This article first appeared in the Intellectual Property Forum journal, published by Intellectual Property Society of Australia and New Zealand. Simon Clark and Sean Ibbetson, “Current Developments – Europe: United Kingdom: Can a wooden rowing machine be protected by copyright? ‘Why not’ says the High Court of England and Wales” (2022) 130 Intellectual Property Forum.

What amounts to a “work of artistic craftsmanship” (a WOAC) has been a constant area of uncertainty since the House of Lords’ judgment almost 50 years ago that a particular suite of furniture was not protected by copyright. The High Court of England and Wales recently had to review the current state of the law both from the perspective of the UK copyright legislation and case law, but also in light of recent Court of Justice of the European Union (CJEU) judgments which form part of retained EU law post-Brexit, but which appear to conflict with the previous UK copyright law.

The context of the decision was an application by the defendant to strike out a claim that copyright subsisted in a wooden rowing machine as a WOAC, which is one of the categories of copyright-protected works within the meaning of the UK’s copyright legislation.

The judgment is of interest because the intellectual property rights protection in the UK for objects, and particularly functional objects such as the rowing machine in dispute here, is particularly complex given the various different rights which may or may not be available to designers, and their interaction with each other.

The uncertainty in the law has led many claimants, including the claimant in this case, to plead that copyright subsists in their creations pursuant either to long-established principles of UK law or, in the alternative, based on the principles set out in recent judgments of the CJEU. Those CJEU judgments were delivered in the years shortly before the UK left the EU, and they are therefore part of the body of “retained EU law” which was imported into UK law as a way to smooth the UK’s exit from the EU, and are therefore binding on all courts below the Court of Appeal. The Court of Appeal and the Supreme Court have the power to depart from such judgments, but only on the same basis that the Supreme Court has power to depart from one of its own precedents. The Supreme Court has consistently stated that this is a power to be exercised with great caution.

This judgment highlights the inconsistencies between UK law and EU law which only serve to add to the sources of this uncertainty.

In this update, we set out the background to the dispute before examining the inconsistencies between UK and EU law. We also consider how that inconsistency might one day be resolved.

The background

The claimant in this dispute, WaterRower (UK) Limited, has alleged that its WaterRower rowing machine is protected by copyright and that the defendant, a company incorporated in Hong Kong, has infringed that copyright by virtue of designing and marketing a near-identical rowing machine called “the TOPIOM”.

The defendant has admitted that if the WaterRower is a WOAC, then copyright subsists and the defendant’s machine infringes that copyright. That admission is perhaps not surprising. As the Deputy Judge noted, the TOPIOM rowing machine is “a replica of iteration 8 of the WaterRower from which it was copied”.

The sole issues in dispute are therefore whether the WaterRower is protected by copyright either because it is a WOAC under the UK copyright legislation and/or because it is protected by copyright under the EU copyright law criteria discussed further below.

The WaterRower was designed by a US citizen, Mr John Duke, between 1985 and 1987. The key facts regarding the creation of the WaterRower and its reception – none of which were in dispute – are set out below. The importance of this background becomes clear when we come to consider the law on WOACs.

Mr Duke studied naval architecture at university. He has designed and built boats, including his own wooden one-man shell for the “Head of the Charles” regatta in 1977. He has a life-long interest in art, wood craft, and artistic design. In designing the WaterRower, Mr Duke gave evidence that he was inspired by both wooden rowing equipment, furniture makers, the Arts and Crafts movement and the aesthetics of Shaker furniture. He also gave evidence that his intention was to create a rowing machine which the user would have an “emotional connection” to, as they would “a piece of art or furniture”. The initial WaterRower was made by hand and some aspects continue to be so. The WaterRower was protected by a US patent, which has since expired. It has been recognised as an “iconic design” in the UK and US, and is on display in the Design Museum of London. The defendant conceded that the WaterRower is “aesthetically pleasing”.

Was the claim bound to fail?

As mentioned above, the defendant applied to strike out (or alternatively obtain summary judgment of) the claim that the WaterRower was protected by copyright.

In order to strike out the claim (or obtain summary judgment) the Deputy Judge had to consider whether the claim was “obviously ill-founded” or “bound to fail”.

As the claimant had based its case that copyright subsisted under either UK law or EU law, the Deputy Judge considered both sets of principles.

