The WaterRower copyright dispute: An oar-some success or just a boatload more questions?

The Intellectual Property Enterprise Court (a division of the High Court of England and Wales) has handed down its long-awaited judgment in the case of WaterRower (UK) Limited v Liking Limited (t/a Topiom).

The case concerned the issue of what qualifies as a work of artistic craftsmanship under s.(4)(1)(c) of the Copyright, Designs and Patents Act 1988 (CDPA), and therefore the boundaries of copyright protection in relation to this type of work.

This was a significant case, whose judgment promised to clarify long-standing questions and apparent inconsistencies between EU and UK law. Unfortunately, those inconsistencies remain, and the current landscape is challenging for those who design and/or sell products in the UK which are attractive but not always “artistic”.

Background

This aspect of English copyright law has always been tricky. In 1976, the House of Lords decided unanimously that the prototype furniture in the case of Hensher was a work of artistic craftsmanship. The Lords did, however, have multiple, subtly different views on what “artistic craftsmanship” meant.

This was not helped by EU copyright harmonisation under the InfoSoc Directive (which was incorporated into UK laws well before Brexit) and the line of the Court of Justice of the European Union (CJEU) case law flowing from it. The CJEU’s decisions in Cofemel and Brompton were parting gifts just before Brexit, and suggested that the only condition to be met for a work to qualify was originality, in that the protected elements of the work would be the expression of the author’s own intellectual creation. This (barely there) standard seemed to be inconsistent with the traditional UK approach: specific, closed categories of works, such as works of artistic craftsmanship. The judgment in WaterRower is the first attempt to tackle this tension, in the context of an elegant, water resistance rowing machine.

As Deputy High Court Judge Campbell Forsyth succinctly put it in his judgment: “this question is a complex one”.

The facts

The WaterRower was designed – and the prototype hand-built – by John Duke in the 1980s. Drawing on his experience as a competitive rower and love for rowing in wooden shells (boats), Mr Duke created a rowing machine centred around the “non-mechanical experience” with a “welcoming emotional connection”.

Mr Duke’s WaterRower, which was carefully handcrafted, was soon recognised for its stylishness. It was even featured as an iconic design by the Museum of Modern Art in New York.

Undoubtedly, the WaterRower has been a huge commercial success over the past four decades. Its design has evolved since its prototype, but with the changes largely being to improve its manufacturability. The WaterRower was originally protected by a patent, but this has lapsed.
Liking, a Hong Kong incorporated company, sells water resistance rowing machines in the UK. Liking accepted that two of its TOPIOM models were copies of the WaterRower but disputed that copyright subsisted.

If the WaterRower is not a work of artistic craftsmanship, then it is not protected by copyright under the CDPA at all. This would mean that Liking would not be liable for copyright infringement, and it (and others) would be free to sell replica products in the UK.

The decision

As the UK is bound by retained EU case law, the Judge was clear that the High Court did not have the discretion simply to ignore the relevant CJEU cases (including the above) in its analysis of what is a work of artistic craftsmanship.

The Judge followed a multi-factorial analysis, acknowledging that expert evidence, views of relevant parts of the public, and the author’s intentions may all be relevant in arriving at his answer.

In light of this, the Judge determined that the prototype WaterRower was Mr Duke’s own intellectual creation and an original work. Under the InfoSoc Directive, and therefore the harmonised position on copyright under EU law, the prototype WaterRower would be a work protected by copyright.

However, the Judge noted that on the facts of this case, s.(4)(1)(c) CDPA cannot be reconciled with the InfoSoc Directive (which aligns with HHJ Hacon’s comments in the Response Clothing decision) because:

• Applying Hensher, such works under the CDPA should have aesthetic appeal and some kind of artistic quality.
• The harmonised EU approach to originality (including sections 1 and 4 CDPA, but not s.4(1)(c)) does not go so far as requiring artistry in craftsmanship. The Judge felt that to go against this would contradict the intention of parliament reflected in s. 4(1)(c) the CDPA.

To attempt to respect both EU and English law, the Judge adopted the following approach:

1. Is the work original within the meaning of the InfoSoc Directive, by reference to the author’s own intellectual creation?
2. If the work satisfies the originality test, then consider the statutory wording of s.4(1)(c) in light of the domestic line of case law.

Applying point one to the WaterRower prototype and later modified versions (taking the intellectual creation to mean the overall shape of the works), the Judge determined that only the prototype was original and not the subsequent versions. This was because subsequent versions involved limited changes that were restricted by functional constraints, preventing the designer (author) from expressing their free and creative choices to an extent that would reach the level of originality.

The Judge then considered whether the prototype is work of artistic craftsmanship under s.4(1)(c). He noted that although there were technical/functional constraints in the choice of shape of the WaterRower, there was still considerable room for Mr Duke to make creative choices in its design. Additionally, the Judge accepted that the prototype had been created carefully so as retain the natural beauty of the wood used, and that a significant section of the public found the WaterRower to be aesthetically pleasing.

Ultimately, however, the Judge returned to the fact that the WaterRower was a commercial innovation and Mr Duke’s intention was not to go further than a successful product with a “design of aspirational sensory product” such that the WaterRower would be a work where the craftsmanship was artistic.

The Judge commented that Mr Duke could be considered a craftsman in the context of his design of the WaterRower and used his skills to create something that is aesthetically appealing – just not enough for the WaterRower to have the requisite artistic quality to benefit from copyright protection under s.4(1)(c). A hollow consolation prize for Mr Duke.

Despite this finding, the Judge dismissed Liking’s counterclaim and declined to grant a declaration of non-infringement on the basis that no copyright subsists in the WaterRower (which it had sought on the basis of market certainty). In his view, such a declaration would not serve a useful purpose.

Where do we go from here?

WaterRower will come as a disappointment to many who had hoped it would offer clarity on the conflict between EU and UK copyright laws.

The Judge acknowledged the difficulty of this topic and the circularity of the arguments made (acknowledging Mr Duke’s craft and skill, but finding that in creating the WaterRower, Mr Duke was not an artistic craftsman), citing this circularity as the hurdle to being able to define an additional test.

If one of the factors in the multi-factorial analysis is the intention of the designer/author at the time of creation of the work (which in WaterRower, seems to have weighed heavily in the Judge’s thinking), then it seems that absent clear contemporaneous evidence that a work was intended to have artistic quality (and the designer/author was a “craftsman”), the intention to make a commercially successful product will be tough to overcome. This may cause some concern for those who consider that their works (particularly prototypes) are created using skill and craft, but may then be replicated and commercialised. What about designers of carefully crafted furniture, limited-production vehicles, and handmade shoes?

This decision is not, however, an unqualified victory for copycats. It may limit the effectiveness of using copyright as one of a patchwork of IP rights as a patchwork to extend the duration of protection of a work (following expiry of a patent or design). Savvy designers and brand owners will still find creative ways to keep the copycats at bay (we have a few ideas), and this decision makes clear that the outcome of each copyright dispute will still depend on its facts and the work in question.

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