The question of whether copyright can subsist in the design of functional items produced at scale (‘works of applied art’) is one of the great questions hanging over those dealing with intellectual property over the past few years. In an important judgment, a UK judge has decided that the WaterRower rowing machine does not benefit from copyright protection under the UK law, but would benefit from it under the EU test. While on the face of it, this is a bad decision for designers, all is not lost.
The issue of copyright protection in ‘works of applied art’ is particularly complex in the UK as the big legal developments that have expanded copyright protection to items such as clothing (Cofemel) and bicycles (Brompton) in the EU happened around the same time that the UK left the bloc.
There have been many cases in the UK where copyright has been claimed to subsist in the design of a product. One of those cases was WaterRower v Topiom, where WaterRower claimed that its water resistance rowing machine (image below) was protected by copyright. This was important as any other IP rights (in particular, patents and design rights) would have expired. Specifically, it claimed that the product was protected under UK statutory copyright law protecting ‘works of artistic craftsmanship’ (under s.4(1)(c) of the Copyright, Designs and Patents Act 1988 (CDPA)), with that test needing to be understood in light of EU decisions in cases such as Cofemel and Brompton.
In 2022, the defendant, Topiom, applied to strike out the claim on the basis that it had no real prospect of succeeding in showing that the WaterRower was protected by copyright. This was based on the traditional high bar to showing that a product is a work of artistic craftsmanship set out by English courts, i.e. that the work in question needed to be both artistic and an example of craftsmanship. That application was refused by the court on the basis that the claim that the WaterRower was a work of artistic craftsmanship was not hopeless, and could be proven at trial.
In a decision that has been handed down 15 months following the trial, the court has held that:
- The WaterRower is original in the ‘authors own intellectual creation' sense but not protected as a work of artistic craftsmanship as it was not artistic.
- Despite admitting that it copied the WaterRower, Topiom had not infringed copyright as none subsists.
Critically, the judge decided that it was not possible to reconcile the EU approach to copyright, which forbids any requirement for that a work be ‘artistic’, with the restrictive test applied to ‘works of artistic craftsmanship’ (being the closest available category of work for works of applied art) under UK copyright law, which requires that a work has at least ‘eye appeal’. The judge found that he could not interpret the requirement that a work be one of artistic craftsmanship in line with both EU law and s.4(1)(c) of the CDPA. Despite finding that the WaterRower was original in the EU sense as a ‘gateway’, he applied the two competing UK-law tests for ‘artistic craftsmanship’ (i.e. more than eye appeal, or eye appeal is sufficient) and found that neither were satisfied.
Silver linings
This is an important case for designers and those that imitate designs of others. I should say that the latter category is not necessarily pejorative, as many creative people are inspired by others. While generally more helpful to those defending claims, it is not all doom and gloom for brands and designers.
First, this is only a first instance decision and is very fact-specific. There is no general rule coming out of this case that works of applied art will not attract copyright protection. Indeed, several claimants have succeeded in other cases.
Second, WaterRower is likely to get permission to appeal the decision. It might quite legitimately complain about the fact that it took 15 months for the judgment to be delivered, which in a case where the highly fact and evidence-based issue of the artistry of the designer was in question, is sub-optimal. This would give the Court of Appeal an opportunity to either follow or diverge from the EU test, and in doing so decide where the line between copyright and designs should lay.
Third, the putative ‘work’ in question (a rowing machine), was not the best example of what could be claimed to be a work of artistic craftsmanship. While made of wood, and therefore naturally fitting the description of something made by craftsmanship, it is a particularly functional item. It had been the subject of a patent application that related to the way it was designed, and the scope for creativity was limited. I would argue that a fashion item would have better chances on artistry, if the requirement for craftsmanship can be overcome.
Fourth, the judgment touches on the recent decision in Kwantum v Vitra, where the CJEU held that EU member states were not able to apply the Berne Convention reciprocity provisions (see here). It is a highly technical area of law, but the upshot is that the WaterRower decision does not prevent UK designers from enforcing copyright in the EU, even if claiming copyright protection may be challenging in the UK.
The judgment has only just been handed down, and not yet released on the public repositories of decisions. More thoughts to follow as we consider it further.
I have determined that in his creation of the Prototype, Mr Duke did not have the character of an artist craftsman. I accept the arguments are somewhat circular. This reflects the difficulty in formulating any additional test beyond the application of the statutory phrase. Therefore, in my view, the work would also not have been one of artistic craftsmanship following Bonz.
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