Factual and Procedural Background
The Claimant ("Company A") is a company registered in England & Wales engaged in designing and retailing exercise equipment, including water resistance rowing machines sold under a specific trade mark. The Defendant ("Company B") is a company incorporated under the law of Hong Kong that retails similar water resistance rowing machines in the UK under a different brand name.
Company A asserts that various models of its rowing machines are works of artistic craftsmanship under section 4(1)(c) of the Copyright Designs and Patents Act 1988 ("CDPA"). These models, collectively referred to as the Works, are detailed in Annex 1 to the Amended Particulars of Claim ("APOC"). Company A claims that Company B copied these Works in its products, thereby infringing its copyright.
Company B denies that copyright subsists in the Works and counterclaims for a declaration to that effect. A dispute also arose regarding whether the Prototype, the earliest version of the rowing machine created by the original designer ("the Prototype"), is included within the pleaded Works.
The procedural context includes a Case Management Conference Order listing issues for trial concerning copyright subsistence, infringement, and the appropriateness of declarations sought. The trial was heard before Judge Forsyth in the Intellectual Property Enterprise Court, with evidence from several witnesses and post-trial written submissions.
Legal Issues Presented
- Does copyright subsist in the Works, including whether Version 1 and subsequent versions are works of artistic craftsmanship under s.4(1)(c) CDPA?
- Are the Works original within the meaning of the InfoSoc Directive?
- Did the Defendant infringe the copyright in the Works by copying and reproducing a substantial part in its products?
- Is it appropriate and necessary to grant the declarations sought by the parties concerning UK copyright?
- Related to the counterclaim, whether the Works are works of artistic craftsmanship and whether a declaration of non-infringement should be granted.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Equisafety Limited v Woof Wear Limited [2024] EWHC 2478 (IPEC) |
Application of s.4(1)(c) CDPA to works of artistic craftsmanship and interaction with EU law. |
Considered in post-trial submissions; court noted differences but did not find binding ratio affecting this case. |
| Kwantum Nederland BV v Vitra Collections AG, C-227/23, EU:C:2024:914 |
Clarification on harmonisation of copyright protection for works of applied art under the InfoSoc Directive and Berne Convention. |
Referenced as relevant post-Brexit CJEU decision; court not bound but considered it supportive of harmonisation view. |
| George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 |
Interpretation of "work of artistic craftsmanship" under UK copyright law. |
Applied as leading authority on s.4(1)(c) CDPA; court emphasized additional requirement of artistic quality beyond craftsmanship. |
| Lucasfilm Ltd v Ainsworth [2011] UKSC 39 |
Clarification of originality and artistic craftsmanship tests. |
Used to interpret and support the approach to craftsmanship and artistry in the Works. |
| Response Clothing Limited v The Edinburgh Woollen Mill Limited [2020] EWHC 148 (IPEC) |
Assessment of works as artistic craftsmanship and effect of EU law on UK law. |
Considered in context of conformity between UK and EU law; assisted court's multi-factorial analysis. |
| Cofemel - Sociedade de Vestuário SA v G-Star Raw CV (C-683/17) EU:C:2019:721 |
EU law harmonising copyright protection for works including applied art without requiring aesthetic effect. |
Applied to determine originality under the InfoSoc Directive as a gateway before UK s.4(1)(c) assessment. |
| SI, Brompton Bicycle Ltd and another v Chedech/Get2Get (C-833/18) [2020] ECDR 9 |
Clarification of originality and technical constraints in copyright protection of designs. |
Applied to assess whether technical function limits originality and copyright protection. |
| Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216 |
Test for artistic craftsmanship requiring both craftsmanship and artistic quality. |
Used as a summary test for artistic craftsmanship in assessing the Prototype. |
| Burge v Swarbrick [2007] HCA 17 |
Consideration of artistic craftsmanship in industrial design context. |
Referenced for approach to functional constraints and artistic expression. |
| Marleasing SA v La Comercial Internacional de Alimentacion SA (C-106/89) EU:C:1990:395 |
Principle of interpreting domestic law in conformity with EU directives. |
Guided court's interpretation of UK law in light of the InfoSoc Directive. |
| Nokia Corp v Interdigital Technology Corp [2006] EWHC 802 (Pat) |
Considerations for granting declarations of non-infringement. |
Applied in assessing whether requested declaration would serve a useful purpose. |
Court's Reasoning and Analysis
The court began by addressing a procedural issue concerning whether the Prototype was properly pleaded as part of the Works. Despite the Defendant's late argument that the Prototype was not pleaded, the court found that the pleadings and related documents sufficiently included the Prototype or suitably circumscribed the issue of any copyright subsisting in it. The court concluded that the Prototype was properly before it for determination.
