Watershed moment
Ramsay Monime believes this is an important case for 3D works. EWHC 2084 (IPEC), WaterRower (UK) Ltd v Liking Ltd (T/A Topiom), IPEC, 5th August 2022.
Key points
- In bringing a copyright claim for a 3D work, consider issuing in the IPEC as both Response Clothing and WaterRower are IPEC decisions
- In such claims, collate evidence to support the “artistic” element of the work, which does not need to be the main purpose of it, and the craftsmanship element
- Assess the level of functionality of the product and consider whether the decorative elements elevate it into something artistic
Can a functional piece of exercise equipment be protected by copyright law as a work of artistic craftsmanship? Quite possibly, said the IPEC.
The piece of exercise equipment in question is the well‑known WaterRower rowing machine. The machine was designed between 1985 and 1987 by Mr Duke.
Liking Ltd (Liking) was selling a replica of the WaterRower. As a result, WaterRower (UK) Ltd brought copyright infringement proceedings in the IPEC. It argued that the WaterRower is protected by copyright as a work of artistic craftsmanship.
Liking applied to strike out the WaterRower (UK) Ltd claim.
Liking argued this on the basis that:
- The WaterRower was not a work of artistic craftsmanship as it was not protected as such under any of the five tests in the House of Lords decision in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd (Hensher); ([1976] AC 64)
- The WaterRower was not protected by copyright under the European Court of Justice’s test in Cofemel/Brompton,(Cofemel – Sociedade de Vestuário SA v G‑Star Raw CV, Case C‑683/17, [2020] ECDR 9) (SI and another v Chedech/Get2Get (Brompton), Case C‑833/18, [2020] Bus LR 1619)which meant that any inconsistency between UK and EU copyright law did not need to be resolved in this decision.
Artistic craftsmanship
The Judge rejected Liking’s first argument that, under Hensher, there was no real prospect of proving the WaterRower was artistic. His reasons were:
- Artistic purpose: Liking argued that the author’s primary purpose in creating the work had to be artistic. The Judge’s view of this is of note. Namely, he disagreed and said that artistic purpose only had to be one of the creator’s purposes. As Mr Duke had an artistic purpose (he wanted to create a water rower that invoked a Shaker design), there was no issue.
- Something more: Liking conceded that the WaterRower had “eye appeal” but that “more” was required under Hensher to qualify as “artistic”. The Judge acknowledged that while some of the Lords in Hensher clearly required “more” than eye appeal, none specified what this was. The Judge thought “more” could be the intention of the author (which was satisfied, see 1 above) or recognition by others that the work was artistic, which was also satisfied based on the evidence adduced by WaterRower (UK) Ltd.
WaterRower (UK) Ltd had adduced evidence that the WaterRower could be purchased in the Museum of Modern Art (MoMA) shop and its design had been acknowledged in an article in Galerie magazine.
The Judge commented that this type of evidence is probative in two ways. First, for what it says: the article in Galerie described the WaterRower as being “masterfully crafted”.
Second, the presence of the WaterRower in the MoMA shop indicated that “the curators of the MOMA shop consider it worthy of inclusion – that is, they recognise that it belongs alongside the other artistic works celebrated and sold by the MOMA”.
- Not less artistic than the Hensher examples: Lord Simon (one of the Law Lords in Hensher) set out a series of examples of works that he considered to be artistic. These included: hand‑painted tiles, stained‑glass windows, wrought iron and some of the work of carpenters, cabinet‑makers, printers, bookbinders, cutlers, needleworkers and weavers. The Judge compared these works to the WaterRower and found that he could not conclude on a strike‑out basis that the “WaterRower is any less artistic in its conception or appearance”.
The Judge then rejected Liking’s argument that there was no prospect of finding the WaterRower was a work of “craftsmanship”.
On this issue, he noted that Hensher was not a decision about craftsmanship, because this point had been conceded and therefore any comments in that decision were “strictly obiter”.
Then the Judge considered the test applied by Justice Mann in Lucasfilm (Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch) – namely, whether the creator can be considered a craftsman on the basis of:
(i) producing high‑quality products;
(ii) having a justifiable pride in his work; and
(iii) not being a slavish copier or jobbing tradesman.
Applying this test to the WaterRower, the Judge found that it was arguable the WaterRower was a work of craftsmanship. He was particularly influenced by the fact Mr Duke had studied naval architecture and had built rowing shells, parts of which are found in rowing machines.
Liking also argued that the WaterRower did not qualify for protection as a work of artistic craftsmanship because its design was constrained by functional considerations.
Importantly, the Judge found that a level of functionality should be no bar to protection.
He expanded on this by explaining that it is often the crafting of something both functional and artistic that makes a work one of artistic craftsmanship, as had been argued by WaterRower (UK) Ltd in this case. Thus, this argument was dismissed.
Cofemel/Brompton
The Judge considered if there was a real prospect that the WaterRower would be protected by copyright under the Cofemel/Brompton test. There are two cumulative requirements under this test.
First, there must be the existence of an original object. Second, there must be the expression of intellectual creation.
The Judge found there was a reasonable prospect of the WaterRower meeting both requirements. He then had to consider Liking’s argument that technical and other constraints deprived the WaterRower of originality.
The Judge further found that, although there were certain constraints (eg, the requirement of runners and a seat) on the features, that still left room for creative freedom and thus did not deprive the WaterRower of originality.
He was particularly influenced here by images of other water rowers that were in evidence. They demonstrated that there are a number of ways to present the features and thus exercise free creative choices.
In respect of the WaterRower, the use of wood, the choice of wood type, the shape and dimension of its features and the size of the body of water were all listed as creative choices.
Modern approach
Despite this only being an interim decision, it is important.
The Hensher decision has often been perceived as a bar to copyright protection for three‑dimensional (3D) works.
Yet, in this decision, the Deputy High Court Judge has effectively applied a modern approach to the House of Lords’ analysis, which arguably broadens what is protected.
Examples of this modern approach are peppered throughout the decision.
Particularly of note are the Judge’s comments that: the primary purpose of the creator does not need to be artistic; that an item offered for sale in the gift shop of a museum effectively signals the design of the work is revered by the museum; that a piece of everyday gym equipment is not necessarily less artistic than a stained‑glass window; and that a level of functionality should not be a bar to protection.
It is also fair to say that this decision, taken with Response Clothing, (Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC)) represents a policy shift to make it easier to protect 3D works by copyright.
Although the repeal of s52 of the Copyright, Designs and Patents Act 1988 was meant to open up protection for such objects, there was still uncertainty about protection because of Hensher.
The English Courts, in two decisions from two different judges, have now not ruled out copyright protection for works that would not traditionally be seen to be afforded protection.
What is more, the English Courts have done so in these decisions on the basis that either Hensher is not binding (Ibid, para 54) or the Hensher criteria are not as rigid as originally perceived.
This should send a signal to the creative industries that copyright protection is potentially available for 3D designs and less conventional works.
Although the judges in both Response Clothing and this decision declined to deal with the apparent inconsistencies between UK law (with its closed list of works eligible for copyright protection) and EU law following Cofemel (only requiring originality and fixation), the result of both decisions seems to indicate that UK law is moving in the same direction as EU law (albeit by deploying different tests) in recognising copyright protection for works traditionally not associated with such protection.
Ramsay Monime is a Partner at Briffa
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