Copyright - Equisafety Ltd v Woof Wear Ltd

Jane Lambert

Intellectual Property Enterprise Court (Ian Karet)  Equisafety Ltd v Woof Wear Ltd [2024] EWHC 2478 (IPEC) (25 Sept 2024)

This was an action by the Wirral-based company Equisafety Ltd ("Equisafety") for infringement of copyright in three high-visibility ("high vis") equestrian products. These were a waistcoat, an elasticated hat band, and a neckband for a horse some of which are shown in the above photos. The defendant, Woof Wear Ltd ("Woof Wear"), had exhibited similar goods at the Beta International Exhibition.  Woof Wear admitted that if copyright subsisted in those items and if the claimant company owned those copyrights then it would have infringed those rights.   Consequently, the issues to be tried were whether copyright subsisted in those high-vis items and, if it did, whether Equisafety owned those copyrights.

The Preliminary Hearing

At a hearing before Ms Pat Treacy on or about 24 Jan 2024, Equisafety was ordered to identify the products on which it relied. Its managing director, Nicola Fletcher ("Ms Fletcher"), who claimed to have designed Equisafety's products and represented her company at trial, chose the waistcoat and neckband in 2019. She said that she had designed the waistcoat in 2020 and the hat and neckbands in 2019.  The order recited that Equisafety confirmed that it did not rely on any earlier versions of the products as articles in which copyright was alleged to subsist.

 

The Trial

The action came on for trial before Mr Ian Karet sitting as a deputy judge of the High Court on 18 June 2024.  In para [61] of his judgment in Equisafety Ltd v Woof Wear Ltd [2024] EWHC 2478 which he handed down on 25 Sept 2024, Mr Karet dismissed the claim on the grounds that copyright did not subsist in those items as works of artistic craftsmanship and, even if it did, the copyrights would not have belonged to Equisafety.

The Law

The learned deputy judge referred to s.1 (2) and s.4 (1) (c) of the Copyright, Designs and Patents Act 1988 ("CDPA") and paras [32] to [36] of Judge Hacon's judgment in Response Clothing Limited v The Edinburgh Woollen Mill Limited [2020] EWHC 148:

"[32] The meaning [of the term 'work of artistic craftsmanship'] was considered by the House of Lords in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64, a case concerned with a claim to a work of artistic craftsmanship under the 1956 Act. It is not a straightforward judgment, as has been acknowledged since. In Lucasfilm Ltd v Ainsworth [2011] UKSC 39; [2012] 1 AC 208 Lord Walker and Lord Collins (in a combined judgment with which Lord Phillips and Lady Hale agreed) concurred (at [29]) with Mann J's assessment at first instance that it was difficult to identify the true principle of the judgment in Hensher and thus a meaning given to 'artistic craftsmanship' by the House of Lords. The Supreme Court in Lucasfilm was not required to reach a view on the meaning because after the first instance judgment, the claimant no longer contended that its Imperial Stormtrooper helmets and armour, the articles in issue, were works of artistic craftsmanship.

[33] The meaning was discussed by Mann J at first instance ([2008] EWHC 1878 (Ch); [2009] FSR 2). Having considered Hensher, he turned to a judgment from the New Zealand High Court:

"[131] In Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216 the New Zealand High Court had to consider 'artistic craftsmanship' in the context of woollen sweaters. Tipping J. considered Hensher and other authorities and concluded that:

'... [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.'

I find that helpful. Having said that, he was prepared to combine the artistry of the designer and the craftsmanship of the knitters and conclude that the sweaters fell within the description, rejecting authorities which tended to suggest that they had to be the same person. That seems to me to be a sensible approach, at least where there is a proper nexus between the two people."
[34] Mann J went on (at [133]-[135]) to find that the production helmets and armour required the activity of a craftsman to realise the vision of the creators of the Star War films in which they featured. They were therefore works of craftsmanship, but not artistic craftsmanship. Their purpose was not to appeal to the aesthetic, but rather to give a particular impression in a film.
[35] In Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1) [2001] FSR 5 Evans-Lombe J had also agreed with the conclusion of Tipping J in Bonz Group, finding that a bedspread design was not sufficiently artistic to be a work of artistic craftsmanship, although he did not give a reason beyond saying that the designs may be pleasing to the eye but did not exhibit the necessary requirement of creativity.
[36] Adopting Tipping J's summary of what constitutes a work of artistic craftsmanship, I would have to decide whether the employee of GIN Textile who created the Wave Fabric was both (a) a craftsman in that he or she made the fabric in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he or she used their creative ability to produce something which has aesthetic appeal."

Judge Hacon considered the speeches in further detail and noted at [54] that while the House of Lords would have concluded in 1976 that the work in issue was not a work of artistic craftsmanship, there were no binding principles of law that could be deduced from the decision which compelled the same conclusion in 2020. After considering EU law on the issue Judge Hacon concluded at para [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."