UK law on Works of Artistic Craftsmanship

The Deputy Judge first considered whether the WaterRower qualified as a WOAC as a matter of UK law.

Section 4(1) of the CDPA provides artistic works with copyright protection. Within the definition of “artistic works” falls a sub-category of WOACs. The legislation contains no further definition of a WOAC.

The leading UK authority on the scope of WOACs is the House of Lords’ judgment in Hensher.[1] As HHJ Hacon (a judge of the same court where this application was heard) recently said in Response Clothing, Hensher is not a straightforward judgment.[2] Whilst the five Law Lords in Hensher agreed that the furniture in question in that case did not qualify as a WOAC, their reasoning for this finding was not consistent. It is therefore not clear from their judgments what would qualify as a WOAC.

The Deputy Judge sadly, but quite understandably, declined to “reduce their Lordships’ speeches to a snappy definition of ‘works of artistic craftsmanship’”. He did, however, set out some of the key themes which arise from the Law Lords’ judgments, as that will be the task of the trial judge should this case reach trial. At this stage, the Deputy Judge’s role was simply to test the defendant’s submission that, on any view of Hensher, the claim would fail.

To be a WOAC, a work must be both “artistic” and a work of “craftsmanship”. The Deputy Judge first considered the requirement to be “artistic”. He dismissed the submission that the WaterRower was bound to fail this test, giving three reasons.

First, because three of the five Law Lords in Hensher considered that the intention of the creator was at least relevant to whether an object was artistic. In this case, there was evidence of Mr Duke’s artistic intentions, in particular that he wanted to create a machine with which the user has “a welcoming emotional connection, as they would with a piece of art or furniture”. The Deputy Judge considered that this evidence, on its own, was sufficient for the claimant to demonstrate that it had realistic prospects of establishing that the WaterRower was artistic.

Second, the Deputy Judge said that four of the Law Lords in Hensher suggested that to be “artistic”, something more than eye appeal was needed, but they were not clear what that “more” consisted of. The Deputy Judge considered that the elusive “more” might be the creator’s artistic intentions (as covered above), or alternatively evidence of how the item was perceived by others. In that regard, the claimant could point to the WaterRower’s recognition by the Museum of Modern Art and the Design Museum in London.

Third, one of the Law Lords in Hensher set out a list of works which could be held to be artistic. That list included items such as hand-painted tiles, stained glass windows, wrought-iron gates, and “some of the […] work” of carpenters and cabinet makers. The Deputy Judge was unable to conclude that the WaterRower was any less artistic in conception or appearance than those examples, each of which also had a functional purpose.

The Deputy Judge also rejected the submission that the claimant was bound to fail to establish that the WaterRower was a work of craftsmanship. The concept of craftsmanship was not in issue in Hensher (because “craftsmanship” had been admitted by the defendant), but it was considered by the High Court in Lucasfilm,[3] in a case regarding Stormtrooper helmets created for the Star Wars films. In that case, “craftsmanship” was held to require creation by a craftsman who took pride in their work, as opposed to being created by a “slavish copier or a jobbing tradesman”.

The Deputy Judge therefore held that the WaterRower might be a WOAC according to the principles of UK copyright law. It will be for the trial judge to decide once the case reaches trial and with the benefit of having considered all of the evidence.

EU copyright law

The defendant also argued that the WaterRower would fail to qualify for copyright protection pursuant to principles of EU law. This is relevant because, as mentioned above, EU law has recently developed in a way which is inconsistent with UK copyright law, and in particular the requirements for WOACs which are set out in Hensher.

The key principles from those CJEU judgments are summarised below.

In Cofemel v G-Star Raw (Cofemel),[4] the CJEU was asked whether it is permissible under EU law for the national law of an EU member state to deny copyright protection to designs (in that case, designs of t-shirts and jeans) which generate a significant aesthetic effect, on grounds other than originality.

The CJEU held that such a requirement was precluded by EU law. The only two requirements for copyright protection, according to the CJEU in Cofemel are:

1. that the creation is original (in the sense of being the author’s “own intellectual creation”, which will be the case if it is an expression of his free and creative choices”[5]); and
2. that it is an expression of that creation, in the sense that it is identifiable with sufficient precision and objectivity.

Immediately it can be seen how the UK’s requirement that a WOAC must be both “artistic” and a work of “craftsmanship” does add additional criteria on top of a requirement for originality which is not permitted following Cofemel.

