The fine line between function and artistry: lessons from a Danish Plant Box

On 22 April 2022, the Danish Eastern High Court ruled that a plant box violated copyright, registered design rights and rights under the Danish Marketing Practices Act. The ruling serves as a reminder of the blurry, and much-debated, line that divides design rights and copyright. Whilst the Danish ruling indicates a convergence towards EU practice on the wide scope of “originality” for copyright, the UK courts to date have taken a relatively firm stance to the overlap between functional designs and 3-dimensional “artistic” works. This article explores how the UK courts might have approached this case in light of their current position on copyright for 3-dimensional works.

Context

ferm Living ApS (“ferm”) is a Danish design company. They designed the disputed plant box in 2015 (“Plant Box 1”). At that time, it was reportedly one of three plant boxes on the Danish market and was unique in its design.

Wolly & Co is a family-owned design and wholesale company. They created their version of ferm’s plant box (“Plant Box 2”) which they supplied to Coop and Fakta, a Danish cooperative and one of its chains.

Around 2017/2018, Coop marketed Plant Box 2 on its website, in brochures and on their Instagram account. ferm filed for infringement on the grounds of similarity to its Plant Box 1 design.

The April 2022 ruling was an appeal of the first instance proceedings heard in October 2020, which ferm lost. In that case, it was ruled that despite Plant Box 1 being a copyright protected work, Plant Box 2 had not infringed that copyright. This was on the basis of differences in both design and quality. On appeal, it was found that minor differences did not change the overall impression of the plant boxes, with Plant Box 2 using Plant Box 1 as a direct source of design inspiration. Consequently, there was found to be infringement of copyright, registered design rights and breach of the Danish Marketing Practices Act in respect of ‘good marketing practice’.

Functional objects as works of art?

The Danish court’s ruling is an example of partly functional objects being recognised as “works of art” for the purposes of copyright, giving them protection over and above design rights. This approach aligns with EU law, specifically the CJEU’s ruling in Cofemel which held that copyright applies to all “original” works (being the expression of the author’s own intellectual creation, free and creative choices) with no additional requirement of aesthetic or artistic appeal.

This can be contrasted with the UK courts’ aversion to rubber stamping the Cofemel approach into domestic law. Traditionally, UK courts have been reluctant to grant copyright protection to 3-dimensional objects that do not squarely fall within the definitions of an “artistic” work under the Copyright, Designs and Patents Act 1988 (CDPA), being sculptures or ‘works of artistic craftsmanship’. The underlying policy concern has been that, if UK copyright protection in 3-dimensional works were to arise in all “original” works regardless of any artistic character or merit, then this would essentially create an additional quasi-design right of author’s life plus 70 years which would extend to functional designs. The IPEC came close to aligning with the EU approach in Response Clothing v Edinburgh Woollen Mill (reported by Law-Now here), but the facts of that case enabled the court to side-step applying UK copyright law in “full conformity” with the Cofemel principles. It therefore remains unclear whether (and how) the “aesthetic/artistic appeal” requirement will be applied in future UK copyright cases.

In the present case, ferm also had the benefit of a registered design in support of its claim. Had this not been the case, a UK claimant in ferm’s position might have also been able to rely on UK unregistered design right under the Copyright, Designs and Patents Act 1988 (CPDA), which grants up to 15 years’ protection to the shape and configuration of original 3-dimensional designs, including purely functional ones, regardless of any artistic appeal or quality.

Damages

In this case, the Danish court awarded an overall amount for reasonable remuneration, damages and non-financial damages of DKK750,000 (approx. £86,000) from Coop and DKK 250,000 (approx. £29,000) from Wolly (the claims were DKK1.5m and DKK250,000 respectively). Commentators have noted that this was a generous approach by the Danish courts and one that was more in-line with EU practice than the Danish courts’ previous approach to damages.

A parallel can be drawn here with the IPEC decision in Original Beauty Technology Co Ltd & others v G4K Fashion Limited & others (“Oh Polly”), reported by Law-Now here. This case also saw a generous and unprecedented award of damages (on account of ‘flagrancy’). Oh Polly suggests that, separately from any EU principles, the UK courts’ attitude to damages for design infringement (certainly in the case of deliberate or ‘couldn’t care less’ infringement) is also changing.

Account of profits were not awarded in ferm v Wolly due to other plant boxes entering the market in the claimed sales period. The court found insufficient evidence that sales were affected because of the infringement as opposed to dipping merely as a result of promotion of competing products. Nevertheless, in an analysis of how this case might be judged in the UK, it is worth noting the principles set out in the IPEC’s recent decision in Bei Yu Industrial Co v Nuby (“Nuby”, reported here) which assessed an account of profits derived from design infringement. As helpfully summarised in Nuby, the purpose of an account of profits in UK intellectual property cases is to deprive the infringer of its improperly made profits, and to transfer these to the wronged party. Adopting the IPEC’s approach in Nuby, a UK court hearing the ferm case would likely assess how wedded Wolly were to their infringing design and whether they could (and would) have used an alternative. The reported facts suggest that the replication was intentional, and another design would not have sufficed. This (in a UK court) would likely have contributed to a more generous account of profits in ferm’s favour.

Conclusion

Given its functionality, it is not clear whether a UK Court would agree that the design for Plant Box 1 is entitled to UK copyright protection. There is considerable uncertainty around the UK court’s application of Cofemel, and whether an element of “artistry” is a requirement for copyright protection of 3-dimensional works under UK copyright law. Further clarity is needed from the UK courts on whether (and to what extent) they intend to apply the CDPA in complete conformity with the guiding principles set out in Cofemel post Brexit; that is, their intention to grant copyright protection to “works of artistic craftsmanship” (and indeed other types of “original” works) regardless of aesthetic appeal.

Interestingly, the Danish court in ferm noted a body of domestic case law indicating that applied art is only protected against identical or close-to-identical reproductions due to the lack of alternatives when designing such works. This suggests that, insofar as functional items can, in principle, be given copyright protection, the scope of that protection may be narrower because of limitations to design freedom. This could be a way to reconcile the overlap between designs and copyright for applied art (including in the UK) for certain works. That is, (i) allowing longer-term copyright protection for “original” works that have no aesthetic appeal, but on the basis that it will be narrowly construed and largely limited to near-identical replicas, coupled with (ii) a shorter-term design rights to provide broader protection against designs that “produce the same overall impression” or amount to “substantial” copying.

In the current climate, until this legal ‘grey area’ is clarified, designers relying solely on copyright to protect purely (or predominantly) functional designs should be aware of a more limited scope of protection when enforcing claims against design infringers.

To read more about the UKIPO’s current consultation on reforms to the legal ambiguity between copyright and design law, click here to access Part 3 of our ‘Spotlight on Designs’ series.