Among the issues introduced to the UK by Brexit is uncertainty around the laws and regulations applicable to the creative and innovation industries. While some of these laws were harmonised prior to the UK's departure from the EU and continue to apply here, there appeared to have been a divergence between what was protected by copyright under UK law and what was protected under EU law in the context of works of applied art. This uncertainty was compounded by the fact that domestic copyright law itself was not entirely clear as to what articles of applied art, if any, are protected.
In Waterrower (UK) Limited v. Liking Limited, the Intellectual Property Enterprise Court (IPEC), part of the High Court of England and Wales, has analysed the leading UK judgments on applied art and handed down the first judgment which seeks to resolve the apparent divergence between UK and EU law head on. In doing so, it has taken the conversation about the role of copyright in post-Brexit UK to its next level.
Background
The WaterRower rowing machine was designed by a Mr Duke, who first began work on creating a rowing machine with a water flywheel in 1985. Mr Duke's aim was to create a "non-mechanical experience" involving a "welcoming emotional connection" which would allow the user to feel/hear the effect of water, so as to replicate the experience of single sculling on open water. Since the prototype model was launched, the WaterRower has been featured in a number of articles and publications, and displayed and sold by, amongst others, the MOMA Design Store in New York over a 16 year period. Subsequent iterations to the WaterRower have followed, albeit these have involved largely manufacturability changes.
Source: judgment dated 11 November 2024
The Defendant, Liking Limited, sells water resistance rowing machines in the UK under the brand name TOPIOM. WaterRower brought proceedings in IPEC for infringement of copyright in the WaterRower, on the basis that it was a work of artistic craftsmanship within s.4(1)(c) of the Copyright, Designs and Patents Act 1988 (CDPA). Whilst Liking accepted the TOPIOM models were copies of WaterRower models, it disputed that they were protected by copyright in the first place.
The key question before the Court then was the complex issue of whether the WaterRower was protected by copyright as a work of artistic craftsmanship under UK law.
UK law: Works of artistic craftsmanship
Under the CDPA, a work must fit into one of the eight categories of protection listed in s.1(1), i.e., the UK adopts a 'closed list' approach to copyright protection. Section 4(1) CDPA sets out various types of artistic works – for graphic works and other artistic works, the wording of the section is explicit that such works can be protected "irrespective of artistic quality". Section 4(1)(c) meanwhile provides for protection for what is called "a work of artistic craftsmanship" – it is this term, first introduced in the Copyright Act 1911 and with no statutory definition, that has proved to be an elusive one for the Courts to explain.
The leading case is that of the House of Lords in Hensher v Restawile, concerning the design of a suite of furniture. This was accepted by the parties to have involved craftsmanship but the Court, albeit with each Law Lord giving different reasons, concluded that that craftsmanship was not artistic and therefore was not protected under UK copyright law. Unfortunately, it has been difficult for subsequent courts to identify a clear set of principles from the different judgments of the Lordships in Hensher as to the meaning of 'works of artistic craftsmanship'.
In LucasFilm v Ainsworth, the Court had found that Stormtrooper helmets and armour were also not works of artistic craftsmanship, as they were not intended to appeal to the aesthetic, but to give a particular impression in the Star Wars films. Meanwhile, in a New Zealand case (Bonz v Cooke), the NZ Court, having reviewed the UK authorities in light of the similarity between UK and NZ legislation, said that it must be shown that the author was both a craftsperson and an artist: a craftsperson is someone 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.
EU law
In recent years, a "particularly difficult tension" has been identified between the approach to be applied to works of applied art under the CDPA (as set out above) and under a series of cases at the EU level (which operate in the UK as retained EU law). This tension has been brewing for a number of years at the interface between copyright and design protection, and between UK and EU law.
Because the facts in the WaterRower dispute arose before the end of 2023, the rule of supremacy of EU law still applied, requiring that the domestic legislation (i.e., the CDPA, as amended) had to be interpreted as far as possible in conformity with and to achieve the result intended by the InfoSoc Directive. Whilst this is a "strong duty of interpretation", the meaning of the domestic legislation cannot be distorted. Further, European directives should be interpreted according to the rules developed by the Court of Justice (CJEU). These cases were also binding on the Court and had to be taken into account, leading to the Court having to divine a route through the complexity.
Under EU law, the Design Directive provides for the possibility of cumulative protection for works of applied art – they may be protected by designs, as well as potentially by copyright. In a series of cases (including Cofemel, Brompton), the CJEU has decided that works, including works of applied art, should be protected by copyright under the InfoSoc Directive if they meet the originality criterion, with no other criteria being applied, i.e., with no requirement of aesthetic effect. In Cofemel, the CJEU said that the only requirements were that:
- The work is original in the sense that it is the author's own intellectual creation. The subject matter must reflect the author's personality and be an expression of their free and creative choices. It should not be dictated by technical considerations, rules or other constraints, leaving no room for creative freedom.
- It must be an expression of the author's own intellectual creation.
- The subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity. There should be no element of subjectivity, such as aesthetic value.
Reconciling the tension
The difficulty for the Court was that, as well as being bound by the House of Lords' 1976 decision in Hensher, it was also bound by the retained EU case law, including Cofemel/Brompton. The issue was to determine whether these could be reconciled, given that the UK approach requires something artistic, and the Cofemel line of case law expressly eschews that requirement.
