WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC)

Strike Out Refused: WaterRower could be a work of artistic craftsmanship

The Defendant sought to strike out the Claimant’s claim for infringement of copyright in its water resistance rowing machine (the WaterRower), on the basis that the WaterRower did not meet the requirements to be a “work of artistic craftsmanship” within the meaning of s.4(1)(c) CDPA 1988.

There was a dispute over how “works of artistic craftsmanship” should be interpreted , with the Defendant arguing that the House of Lords Hensher v Restawile case is the leading authority and the Claimant asserting that the test set out in the recent Response Clothing v Edinburgh Woollen Mill case should be applied. Both parties acknowledged that UK law and EU law in this area conflict.

The Judge refused to strike out the claim. He held that the Claimant had a real prospect of demonstrating at trial that the WaterRower meets the requirements of Hensher and Cofemel/Brompton and thus is a work of artistic craftsmanship.

What are the practical implications of this case?

It is clear that there are a number of unresolved points of law in this area. Namely: (a) whether the UK’s closed categories of copyright works is permissible under EU law (as it subsisted at the time of the UK’s exit from the EU); (b) whether the leading authority on works of artistic craftsmanship in the UK, George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64, conflicts with two Court of Justice’s decisions handed down prior to UK’s exit from EU, namely Cofemel-Sociedade de Vestuário SA v G-Star Raw CV (C-683/17) [2020] ECDR 9 and SI and another v Chedech/Get2Get (Brompton) (C-833/1) [2020] Bus LR 1619; and (c) whether the decision of HHJ Hacon in Response Clothing Ltd v Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), which discusses both of these issues, was correctly decided.

The very stark conflict between the Court of Justice’s decisions and that of the House of Lords in Hensher is that the majority held in Hensher that something more than eye appeal was necessary for an object to be a work of artistic craftsmanship, whereas the Court of Justice in both Cofemel and Brompton held that the only requirement for an identifiable object to qualify for copyright protection is originality (the work must the author’s own intellectual creation). As such, there are certain objects in which copyright would subsist under EU law but would not subsist under UK law. Since the Defendant argued that the WaterRower failed under both Hensher and Cofemel/Brompton in any event, it was not necessary for this Judge to address the inconsistencies in the law. Yet, if this case proceeds to trial, it will provide a perfect opportunity for the English court both to depart from Cofemel/Brompton and set out a definitive definition of a “work of artistic craftsmanship”.

Moreover, given the nature of the stark conflict, whilst the first instance courts are bound by “Retained EU Case Law”, the Court of Appeal may depart from it for good reason and the Supreme Court is not bound at all by it. There is no doubt that many practitioners, both UK and EU, feel that the Court of Justice has got it badly wrong in granting copyright protection (which lasts 70 years after the death of the author) to industrial and everyday products. They see this as the province of sui generis design laws (whether registered or unregistered  rights). Indeed, in 1988, s.51 of the UK Copyright Designs and Patents Act 1988, in essence, abolished copyright protection for such products. The Court of Appeal or the Supreme Court may well choose to depart from Cofemel and Brompton to make copyright law in the UK consistent with the 1988 Act.

What was the background?

The Claimant and Defendant both manufacture and sell water resistance rowing machines, which are made from wood and have a particular eye appeal. The Claimant owned a US patent for its WaterRower, which had long since expired. The Claimant issued proceedings against the Defendant on the basis that its WaterRower was a work of artistic craftsmanship within the meaning of section 4(1)(c) of the Copyright Designs and Patents Act 1988 and the Defendant’s TOPIOM Models 1 and 2 infringed the Claimant’s copyright in the WaterRower.

The Defendant admitted to copying the WaterRower but argued that it was entitled to do so because the patent had expired and there was no other IP protection available to the Claimant. The Defendant then sought to strike out the claim, or alternatively, obtain summary judgment of the claim. It was argued that on an application of both the UK and EU law, the WaterRower simply was not a work of artistic craftsmanship. The Defendant asserted that the WaterRower was neither artistic nor a work of craftsmanship within the meaning of Hensher, and because its creation was mainly based on technical considerations which restricted the free choices of the creator, it also fell outside the test in Cofemel/Brompton.

Since the Defendant conceded that if the WaterRower was a work of artistic craftsmanship then copyright subsists and the TOPIOM Models 1 and 2 infringe, the only issue to be decided by the Judge was whether or not it was a work of artistic craftsmanship.

What did the court decide?

The Judge refused the Defendant’s application for strike out and/or summary judgment, holding that the Claimant had a real prospect of proving that the WaterRower was a “work of artistic craftmanship” under Hensher.

He rejected the Defendant’s argument that “on any view” he was in a position at that stage of the proceedings to conclude that the WaterRower was not “artistic”, for the following reasons:

  1. Lords Reid, Morris and Kilbrandon all held that the intention of the creator was at least relevant to whether a work of craftsmanship is artistic and further evidence which would be adduced at trial was relevant to this;
  2. He could not say at that stage that the WaterRower would not fall within the notion of “work of artistic craftsmanship” as described by their Lordships; and
  3. In light of the examples of artistic works given by Lord Simon, he was unable to conclude that the WaterRower was any less artistic.

Further, the Judge held that he could not conclude based on the evidence before him that the WaterRower was not a work of “craftsmanship”, since there was evidence that the creator was a craftsman.

Turning to EU law, the Judge held that the Claimant also had a real prospect of success under Cofemel/Brompton since the Claimant could demonstrate that whilst the creator worked within the design constraints for a water resistance rowing machine, they were still able to exercise their free and creative choices. The Judge recognised that the interaction between the CDPA 1988 and Cofemel/Brompton must be resolved at some stage by Parliament or the higher courts, but maintained that the inconsistencies relied upon by the Defendant did not arise on the facts before him.

Case details

  1. Court: Intellectual Property and Enterprise Court
  2. Judge: David Stone (sitting as a deputy judge of the High Court)
  3. Date of judgment: 05/08/2022

Jonathan Moss & Kendal Watkinson, instructed by Gunnercooke LLP for the Defendant

READ MORE: WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC) (05 August 2022) (bailii.org)

By Guy Tritton