In considering EU law, Mr Karet referred to s.3 (1) A2 of the Retained EU Law (Revocation and Reform) Act 2023:

"any provision of retained direct EU legislation must, so far as possible, be read and given effect in a way which is compatible with all domestic enactments, and is subject to all domestic enactments, so far as it is incompatible with them".

The learned deputy judge noted that Lord Justice Arnold had said at para [34] of his judgment in Wright v BTC Core [2023] EWCA Civ 868 that legislation which transposed an EU directive into domestic law before 31 Dec 2020 remains part of UK law unless and until it has been repealed or amended.  Mr Karet directed himself that the question that he had to decide was whether art 2 (a) of the Information Society Directive (2001/29) had an effect on copyright protection under the CDPA. Lord Justice Arnold had said at paras [43] and [55] that the starting point was that copyright protection "is liable to apply only in relation to a subject matter which is original in the sense that it is its author's own intellectual creation".  He referred to the judgment of the Court of Justice of the European Union ("CJEU") in Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569),  He said :

"The Court of Justice has elaborated upon the requirement that the work be its author's own intellectual creation in a number of subsequent judgments. What is required is that the author was able to express their creative abilities in the production of the work by making free and creative choices so as to stamp the work created with their personal touch: see in particular...Case C-683/17 Cofemel—Sociedade de Vestuário SA v G-Star Raw CV [EU:C:2019:721] at [30]..."

Mr Karet said that in Cofemel, the CJEU had confirmed its decision in  Case C-310/17 Levola Hengelo BV v Smilde Foods BV  EU: C:2018:899 that there are two cumulative conditions to copyright protection. The first is that there must be subject matter that is original in the sense that it is the author's own intellectual creation. The second is that the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

In considering the first condition the CJEU ruled that the subject matter must be an expression of the free creative choices of the author, and that where there are technical considerations, rules or constraints that leave no room for creative freedom the subject matter cannot possess the originality required.  The CJEU held at [53] of Cofemel that the subjective aesthetic effect that may be produced by a clothing design did not meet the second condition because 

"the aesthetic effect that may be produced by a design is the product of an intrinsically subjective sensation of beauty experienced by each individual who may look at that design. Consequently, that subjective effect does not, in itself, permit a subject matter to be characterised as existing and identifiable with sufficient precision and objectivity, within the meaning of the case law...".

In Cofemel the applicant in the main proceedings sought protection for: 

"designs [of] sweatshirts and t-shirts, ... compris[ing] a number of elements, inter alia, an image embossed on the front of the sweatshirt, a combination of colours, placement of the pocket on the stomach, and pocket insertions ...' and '[the jeans] design ... characterised by the way in which each of the three different pieces are cut and put together. Using pieces of different lengths and shapes creates a trouser leg with ... three-dimensional (3D) effect, which bends inwards and backwards and which wraps around the wearer's leg (corkscrew effect). Other aspects which contribute to the "corkscrew effect" are the darts on the knees of the trousers, one on each leg".

The CJEU endorsed the reasoning of the Advocate General at paragraph [60] of his opinion: 

"...I take the view that characteristics such as the 'specific composition based on shapes, colours, words and numbers', the 'combination of colours', the 'placement of the pocket on the stomach' or even 'the way the jeans are made by assembling the three pieces', which Cofemel is alleged to have copied, should be analysed as ideas capable of being expressed differently, or even as practical solutions, and should not be protected by copyright".

In C-833/18 Brompton Bicycle Brompton Bicycle Ltd v Chedech/Get2Get the CJEU held that:

"[20] By its two questions, which it is appropriate to examine together, the referring court asks, in essence, whether Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result.
...

[26] It follows that a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices."

Woof Wear's Contention

Relying on Biotrading and Financing Oy v Biohit Limited [1996] FSR 393  Woof Wear contended that where a claimant did not rely on earlier versions of a work, it could not claim originality in material that formed part of an earlier version.  It could rely only on the changes made to the earlier version. It argued that in n this case the changes recorded above were not sufficient to amount to works of artistic craftsmanship.

Whether Copyright Subsisted in the Amendments

Following Biotrading Mr Karet directed himself that he could only consider the amendments to the above-mentioned works mentioned in Ms Treacy's order.  He held at  [48] that none of those works was a work of artistic craftsmanship for the following reasons:

"The features added to the waistcoat in 2020 as described in Ms Feltcher's evidence do not amount such a work either under EU law or, if it is to be read in a different way, the wording of the CDPA. The reflective piping around the Velcro tab is a variation to a larger, pre-existing item. If the waistcoat is to be high vis then material needs to be in a place in which it will reflect. There are a number of places in which such material could be applied. The nature of the waistcoat as a work for the purpose of this analysis does not appear to have been changed in a copyright sense by the use of different quality fabric and zip. The new logos and wording applied to the waistcoat are functional improvements to improve visibility that could be made in a number of ways; they do not reflect the author's personality as required. Considered individually and taken together, the added features do not amount to a work as required by Cofemel. The pre-existing waistcoat dictated the positions that changes could be made to it. The changes, are as the Advocate General put it in Cofemel, "practical solutions" which can be expressed differently and so are not protected by copyright. An analysis under the older UK law gives the same result. The additions do not amount to a work of artistic craftsmanship because they were not the work of a craftsman."

