The Trial - WaterRower v Liking
Intellectual Property Enterprise Court (Mr Campbell Forsyth) WaterRower (UK) Ltd v Liking Ltd. [2024] EWHC 2806 (IPEC)
I discussed Mr Stone's decision in Copyright - WaterRower (UK) Ltd v Liking Ltd. in NIPC Law on 24 Oct 2022.
The Trial
The trial that Ms Stone anticipated took place on 24 and 25 July 2024 before Mr Campbell Forsyth sitting as a deputy judge of the High Court. Mr Forsyth handed down judgment on 11 Nov 2024 (see WaterRower v Liking Ltd (T/A Topiom) [2024] EWHC 2806 (IPEC)). At para [215] of his judgment he held that no copyright subsisted in the Works and consequently Liking did not infringe any copyright.
The Issues
To understand Mr Forsyth's judgment it is necessary to know the issues in this case. After dismissing the strike-out and summary judgment applications, Mr Stone ordered the following issues to be tried:
"Copyright: subsistence
(i) Is Version 1 of the Works a work of artistic craftsmanship in which UK copyright
subsists?
(ii) Are each of the subsequent Versions of the Works original copyright works of artistic
craftsmanship?
Copyright: Infringement
(iii) Did the Defendant:
(a) Copy any Version of the Works (as shown in Annex 1 to the Amended Particulars of
Claim) directly or indirectly in the creation of the Topiom Model 1 and/or the Topiom Model 2?
(b) Reproduce a substantial part of each of the above Works in:
i. The Topiom Model 1; and/or
i. The Topiom Model 1; and/or
ii. The Topiom Model 2?
(c) Have the relevant knowledge required for the acts of infringement alleged in paragraph 11
of the Amended Particulars of Claim?
Counterclaim
(iv) Is the Court satisfied that it is appropriate and necessary to make each of the declarations
sought in relation to UK copyright?"
Whether Copyright Subsisits in the Works
Mr Forsyth considered s.1 and s.4 (1) of the CDPA. He observed in para [68] of his judgment that the term "artistic craftsmanship" had no statutory definition and that a key question that needed to be grappled with was how to assess what is a work of artistic craftsmanship in accordance with s.4 (1) (c). He added in the next paragraph that the meaning of "a work of artistic craftsmanship" and the limits of its application involved a
particularly difficult tension that the parties said existed between the operation of the CDPA on this
issue and EU law.
Berne Convention
Mr Forsyth was referred to pages 457 to 458 of Ricketson and Ginsburg's International Copyright and Neighbouring Rights, The Berne Convention and Beyond (Third Edition), art 2 (4) if the Berlin revision of the Berne Convention, art 2 (1) and (5) of the Brussels revision, art 9 (1) of TRIPs and art 2 (7) of Berne as revised by Stockholm which provided as follows:
Mr Forsyth was referred to pages 457 to 458 of Ricketson and Ginsburg's International Copyright and Neighbouring Rights, The Berne Convention and Beyond (Third Edition), art 2 (4) if the Berlin revision of the Berne Convention, art 2 (1) and (5) of the Brussels revision, art 9 (1) of TRIPs and art 2 (7) of Berne as revised by Stockholm which provided as follows:
"Subject to the provisions of Article 7 (4) of this Convention, it shall be a matter for
legislation in the countries of the Union to determine the extent of the application of their laws
to works of applied art and industrial designs and models, as well as the conditions under
which such works, designs and models shall be protected. Works protected in the country of
origin solely as designs and models shall be entitled in another country of the Union only to
such special protection as is granted in that country to designs and models; however, if no
such special protection is granted in that country, such works shall be protected as artistic
works."
Whether EU Law Continues to be Binding
This provision left another uncertainty, namely whether EU law continued to prevail over national law after Brexit, The deputy judge considered s.5 (2) of the European Union (Withdrawal) Act 2018 as amended by the European Union (Withdrawal Agreement) Act 2020, Mr Ian Karet's judgment in Equisafety Limited v Woof Wear Limited [2024] EWHC [2478] (IPEC), the Court of Appeal's judgment in Wright v BTC Core and others [2023] EWCA Civ 868, The Retained EU Law (Revocation and Reform) Act 2023 and Lipton and another v BA Cityflyer Ltd [2024] UKSC 24 (10 July 2024). He concluded at [79] that "for this case, the rule of supremacy of EU Law remains and European directives should be interpreted according to the rules developed by the CJEU."
