resistance rowing machine to simulate the feeling of rowing on water, through both sensation and sound. Even assuming that that was Mr Duke’s primary purpose, I do not consider that to be grounds for striking out the claim: I cannot discern in any of their Lordships’ speeches any indication that it is the primary purpose of the creator that matters. As I read their Lordship’s speeches, so long as the artistic purpose was one of the creator’s purposes, it does not need to be the primary or dominant one. To take one of Lord Simon’s examples, clearly, a set of wrought-iron gates would be rejected by the purchaser if they did not open, or did not keep people/animals in or out - those are amongst the primary purposes of gates. But gates can still be works of artistic craftsmanship, even if their artistry is secondary to their usefulness.)
ii) Second, I cannot say at this stage of proceedings that the WaterRower would not fall within the notion of “work of artistic craftsmanship” as described by their Lordships. I do not consider that it is for me to say whether or not their Lordships if sitting today, would find that the WaterRower is a work of artistic craftsmanship - that is not the relevant test, as each of their Lordships emphasises. It is a matter for the trial judge on the basis of the evidence. As things stand, even leaving aside the further evidence that may be adduced at trial, I cannot say that the Claimant has no real prospects of proving that the WaterRower is artistic. Defendant conceded that it has eye appeal, but said that was not enough. As I read the speeches of Lords Reid, Morris, Simon and Kilbrandon, whilst requiring more than eye appeal, none of their Lordships sets out what that “more” is, and counsel for the Defendant did not. Perhaps for some of their Lordships (particularly Lord Kilbrandon), it was the intention of the creator. Perhaps it is recognition by others that the work is artistic (and hence the suitability of expert evidence). In this case, even on the evidence before me at this strikeout stage, both are present - in Mr Duke’s intentions as creator and in the recognition from MOMA and others. Whilst counsel for the Defendant sought to minimise the weight of the recognition from MOMA and others on the basis that it did not expressly say that the WaterRower was “artistic”, it seems to me that this evidence is probative (for present purposes) in two ways. First, for what it says: for example, the Galerie article describes the WaterRower as being “masterfully crafted” and the MOMA website describes it as “looking artful”. Second, the presence of the WaterRower in the MOMA shop indicates that the curators of the MOMA shop consider it to be worthy of inclusion - that is, they recognise that it belongs alongside the other artistic works celebrated and sold by MOMA. No doubt further such evidence will be adduced at trial - but that which is already before the Court means that I cannot say that the Claimant’s case is hopeless.
iii) Third, Lord Simon set out a series of examples of works which he considered could be held to be artistic: hand-painted tiles, stained glass windows, wrought-iron gates, and “some of the […] work” of carpenters, cabinet-makers, printers, bookbinders, cutlers, needleworkers and weavers. Although technology has clearly moved on since 1974, I cannot conclude on a strike-out basis that the WaterRower is any less artistic in its conception or its appearance than the examples given by Lord Simon."
The deputy judge rejected the submission that the WaterRower was not artistic on any view of the speeches in Hensher at para [44] of his judgment for the following reasons:
"i) First, Lords Reid, Morris and Kilbrandon all held that the intention of the creator was at least relevant to whether or not a work of craftsmanship is artistic. Indeed, Lord Kilbrandon held that it was the “primary test”. In this case, there is already some evidence as to Mr Duke’s artistic intention, and the Claimant has sought permission to adduce a further witness statement from Mr Duke for the purposes of the trial. Defendant has said in the inter partes correspondence that it wishes to cross-examine Mr Duke as to his intentions. This evidence, relevant to three of the five Law Lords in Hensher, is therefore the very thing which the authorities emphasise ought to cause hesitation prior to striking out a claim. The evidence before me is that Mr Duke intended to recreate the sparse elegance of a Shaker design and to create a rowing machine in which the user has “a welcoming emotional connection, as they would with a piece of art or furniture”. This evidence is, in my judgment, sufficient to avoid a strikeout. There is in any event likely to be more to come.
(Several of the Defendant’s submissions appeared to suggest that it is the primary purpose of the creator that is relevant, and that here Mr Duke’s primary purpose was to create a water resistance rowing machine to simulate the feeling of rowing on water, through both sensation and sound. Even assuming that that was Mr Duke’s primary purpose, I do not consider that to be grounds for striking out the claim: I cannot discern in any of their Lordships’ speeches any indication that it is the primary purpose of the creator that matters. As I read their Lordship’s speeches, so long as the artistic purpose was one of the creator’s purposes, it does not need to be the primary or dominant one. To take one of Lord Simon’s examples, clearly, a set of wrought-iron gates would be rejected by the purchaser if they did not open, or did not keep people/animals in or out - those are amongst the primary purposes of gates. But gates can still be works of artistic craftsmanship, even if their artistry is secondary to their usefulness.)
