Copyright law is evolving, (relatively) quickly. The decision in Waterrower (UK) Limited v Liking Limited (T/A Topiom) is the latest development considering protection of functional designs through copyright. While this line of case law arguably started roughly 15 years ago with the decision of the European Court of Justice (CJEU) in Infopaq, the CJEU's more recent decision in Cofemel has marked a distinct acceleration. In particular, that decision opened up a debate as to whether existing UK copyright law and practice was now in need of reform to bring it into line with EU law. (As the decision was pre-Brexit, it therefore amounts to retained EU law, which can only be overturned by the Court of Appeal or Supreme Court.)
This latest development is not a full-blown trial judgment (it was the hearing of the Defendant's application to strike out the Claimant's case on the basis that copyright was not available) and nor is it so seminal as the judgment in Cofemel. However, it sets out a clear basis for arguing that copyright is available to protect a range of functional designs. Waterrower (UK) Limited claims that the Defendant, Liking Limited, copied its rowing machine (the WaterRower - below) and infringed its copyright. The Defendant has admitted that, if copyright is available to protect the machine, its product would infringe – but disputes the availability of copyright protection.
The judge did not at this stage have to come to a full decision on whether copyright protected the design; he only had to decide whether the Claimant's case had no real chance of success. The judge essentially had to resolve whether the rowing machine could, potentially, be protected by copyright. If it could, then the Claimant's case would have an appreciable chance of success and could not be struck out.
The judge said it was entirely possible that the WaterRower could be protected by copyright – either as a work of artistic craftsmanship under UK law, or under the Cofemel approach.
The decision shows that businesses and creators should think broadly when it comes to copyright protection. It should not be assumed that copyright protection is unavailable because (for instance) a product is not what might be seen as a 'typical' copyright work (like books, sculptures or pieces of music).
Copyright protection: A refresher
Copyright law began to evolve in 2008 in Infopaq where the CJEU set out the approach to originality in copyright works, but has evolved significantly with the 2019 decision in Cofemel. Under UK law, copyright protection has only traditionally been available for certain types of 'works' that fall within an exhaustive list of categories (such as literary works, musical works, artistic works, dramatic works, broadcasts etc). If it is not possible to fit a work into such a category, it is not (on a strict reading of current UK legislation) protected under UK law.
However, in Cofemel, the CJEU essentially said works did not need to fit into such a category to be protected; they just needed to be original and objectively identifiable (an example from an earlier case is that the taste of cheese has been found, at least for now, to be too subjective to be protected by copyright). This meant that things which might not have previously attracted copyright protection could now, arguably, be protected by copyright. Limits on this protection remain, of course; for example, the court in the Brompton Bicycle case confirmed that where a product's shape is 'solely dictated by its technical function', that shape would not be protected by copyright. This is because an author of such a design could not express creativity in creating the design. The CJEU also confirmed that, where technical or functional considerations were present but had not prevented the author of a design from reflecting their personality and expressing creativity, copyright could still protect the design in question.
The implications of this apparent expansion of copyright protection can be seen in the recent IPEC decision in Shazam Productions Ltd v Only Fools The Dining Experience Ltd and others, where the court applied the Cofemel approach to decide that the character of Del Boy from Only Fools and Horses was protected by copyright (as a literary work). It is unlikely that the character would have been judged to be protected before Cofemel.
What is the WaterRower case about?
The case concerns a rowing machine, called the WaterRower, shown above.
On the Defendant's application to strike out the claim, the Judge found the WaterRower may be protected by copyright, saying Waterrower had 'real prospects' of showing that copyright subsisted in its rowing machine. In particular, the Court said there were real prospects of showing that the rowing machine was a work of artistic craftsmanship or that it was protected under the Cofemel line of case law. The Defendant had argued that the creation of the WaterRower was mainly based on technical considerations, which placed constraints on a designer of such a water resistance rowing machine. However, whilst the Judge accepted there were aspects of the design that had an element of functionality about them, the crafting of something both functional and artistic could lead to a finding of copyright protection. Further there was a real prospect of the Claimant establishing that the designer was able to exercise their own free and creative choices, and design the WaterRower so that it reflected their personality.
There are some key points about the WaterRower design worth mentioning. It had previously been protected by a patent, but this had expired some time ago. It has also been recognised as an iconic design, appearing in design publications and on display in the Design Museum in London.
The judgment does not mean that copyright definitely protects the WaterRower. This will be determined by the Court at a later date, assuming the parties do not settle this dispute before trial. It is a 'possibly' response rather than 'absolutely not'.
The Judge also did not deal (because he did not need to do so on this application) with the conflict between the approach in Cofemel and UK law.
Lessons
The obvious lesson here is not to assume copyright is available only to protect certain types of 'work'; a flexible approach can pay dividends. A wide range of products (including clothing and other products where creators can demonstrate appropriate creativity) may attract copyright protection, where before the focus would have been on (much shorter) design protection.
Businesses, particularly those in the retail and product design spaces, should watch this area closely. It is developing quickly and interested parties will need to understand each new development to make sure they know their rights and make the most of them.