Relevant EU Law
Mr Forsyth referred to the relevant EU legislation, namely art 17 of Directive 98/71/EC of the European Parliament and of the Council, paras (1), (4), (9), (10), art 1, art 2, art 4 and art 9 of Directive 2001/29/EC and art 96 (2) of the Community Design Regulation. He considered whether that legislation meant that the UK no longer had a discretion to apply art 2 (7) of Berne. After referring to para [39] of C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] EUECJ C-168/9, [2011] EUECJ C-168/09, [2011] RPC 10, [2011] ECDR 8, paras [57] to [58] of C-469/17 Funke Medien NRW GmbH v Federal Republic of Germany EU: C:2019:623, [2019] EUECJ C-469/17, [2019] WLR(D) 438, [2020] CEC 622, [2020] 1 WLR 1573, ECLI:EU: C:2019:623, [2020] 1 CMLR 13, [2019] ECDR 25, C-683/17 Cofemel – Sociedade de Vestuário SA v G-Star Raw CV [2020] ECDR 9, EU: C:2019:721, ECLI:EU: C:2019:721, [2019] EUECJ C-683/17 and Case C-833/18 SI, Brompton Bicycle Ltd and another v Chedech/Get2Get [2020] ECDR 10, [2021] CEC 670, EU: C:2020:461, ECLI:EU: C:2020:461, [2021] 1 CMLR 2, [2020] FSR 36, [2020] Bus LR 1619, [2020] EUECJ C-833/18, he concluded at [88]:
"I do not therefore accept this court has the discretion to ignore the relevant CJEU cases, including Cofemel and Brompton in relation to its treatment of applied art under section 4 (1) (c) CDPA. In any event, even if I had agreed with Liking's submissions on this issue, it is not for this court to go behind this CJEU case law (which Liking also appear to accept is binding on this court). It is therefore the interaction of this EU legislation and relevant CJEU cases and the UK legislation and case law that is material to my decision in this case. As a result, I will also need to consider the issue of conforming legislation when interpreting this EU legislation and case law in the context of the CDPA and UK case law."
"I do not therefore accept this court has the discretion to ignore the relevant CJEU cases, including Cofemel and Brompton in relation to its treatment of applied art under section 4 (1) (c) CDPA. In any event, even if I had agreed with Liking's submissions on this issue, it is not for this court to go behind this CJEU case law (which Liking also appear to accept is binding on this court). It is therefore the interaction of this EU legislation and relevant CJEU cases and the UK legislation and case law that is material to my decision in this case. As a result, I will also need to consider the issue of conforming legislation when interpreting this EU legislation and case law in the context of the CDPA and UK case law."
UK Case Law
The learned deputy judge began by tracing the protection of works of artistic craftsmanship from its Copyright Act 1911, He discussed the Report of the Copyright Committee (Cmnd 8662) of 1952 which recommended legal protections for the work of silversmiths, potters, woodworkers, hand-embroiderers and many others but declined to define the term "artistic craftsmanship". He referred to s.3 (1) of the Copyright Act 1956 and analysed the speeches of the lords who heard the appeal in George
Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64. He continued with Mr Justice Mann's judgment in Lucasfilm Ltd and others v Ainsworth and another [2008] EWHC 1878 (Ch), [2008] ECDR 17, [2009] FSR 2 and the cases that his lordship mentioned in that judgment including Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216, Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1) [2001] FSR 5 and Burge v Swarbrick [2007] HCA 17. Finally, he considered Judge Hacon's judgment in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd. [2020] WLR(D) 88, [2020] EWHC 148 (IPEC).
"1. Parliament has created a distinction between copyright protection accorded to works within with CDPA s.4 (1) (c) and the other artistic works under s.1. The former requires artistic quality, the latter do not.
2. A work of artistic craftsmanship involves a medium that has been worked with
craftsmanship, wherein the visual appearance involves artistic expression, which is not
wholly constrained by functional constraints.
3. The ordinary meaning of the statutory phrase requires no further formulation or judicial
definition.
4. The statutory phrase should be assessed as a whole.
5. Copyright protects expression. The process of creating a work of artistic craftsmanship
and the resulting work of artistic craftsmanship are intrinsically interrelated. The
craftsmanship creating the work must be artistic; the work will be one of artistic
craftsmanship.
6. The court can rely on any evidence it views as relevant to assist it in forming an objective
view on the statutory question.
7. The assessment is not one that requires any value 'assessment of artistic merits or quality' in order to decide whether a work is one of artistic craftsmanship.
8. Mass manufacture of the work does not preclude it from being a work of artistic
craftsmanship. Neither do commercial aims or the involvement of technology or tools in
the creation of the work.
9. The author of the work can be multiple people provided there is a sufficient nexus.
10. More than eye appeal is needed – visually appealing aesthetics will often be present in
works of artistic craftsmanship but such evidence does not determine the underlying
question of whether that work is one of an artist craftsman.
11. It is the craftsmanship in the work that is relevant – not the qualification or training of the
craftsman – although skill and training will assist in assessing the presence of
craftsmanship."