The tension between the UK legislation (as considered in cases such as Hensher) and the EU approach was considered by the IPEC in 2020 in Response Clothing v Edinburgh Woollen Mill, concerning the design of fabric used in garments (discussed in more detail in our article here). The judge in Response concluded that the fabric would likely not have been protected as a work of artistic craftsmanship applying the various principles set out by their Lordships in Hensher but, as no binding principles of law could be deduced from that decision, he could apply instead the Bonz test. Applying the Bonz test (as set out above), he found that the garment did meet the criteria and so was a work of artistic craftsmanship. He also considered that the fabric design was original, in the sense that it was the author's own intellectual creation, and would therefore be a work applying the EU's Cofemel test.
However, given that in Cofemel the CJEU said that there can be no aesthetic requirement, the Judge in Response recognised that "complete conformity" between UK law and Cofemel was not possible, as excluding any requirement of aesthetic effect would be inconsistent with the definition of a work of artistic craftsmanship. But, because he had found that the fabric was a work of artistic craftsmanship applying the Bonz test, he did not need to determine the implications of this tension between UK and EU law.
The Judge in WaterRower also reached the conclusion that the prototype was an original work (as it was the author's own intellectual creation) in line with the EU's Cofemel test. Whilst some of the designer's choices in making the prototype were functional constraints, there remained room for him to reflect his personality in the subject matter as an expression of his free and creative choices. Later iterations to the WaterRower however involved changes that were technically constrained, and which did not reflect his personality as an expression of his free and creative choices.
However, unlike the outcome for the garment in Response, the WaterRower prototype was not entitled to protection as a work of artistic craftsmanship under the CDPA, applying what principles could be derived from Hensher and the related authorities. This inconsistency between the EU and UK positions could not, in the Judge's view, be reconciled. Whilst he recognised that, in principle, the Cofemel approach could subsume the requirements of s.4(1)(c) in its scope, this would require the Court merging/diverging from the statutory demarcation that the legislator had put in place as to the requirements of artistic quality in various categories of protectable works under the CDPA. To adopt this approach would be to "go against the grain of the wording of the CDPA and distort the intention of Parliament".
Accordingly, in an attempt still to achieve partial conformity, the Court said that a 'gateway' question should be answered, namely whether the work was original in the sense adopted in the CJEU case law (which it was in this case). Only if the work was original, should the assessment then move to the statutory phrase in s.4(1)(c) CDPA, to be assessed in light of the decision in Hensher and the related authorities. Whilst the Judge agreed that there were difficulties in identifying binding principles of law from Hensher, he thought it was in fact possible to perform a multi-factorial analysis of the statutory question, which drew upon the principles set out by the House of Lords.
Pursuant to this analysis, in particular, the Court concluded that the evidence supported the view that the WaterRower was "a commercial development, chosen from a number of rowing machine ideas, as the design most likely to achieve Mr Duke's business goals of creating a commercially successful rowing machine with a degree of aspirational sensory impact". It was not Mr Duke's intention to create a work where the craftsmanship in its creation was artistic.
As an alternative to the application of this multi-factorial assessment, the WaterRower would also not meet the test set out for works of artistic craftsmanship in Bonz. Whilst Mr Duke was a craftsman, who had used his skills to create the prototype and which had aesthetic appeal, he did not have the character of an "artist craftsman". The Judge accepted that these arguments were "somewhat circular", but this reflected the difficulties in formulating a test beyond application of the statutory phrase. Given how much of the WaterRower's USP was to recreate the sounds and sensations of rowing on water, it is interesting that WaterRower does not appear to have made any submissions that "art" can be an immersive sensory experience, rather than being limited to mere aesthetic appeal.
Conclusion
Although the ramifications of this judgment may be far-reaching, the IPEC's decision is based firmly in statutory interpretation rather than in a policy consideration of what should or should not be protected by copyright. In limiting itself in this way, the decision acknowledges that UK copyright law is out of step with EU law but reserves the task of bridging that gap, if it is to be bridged at all, for the legislature or, potentially, the higher courts. The advantage of leaving this complex task to the former is that Parliament can conduct impact assessments and canvass for a range of views on what direction copyright law should take, much as it is already doing when considering how copyright should be applied in the age of GenAI.
For those for whom the outcome is a disappointing result, mitigation may be found in the availability of other rights to protect their creations, notably in the form of designs or patents (indeed, the WaterRower had previously been protected by a patent). There will also, of course, be certain works that will meet the test for protection as a work of artistic craftsmanship.
By contrast, those who assert that copyright in its current form is already too blunt an instrument to regulate such divergent expressions of creativity as arts and crafts, buildings, literature, databases and AI, may be tempted to treat this decision as the start of a narrowing of copyright's ambit; in reality, however, this decision is a product of the very specific wording of the CDPA rather than any broader themes seeking to limit the scope of copyright protection.
What is clear is that, although this is the first decision on applied art where the outcome has turned on the differences between UK and EU copyright law, the conversation on the role of copyright in today's society will continue. Whether the Government will prioritise this aspect of the debate, in light of ongoing commitments to review copyright and GenAI, remains to be seen.