WaterRower is “arguably” a work of artistic craftmanship

EU, England and Wales

The Intellectual Property Enterprise Court (IPEC) has ruled that there are “real prospects” of establishing that a water resistance rowing machine is a work of artistic craftsmanship under the Copyright, Designs and Patents Act 1988 (the CDPA).

Background

The WaterRower is a water resistance rowing machine (the ‘WaterRower’), designed by former professional US rower Mr John Duke between 1985 and 1987, and subject of a now expired US patent.

The Claimant, WaterRower (UK) Limited, brought an action against Topiom (Liking Limited) claiming copyright infringement of the Claimant’s WaterRower. The Defendant applied to strike out the claim (or alternatively obtain summary judgment), on the basis that the “work” at issue is not a “work of artistic craftsmanship” within the meaning of section 4(1)(c) of the CDPA. 

The Claimant’s WaterRower:

WaterRower image 01

There have been eight iterations of the WaterRower (the above image is the first one). The Defendant admitted to having copied the eighth iteration of the WaterRower to create its TOPIOM Model 1. The TOPIOM Model 2 was an attempt to work around any rights said to subsist in the WaterRower.

The Defendant’s TOPIOM:

WaterRower image 02

As this was an application for the claim to be struck out, the Defendant was seeking a judgement that under Civil Procedure Rule 3.4(2)(a), there was “no reasonable grounds for bringing the case”, in other words that the claim was “obviously ill-founded”. In this case, the Defendant had hoped to establish that copyright did not subsist in the first place, and therefore that the infringement claim was bound to fail.

The sole issue before the Court was therefore whether the Claimant would have “reasonable grounds” to claim that the WaterRower is a work of artistic craftmanship so that it could be protected by UK copyright.

The Case

The Claimant provided evidence that the WaterRower had been recognised as an “iconic design” in the United Kingdom and the United States, having been featured in publications from the Museum of Modern Art (MOMA), the Conran Shop and design magazines including Architectural Digest and Galerie, and being on display in the Design Museum in London.

In reply, the Defendant submitted that it was clear the WaterRower did not meet the criteria for a “work of artistic craftmanship” under Hensher (the  leading authority on the issue), or alternatively for copyright more generally pursuant to the Court of Justice decisions in Cofemel and Brompton.

  • Considering Hensher, the Defendant submitted that the WaterRower, whilst having aesthetic appeal, is not artistic and cannot be considered to be a work or craftmanship, being ““totally technical”, with some “design choice”, but no skill of a craftsman””.

  • The Defendant submitted that the Cofemel and Brompton test (both of which confirmed that the only factor relevant to the subsistence of copyright protection was the originality of the work, as discussed in more detail in our previous posts here and here) was not met either, as the creation of the WaterRower was mainly based on technical considerations, leaving no room for creative freedom.

On the Defendant’s application for strike-out, it was for David Stone, Deputy High Court Judge, to determine whether the Claimant had “no reasonable grounds” to assert that the WaterRower was a “work of artistic craftmanship” and whether consequently the claim for infringement was “bound to fail”. 

UK Law

Considering the relevant UK case law (Hensher and Response Clothing), the Judge rejected the Defendant’s assertion that the WaterRower is not artistic, citing the following reasons:

  1. There was evidence of Mr Dukes’ artistic intention, namely to “recreate the sparse elegance of a Shaker design and to create a rowing machine in which the user has a welcoming emotional connection, as they would with a piece of art or furniture”.

  2. There was scope for the Claimant to prove the artistic nature of the WaterRower by referring to industry recognition, notably by the Museum of Modern Art and Galerie magazine of the “iconic design”, which could satisfy the requirement of possessing ‘more’ than eye appeal.

  3. He concluded that “the Claimant has a real prospect of proving that the WaterRower has a real artistic or aesthetic quality, beyond simply being appealing to the eye, and that the WaterRower embodies a sufficient degree of both craftsmanship and artistry, with the combination of these two things leading to the end result.”

EU Law

The Judge recognised that both parties had taken a common stance on the inconsistencies between UK and EU law, but concluded that at this stage there was “no need to resolve the apparent inconsistency between Cofemel/Brompton and the CDPA” because the WaterRower did have “eye appeal”, and therefore the question did not arise of whether it would have attracted UK copyright protection in the absence of such eye appeal.