CJEU Case Law
Mr Forsyth remarked that in addition to Hensher, he was also bound by retained EU
case law, including relevant decisions of the Court of Justice of the European Union ("CJEU") that interpret the Information Society Directive as implemented
by the CDPA,
He noted that the CJEU had stated in Cofemel that the concept
of "work" was
"… clear from the Court's settled case-law, an autonomous concept of EU law which
must be interpreted and applied uniformly, requiring two cumulative conditions to be satisfied. First,
that concept entails that there exists an original subject matter, in the sense of being the author's own
intellectual creation. Second, classification as a work is reserved to the elements that are the
expression of such creation…".
He said that the Court went on to explain that in the context of the condition that the subject matter must be original
"… it is both necessary and sufficient that the subject matter reflects the
personality of its author, as an expression of his free and creative choices …".
Subject matter with
these characteristics qualifies as a work and therefore attracts copyright protection, 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 a work.
Reconciling Art 2 with S.4 (1) (c)
In Response, Judge Hacon had considered first whether the wave fabric was original in the sense that it was the expression of the author's own intellectual creation, and therefore a work within the meaning of art. 2 of the Information Society Directive and secondly, whether it was a work of artistic craftsmanship within the meaning of s.4 (1) (c). He found at para [63] of his judgment that it was possible to reconcile art 2 and s.4 (1) (c) up to a point but the CJEU's interpretation of art 2 in Cofemel excluded the requirement of aesthetic appeal which was essential to the concept of artistic craftsmanship. He said at para [64] of his judgment:
"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."
Mr Forsyth followed Judge Hacon's approach in Response by considering first whether any of the claimant's Works was original within the meaning of the Information Society Directive in that the "subject
matter reflects the personality of its author, as an expression of his free and creative choices" and, secondly, whether it was a work of artistic craftsmanship within the meaning of s.4 (1) (c) as interpreted by the English and other common law courts.
Whether Any of the Works was "Original" in the EU Sense
Mr Forsyth considered the claimant's prototype and concluded at para [168] of his judgment that
"There is room for [the author] to reflect his personality in the subject
matter combining these striking visual elements as an expression of his free and creative choices.
[the author's] Prototype is therefore original in that the design is his own intellectual creation as a work
within the meaning of the InfoSoc Directive."
As for subsequent versions of the Works, Mr Forsyth said at [173]:
"Taken as a whole, the set of changes for each iterative version are technically constrained and mundane in nature, arising from the workmanlike, practical decisions behind the development of these adaptations. They do not reflect the personality of its author as an expression of their free and creative choices. "
"Taken as a whole, the set of changes for each iterative version are technically constrained and mundane in nature, arising from the workmanlike, practical decisions behind the development of these adaptations. They do not reflect the personality of its author as an expression of their free and creative choices. "
It followed that the prototype was original in the EU sense but none of the subsequent Works was original in that sense.
Whether the Prototype was a "Work of Artistic Craftsmanship"
Having determined whether the claimant's prototype was the only work that was original in the EU sense, Mr Forsyth considered whether it was also a work of artistic craftsmanship in accordance with the speeches in Hensher or Mr Justice Tipping's judgment in Bonz. The learned deputy judge accepted that the prototype was a work of craftsmanship but it did not have any artistic quality.
Ownership of Copyright#
Had copyright subsisted in any of the Works Mr Forsyth said that it would have belonged to WaterRower.
Infringement
As copying had been admitted, Mr Forsyth held that any copyright subsisting in the Works would have been infringed.
Counterclaim
Although it was true that the Works were not works of artistic craftsmanship, Mr Forsyth declined to make a declaration to that effect on the grounds that such a declaration would serve no useful purpose.
Equisafety
Mr Forsyth considered Mr Ian Karet's judgment in Equisafety Ltd v Woof Wear Ltd [2024] EWHC 2478 (IPEC) (25 Sep 2024) which I discussed in Copyright - Equisafety Ltd v Woof Wear Ltd on 31 Oct 2024. He did not agree with Mr Karet's reconciliation of the CDPA with retained EU law. Equisafety turned on whether the works in question were the works of a craftsman, Mr Forsyth c concluded at [211] that get was not bound by Equisafety and that he did not believe there was any ratio in that case that impacted on his reasoning.
Kwantum Nederland
The learned deputy judge was also referred to the CJEU's judgment in Case C-227/23, Kwantum Nederland and another v Vitra Collections AG [2024] EUECJ C-227/23, ECLI:EU: C:2024:914, EU:C:2024:914. He held that he was not bound by the decision as it occurred after IP Completion Day but he could have regard to it under s.6 (2) of the European Union (Withdrawal Act) 2018. Mr Forsyth concluded that although it was unnecessary to have regard to Kwantum the Advocate-General's analysis on the harmonization of copyright law by the Information Society Directive supported his reasoning.
Comment
This judgment imports some certainty on where to draw the line between "works" in the EU sense and "works of artistic craftsmanship" as in s.4 (1) (c) CDPA and other Commonwealth copyright statutes. It will discourage attempts to claim protection lasting the life of the the author plus 70 years for the design of utilitarian objects for which unregistered design right was intended. Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.
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