In a subsequent judgment Brompton v Chedech,[6] the CJEU considered the question of whether copyright could protect functional objects. The dispute related to alleged infringement of copyright said to subsist in the claimant’s folding bicycle. In its judgment, the CJEU held that functional objects could in principle be protected by copyright, subject to their meeting the requirements set out in Cofemel.

The defendant in the WaterRower case argued unsuccessfully that the WaterRower would also fail to qualify for copyright protection if EU principles were applied. The Deputy Judge concluded: “It is clear to me that the WaterRower is an original object …It is also clear to me that the WaterRower is an expression of Mr Duke’s intellectual creation. Neither seems to me to be in doubt.”

The Brompton judgment offered the defendant little assistance because it simply confirms that functional objects such as a folding bike or perhaps a rowing machine can in principle be protected by copyright if they meet the Cofemel criteria.

The defendant’s attempt to strike out the claim therefore failed. The Deputy Judge did not find that the WaterRower was a WOAC or that it met the Cofemel criteria. He did, however, find that the claimant had a realistic prospect of establishing either or both of those things at trial.

Resolving the inconsistencies between UK and EU law

We have highlighted above one key area of tension between UK and EU law, namely the additional criteria required for a work to be protected by copyright as a WOAC over and above the Cofemel criteria.

There is a further area of tension, which is that the UK’s copyright legislation provides a closed list of categories which a work must fall within in order for it to be protected by copyright (for example, a literary work, an artistic work, a sound recording etc.) each of which has varying requirements. It is very difficult to reconcile that closed list of tightly defined categories with the judgment in Cofemel which suggests that only two requirements are permissible: being original and identifiable.

It is somewhat surprising that these inconsistencies remain unresolved. The Cofemel judgment is now over three years old, yet the UK courts have so far avoided having to properly grapple with its consequences. We consider there to be two main reasons for the continuing uncertainty. The first is that few copyright cases reach trial, and even fewer do so with the subject matter being a functional item. Second, when a court has had an opportunity to resolve the uncertainty, there has been a reluctance to do so. In Response Clothing, for example, the judge avoided deciding whether Cofemel or Hensher was the correct test by deciding that because the work in question did have aesthetic appeal and so was protected under the more onerous UK criteria, there was no need to reconcile the EU copyright law position. Although permission to appeal was granted in that case, the defendant went into administration before the appeal could take place. The opportunity for the Court of Appeal to have a say was therefore lost.

Using similar reasoning, because the Deputy Judge decided that the copyright claims under both UK and EU law were not bound to fail, it was not necessary for him to reach a conclusion on the differing approaches, and he could allow the case to proceed to further consideration by the trial judge.

This riding of two horses cannot continue forever. As the Deputy Judge remarked in this case, the interaction between UK law and Cofemel is an area of law which “need[s] to be resolved at some stage, by Parliament or the higher courts.”

If the WaterRower dispute reaches trial then we may at least see a judge grapple with the issue, although it is of course possible (and in our view, quite likely) that any judge will instead cover both bases by giving a judgment which seeks to satisfy both UK and EU law. We would then hope for an appeal to the Court of Appeal, a court which is able to depart from EU retained law in certain circumstances and so may feel more comfortable seeking to resolve the dilemma.

It is difficult to confidently predict whether the Court of Appeal may one day prefer Cofemel or Hensher. In other areas of copyright law, such as the interpretation of the “communication to the public” right, the Court of Appeal has been very reluctant to depart from established principles of EU law.[7] Communication to the public is not, however, an area in which there is any real tension between the UK and EU approaches, and so it is not comparable to the Cofemel/Hensher inconsistency. Adopting the Cofemel approach, and departing from the UK’s closed lists, would be a radical departure from the UK legislation. It might therefore be an area in which the courts would consider it appropriate to depart from EU law unless Parliament unexpectedly intervenes beforehand.

——
[1] George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64.
[2] Response Clothing [2020] EWHC 148 (IPEC).
[3] Lucasfilm Ltd v Ainsworth, [2008] EWHC 1878 (Ch).
[4] Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, C‑683/17.
[5] Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, C‑683/17,[30].
[6] Brompton Bicycle Ltd v Chedech/Get2Get, C‑833/18.
[7] TuneIn v Warner Music [2021] EWCA Civ 441.