Applying Cofemel and Brompton, the Judge found the WaterRower met the requirements of being an ‘original object’ and an ‘expression of [Mr Duke’s] own intellectual creation’ according to EU law. The extent of technical constraints on Mr Duke were not such that the idea and expression of the WaterRower were indissociable. The Judge pointed to different models of water-resistant rowing machines on the market, and deemed Mr Duke’s creative use and choice of wood to be a creative expression.  The Judge therefore considered that the Claimant also had a real prospect of success under the test set out in Cofemel / Brompton.

Considering the above, the Judge dismissed the Defendant’s application for strike out/summary judgment, allowing the Claimant to proceed with its claim.

Comment

As the above decision only related to an application to strike out the Claimant’s claim, it was not for the IPEC to reach a conclusion on whether the WaterRower is in fact a ‘work of artistic craftmanship’ – only to confirm that it could be. Assuming the case now proceeds to a full trial (and unless the parties opt for settlement, which must surely be more likely in light of this decision), the IPEC will have to determine whether the WaterRower actually constitutes a protectable work of artistic craftmanship under the CDPA - and in doing so, will hopefully cast further clarity on how the divergence between UK and EU copyright law should be resolved. However, the decisions in Cofemel and Brompton were handed down prior to the UK’s exit from the European Union are therefore binding on the IPEC as retained EU law. The IPEC’s discretion in coming to a final decision is accordingly constrained. The Supreme Court and Court of Appeal, on the other hand, would be free to diverge from European law, if given the opportunity to do so.

In the meantime, the gap appears to be widening. Readers may recall from our case update on Response Clothing (which you can read here) that there is significant uncertainty on how to apply the CDPA in conformity with Cofemel.

In Cofemel, the CJEU had expressly precluded Member States from imposing additional requirements (such as artistic or aesthetic appeal) over and above the requirement of ‘originality’ for copyright protection. In Response Clothing, the IPEC acknowledged that denial of UK copyright protection on the basis of a lack of aesthetic appeal would not have been in conformity with Cofemel. Nevertheless, on the facts of that case, the court was satisfied that it did not need to go as far as ‘complete conformity’ (i.e. by granting protection even in the absence of aesthetic appeal) because the work in question did have ‘aesthetic appeal’ – so the issue did not arise.

Much like in Response Clothing, the Judge in WaterRower was not compelled to reconcile the two tests, holding that the WaterRower, too, did arguably have aesthetic appeal. However, despite being an interim decision, the WaterRower judgment seems to go a step further in confirming and restating that the UK test for copyright protection does require some level of ‘artistic’ or ‘aesthetic’ character (or at least an artistic ‘intent’ by the author) over and above mere ‘originality’, going as far as saying that “a real artistic or aesthetic quality, beyond simply being appealing to the eye is required.

For now, the state of uncertainty persists on what qualifies as a “work of artistic craftsmanship” under the CDPA. Both Response Clothing and WaterRower represent missed opportunities by the UK courts to provide some much-needed clarity on whether they would actually deny copyright protection to works which, despite being ‘original’ in a Cofemel sense, lack aesthetic appeal or artistic intent. Although it is possible that a substantive decision in WaterRower could shed further light on this issue, the interim decision suggests that this important question may again be ‘dodged’ as being unnecessary for consideration  where artistic quality exists in any event.

Further clarity may not be achieved unless and until a UK court is faced with a case involving a work that is not even arguably ‘artistic’ in any sense, or the debate reaches the Supreme Court or Court of Appeal, neither of which (as indicated above) is strictly bound by decisions of the CJEU. In the meantime, the wider debate continues on whether UK copyright protection for 3-dimensional works should be confined to those that possess aesthetic or artistic character and consider the   author’s subjective “intent” in creating such works, or whether mere originality is the threshold. This question will be one of many on the UKIPO’s agenda as it embarks on the monumental task of reforming UK copyright and design law.  

Co-authored by Sophie Davison, Trainee Solicitor at CMS.