The Cofemel (C-683/17) decision saw the Court of Justice of the European Union (“CJEU”) hold that there were two requirements for copyright protection under Directive 2001/29/EC (the “InfoSoc Directive”):
- there must be ‘something original in the sense that it is an intellectual creation of its author’; and
- for there to be a ‘work’ the subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity.
Member States are precluded from imposing additional requirements such as artistic or aesthetic appeal (read more about Cofemel here). The Intellectual Property Enterprise Court (“IPEC”) has recently considered this CJEU judgment for the first time in the case of Response Clothing Limited v The Edinburgh Woollen Mill Limited  EWHC 148 (IPEC).
Response Clothing Limited (“Response”) had supplied a ladies’ top made from a wave pattern jacquard fabric (the “Wave Fabric”) to The Edinburgh Woollen Mill Limited (“EWM”). EWM subsequently provided a swatch of the Wave Fabric to other garment suppliers, and these then supplied EWM with garments made from a similar jacquard fabric. Response subsequently brought a claim against EWM, arguing that the Wave Fabric should be afforded copyright protection either as a graphic work or a work of artistic craftmanship, and that such copyright had been infringed by EWM.
Judgment of HHJ Hacon in Response Clothing Limited v The Edinburgh Woollen Mill Limited
In order to claim copyright protection, it is necessary to show that a work falls within one of the categories set out at section 1 of the Copyright, Designs and Patents Act 1988 (“CDPA”).
The Wave Fabric could not constitute a “graphic work” as defined in section 4(2) CDPA as it was knitted and so did not fall within any of the examples of graphic work which are all ‘created by the author making marks on a substrate to generate an image’.
To determine whether the Wave Fabric could constitute a “work of artistic craftsmanship”, Hakon looked at the New Zealand High Court judgement in Bonz Group (Pty) Ltd v Cooke  N.Z.L.R. 216, in which the Court determined that, to be considered a work of artistic craftmanship, it must be possible to say the author was both a craftsman and an artist. As Tipping J explained, ‘a craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal.' As per Mann J in Lucasfilm Ltd v Ainsworth ([2008 EWHC 1878 (Ch);  FSR 2) “the artistry of a designer and the craftsmanship of the knitters” could be combined and did not have to be the same person “at least where there is a proper nexus between the two people”.
Hacon considered that the Wave Fabric did fall within the definition of a work of artistic craftmanship as per the judgment in Bonz Group and could therefore fall within the category set out in section 4(1)(c) CDPA.
Hacon pointed to the House of Lord’s decision in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd  AC 64, and its consideration by Mann J in Lucas Film Limited v Ainsworth  EWHC 1878 (Ch) and ultimately found that ‘no binding principles of law can be deduced from the judgment… which compel me to the same conclusion now.’
Hacon then turned to consider Art 2 of the InfoSoc Directive which requires Member States to provide authors with an exclusive right to authorise or prohibit reproduction of their works. Crucially, in Cofemel, the CJEU held that the requirements for copyright protection under the InfoSoc Directive are the ‘classification as a work’ and ‘originality’, and that Member States are precluded from imposing additional requirements such as artistic or aesthetic effect.
In light of the Marleasing principle, it is necessary to interpret the CDPA in conformity with the InfoSoc Directive and the CJEU case law, and notably Cofemel. The issue before Hacon in this case was not whether the InfoSoc Directive removes gaps in copyright protection for ‘works’, but instead whether section 4(1)(c) of the CDPA could be interpreted in conformity with EU law. Hacon noted that it was possible to do so, ‘up to a point’. Beyond this, he commented:
‘Complete conformity with art.2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the Wave Fabric has aesthetic appeal and thus would be inconsistent with the definition of work of artistic craftsmanship stated in Bonz Group. I need not go that far since I have found on the facts that the Wave Fabric does have aesthetic appeal. This part of the definition in Bonz Group is satisfied whether or not, in law, it is required.’
Hacon adopted the following summary definition of a work of artistic craftsmanship in Bonz Group – which will be of interest to many fashion designers and skilled craftsmen - namely that
- “it is possible for an author to make a work of artistic craftsmanship using a machine;
- aesthetic appeal can be of a nature which causes the work to appeal to potential customers and
- a work is not precluded from being a work of artistic craftsmanship solely because multiple copies of it are subsequently made and marketed.”
On this basis Hacon concluded that the Wave Fabric was a work of artistic craftmanship and was therefore a protected copyright work, ultimately holding that Response’s rights had been infringed by the actions of EWM.
Whilst considering works of artistic craftmanship in the context of the Cofemel decision, Hacon observed that he did not need to go as far as ‘complete conformity’ with Cofemel since the Wave Fabric satisfied the requirement for aesthetic appeal and could be considered a work of artistic craftmanship. If the Wave Fabric did not have aesthetic appeal, it would not have attracted copyright protection under the current UK test for works of artistic craftmanship. Any such denial of copyright protection on the basis of a lack of aesthetic appeal would not be in conformity with the InfoSoc Directive in light of Cofemel.
Complete conformity with Cofemel would therefore likely mean that any original work, regardless of its aesthetic appeal or which category of work within the CDPA that it falls into, should be afforded copyright protection. While according to the Withdrawal Agreement existing CJEU case law continues to have binding, or precedent, status, it is not clear to what extent (if any) CJEU case law will be binding on UK courts post-Brexit and so it is not currently clear to what extent copyright protection under UK law and EU law may divert post Brexit. Watch this space!
Article co-authored by Frankie Gough.