ii) Second, I cannot say at this stage of proceedings that the WaterRower would not fall within the notion of “work of artistic craftsmanship” as described by their Lordships. I do not consider that it is for me to say whether or not their Lordships if sitting today, would find that the WaterRower is a work of artistic craftsmanship - that is not the relevant test, as each of their Lordships emphasises. It is a matter for the trial judge on the basis of the evidence. As things stand, even leaving aside the further evidence that may be adduced at trial, I cannot say that the Claimant has no real prospects of proving that the WaterRower is artistic. Defendant conceded that it has eye appeal, but said that was not enough. As I read the speeches of Lords Reid, Morris, Simon and Kilbrandon, whilst requiring more than eye appeal, none of their Lordships sets out what that “more” is, and counsel for the Defendant did not. Perhaps for some of their Lordships (particularly Lord Kilbrandon), it was the intention of the creator. Perhaps it is recognition by others that the work is artistic (and hence the suitability of expert evidence). In this case, even on the evidence before me at this strikeout stage, both are present - in Mr Duke’s intentions as creator and in the recognition from MOMA and others. Whilst counsel for the Defendant sought to minimise the weight of the recognition from MOMA and others on the basis that it did not expressly say that the WaterRower was “artistic”, it seems to me that this evidence is probative (for present purposes) in two ways. First, for what it says: for example, the Galerie article describes the WaterRower as being “masterfully crafted” and the MOMA website describes it as “looking artful”. Second, the presence of the WaterRower in the MOMA shop indicates that the curators of the MOMA shop consider it to be worthy of inclusion - that is, they recognise that it belongs alongside the other artistic works celebrated and sold by MOMA. No doubt further such evidence will be adduced at trial - but that which is already before the Court means that I cannot say that the Claimant’s case is hopeless.
iii) Third, Lord Simon set out a series of examples of works which he considered could be held to be artistic: hand-painted tiles, stained glass windows, wrought-iron gates, and “some of the […] work” of carpenters, cabinet-makers, printers, bookbinders, cutlers, needleworkers and weavers. Although technology has clearly moved on since 1974, I cannot conclude on a strike-out basis that the WaterRower is any less artistic in its conception or its appearance than the examples given by Lord Simon."
Whether it was a work of "Craftsmanship"
Mr Stone dismissed the argument that the WaterRower was not a work of craftsmanship for the reasons set out in para [48]:
"The evidence already before me is such that I cannot conclude that the production of the WaterRower was not an act of craftsmanship. There is evidence that Mr Duke is a craftsman - he studied naval architecture and built boats. (Counsel for the Defendant submitted that whilst the evidence may have established that Mr Duke was a craftsman in relation to rowing shells, he could not be considered a craftsman of rowing machines. I reject that submission, not least because many of the parts of a rowing machine are to be found in a shell (including a seat, footrest and runners). Mr Duke has produced a high-quality product, which was initially made entirely by hand, and continues to be made in part by hand. He has pride in his work. He is not a slavish copier or a jobbing tradesman. It matters not that the creation of the WaterRower is now outsourced to others - there is nothing in the authorities that requires works of artistic craftsmanship to be the work of a single person, and art practice for centuries, and, more recently, craft practice, have both involved heavy aspects of outsourcing of the actual manufacture. William Morris designed the chairs sold under his name, but he did not make them."
Mr Stone dismissed the argument that the WaterRower was not a work of craftsmanship for the reasons set out in para [48]:
"The evidence already before me is such that I cannot conclude that the production of the WaterRower was not an act of craftsmanship. There is evidence that Mr Duke is a craftsman - he studied naval architecture and built boats. (Counsel for the Defendant submitted that whilst the evidence may have established that Mr Duke was a craftsman in relation to rowing shells, he could not be considered a craftsman of rowing machines. I reject that submission, not least because many of the parts of a rowing machine are to be found in a shell (including a seat, footrest and runners). Mr Duke has produced a high-quality product, which was initially made entirely by hand, and continues to be made in part by hand. He has pride in his work. He is not a slavish copier or a jobbing tradesman. It matters not that the creation of the WaterRower is now outsourced to others - there is nothing in the authorities that requires works of artistic craftsmanship to be the work of a single person, and art practice for centuries, and, more recently, craft practice, have both involved heavy aspects of outsourcing of the actual manufacture. William Morris designed the chairs sold under his name, but he did not make them."
Whether there was any Interplay
The deputy judge did not form a view on whether the interplay test in Laddie Prescott & Vitoria was an appropriate one but, if it was, he could not say on the basis of the evidence before him that the WaterRower had no chance of passing it. He had already found that there was a real prospect of proving that the WaterRower was a work of craftsmanship. Mr Duke had worked on materials with manual dexterity. The machine's visual appearance was clearly popular and at least some members of the public had acquired, it because of its appearance.
The Colomel and Brompton Judgments
The Court of Justice had held in both cases that there are two cumulative requirements for qualification as a copyright work:
- the existence of an original object; and
- the expression of intellectual creation.
Further Information
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