While the fact that there was a technical standard was not determinative of the issue, it confirmed that the waistcoat was a functional item with particular requirements set for it that would have an effect on what could be made that would comply with the relevant regulation.  The LED lights added to the hat band in 2019 were also a practical solution to achieve greater visibility.  The inclusion of new material for the band and an increase in length did not make that a work of artistic craftsmanship but addressed the fit required by a hat.   The features added to the neckband in 2019 were all functional improvements for better performance. The metal triangle in the band replaced a metal circle. The addition of clasps for better adjustment and better-quality reflective material was not a work of artistic craftsmanship.  Taken together those matters did not amount to an original work under Cofemel and they were not a work of artistic craftsmanship under the CDPA.

Whether Copyright Subsisted in the Works as a Whole

In case he had been wrong to limit his consideration to the amendments and because Ms Fletcher did not fully understand the significance of the limitation of the claim, Mr Karet considered whether copyright subsisted in any of the items when considered as a whole.  He decided in paras [54] and [55] that it did not:

"[54] The waistcoat has features that make it more attractive in the equine market than a mass market builder's vest, but they respond to the requirements of the specific use in horse riding for which the waistcoat is intended. It is fitted so that it does not flap about in use, and it is given its shape by the Velcro tabs. The pockets need to be accessible when the rider is astride a horse and so are placed at a slant. The zip does not reach the bottom of the waistcoat so that it will not abrade the saddle. These design matters are dictated by the function of the item and are practical solutions to the problem of making a high vis jacket for a horse rider. The features do not reflect the author's personality are not the work of a craftsman; they are solutions to design issues. The waistcoat does not meet the test of an original work in Cofemel because they are practical solutions that could have been expressed differently. The waistcoat is not the work of an artist and craftsman under the CDPA.
[55] Similarly the hat band and neck band are each made of reflective material adapted to fit the specified use as a hat band or a horse's neck band. These are functional items that are dictated by form. They are not original in the sense of Cofemel are they are not works of an artist and craftsman under the CDPA."

Whether Equisafety would have owned those Copyrights

Although he did not have to consider ownership of copyright in view of his decision on subsistence, Mr Karet said at para [59] that Equisafety had not established its rights in the works.  He explained:

"[59] They were all created some time ago and in evidence Ms Fletcher accepted that the Claimant did not have a continuous ownership of the business. She explained that she had started creating the items before working through the Claimant, and there was a reorganisation of her business that did not involve the Claimant. The position on ownership is thus unclear and on balance the Claimant did not prove ownership.
[60] The position in relation to the pleaded works is also complicated. The evidence also showed that the replacement of the ring in the neck band with a triangle was a collaboration between Ms Fletcher and the factory with which she worked. It appears that Ms Fletcher instructed the factory what to fit and that they then did the work. It is not clear that Ms Fletcher created that work on her own, or that any rights that might belong to the factory have been transferred to the Claimant.
[61] The remaining items appear to follow from design documents which Ms Fletcher produced while she was in China. The items were likely to have been produced in collaboration with the factories."

Comment

Although Mr Karet considered all aspects of Equisafety's case scrupulously, it is hard not to have some sympathy with Ms Fletcher.  She was a litigant in person and was against a very able and experienced advocate who had been at the bar even longer than me.  This was not her first time in the Intellectual Property Enterprise Court.  She had represented Equisafety in Equisafety Ltd v Battle, Hayward And Bower Ltd [2023] EWHC 1821 (IPEC) (21 July 2023) which I discussed in Pecuniary Remedies - Equisafety Ltd v Battle, Hayward and Bower Ltd. on 25 Feb 2024.  Mr Karet noted at para [8] of his judgment that Ms Fletcher was proud of her company and the range of items that it offered.  He also acknowledged at [57] that she genuinely considered that she had created a valuable market segment in high-vis apparel for riders and that her products deserved copyright protection. He noted in para [2] that there was no claim for unregistered design right infringement and perhaps she would have fared better if she had.

The judgment is nevertheless to be welcomed for its analysis of both the common law and the EU case law on artistic craftsmanship and is likely to be cited frequently for that reason.  Anyone wishing to discuss this article may call me on 020 7404 5252 during normal UK business hours or send me a message on my contact form.