The court then examined the witnesses' evidence, noting the original designer ("the Creator") was a credible and helpful witness, while other witnesses had varying degrees of relevance and reliability.
Turning to the substantive copyright issues, the court analysed the legislative background, including the CDPA and relevant EU legislation, particularly the InfoSoc Directive and Design Directive, and their interplay with international treaties such as the Berne Convention and TRIPS.
The court held that post-Brexit UK law remains bound by retained EU law and CJEU case law interpreting directives relevant to copyright. It rejected the Defendant's argument that the UK retains discretion under Article 2(7) of the Berne Convention to limit copyright protection for works of applied art.
The court engaged in a detailed review of the meaning of "work of artistic craftsmanship" under s.4(1)(c) CDPA, relying primarily on the House of Lords decision in George Hensher Ltd v Restawile Upholstery and subsequent cases. It highlighted the requirement that such works must have an artistic quality in their craftsmanship, a test distinct from the broader originality requirement under EU law.
In reconciling UK and EU law, the court acknowledged a conflict: EU law under the InfoSoc Directive requires only originality reflecting the author's free and creative choices and does not require aesthetic appeal, whereas UK law requires an additional artistic quality in craftsmanship. The court found these positions irreconcilable but proceeded to apply a two-stage test: first, assessing originality under EU law as a gateway, then assessing artistic craftsmanship under UK law.
Applying this framework to the facts, the court found the Prototype was original under the InfoSoc Directive, reflecting the Creator's intellectual creation despite functional and technical constraints. However, the court concluded that the Prototype did not qualify as a work of artistic craftsmanship under s.4(1)(c) CDPA, as the Creator did not have the character of an artist craftsman and the work lacked the required artistic quality in craftsmanship.
The court further found that subsequent modified versions of the Works, including Series 1 to Series 4 models, were not original works under the InfoSoc Directive due to their technical and functional constraints and did not qualify as works of artistic craftsmanship under UK law. Changes were primarily functional or manufacturability-driven and did not reflect the author's personality or creative choices.
On ownership, the court accepted Company A's unchallenged claim to copyright ownership in the Works.
Regarding infringement, although the court found no copyright subsisted, it addressed the issue hypothetically. It noted that Company B admitted copying certain versions and that the copies reproduced substantial parts of the Prototype's intellectual creation. Company B had knowledge of the alleged infringement, negating any defense based on lack of knowledge.
The court declined to grant the Defendant's counterclaim for a declaration of non-infringement, finding the requested declaration would not serve a useful purpose in the circumstances.
The court also considered recent intervening decisions, including Equisafety Limited v Woof Wear Limited and Kwantum Nederland BV v Vitra Collections AG, and found they did not materially affect its reasoning or conclusions.
Holding and Implications
DISMISSED
The court held that no copyright subsists in the Works, including the Prototype, as works of artistic craftsmanship under section 4(1)(c) CDPA. Consequently, the claim for infringement was dismissed. The Defendant's counterclaim for a declaration that no copyright subsists in the Works was also dismissed as it would not serve a useful purpose.
The decision directly affects the parties by resolving the dispute in favor of the Defendant on the copyright subsistence and infringement claims. No new binding precedent was established, but the judgment clarifies the application of UK copyright law in the context of works of artistic craftsmanship and its interaction with retained EU law post-Brexit.