Copyright

High Court (IPEC) rules that a WaterRower machine is arguably a work of artistic craftsmanship.

The Claimants, WaterRower (UK) Limited, brought an action against Liking Limited, trading as Topiom (the defendant) claiming that the defendant’s two models of water resistance rowing machine were infringements of copyright in the claimant’s WaterRower machine. The defendant applied to strike out the claim, or obtain summary judgment.

The WaterRower machine is reproduced below

The case turned on two main issues. The first was whether it was arguable that the WaterRower was a work of artistic craftsmanship. The second was whether the WaterRower should be protected by copyright because it met the tests for copyright subsistence set out in the Cofemel decision from the Court of Justice of the European Union.

The judge had to decide whether the claimant had a real prospect of success, without conducting a mini trial, but taking into account the evidence before it. The principle on a summary judgment / strike out application is that whilst the court should grasp the nettle and decide any short point of law or construction, it should not strike out a claim in an area of developing jurisdiction, as in those areas, decisions should be made on actual findings of fact.

The judge held that both the Claimant’s arguments had a real prospect of success and that therefore the proceedings should continue.

The defendant admitted that its model 1 rowing machine was a copy of the WaterRower and that its Model 2 rowing machine was an attempt to work around any rights the claimant might have in the WaterRower. It also conceded that the WaterRower was aesthetically pleasing.

The court had evidence before it that:

• Mr Duke, the designer of the WaterRower, was a boat designer and builder, with a life-long interest in art, crafting in wood, and artistic design;
• His aim when designing the WaterRower was 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”;
• The WaterRower was recognised as an “iconic design” in the UK and the USA, was on display in the Design Museum in London and was available in the Museum of Modern Art shop.

The legal points in issue were:

• Whether the closed list of copyright works in the Copyright Designs and Patents Act 1988 was permissible under EU law (as it subsisted when the UK left the EU);
• Whether the leading House of Lords authority on works of artistic craftsmanship, Hensher v Restawile (Hensher), conflicted with the CJEU decisions of Cofemel-Sociedade de Vestuário v G-Star Raw(Cofemel); and SI and another v Chedech/Get2Get (Brompton);

Having reviewed the cases, the judge held that there would be no strike out or summary judgment because:

• There was a real prospect that the claimant could prove that the WaterRower was “artistic”, with an artistic or aesthetic quality going beyond appealing to the eye, that its production was an act of craftsmanship, and that it was therefore a work of artistic craftsmanship.
• The claimant had a real prospect of success under Cofemel. It was clear that the WaterRower was an original object which was the expression of intellectual creation.  The claimant had real prospects of arguing that any technical constraints were not such that the idea and the expression become indissociable.
• There was no need for the court at this stage to resolve the apparent inconsistencies between UK and EU copyright law. That might have been necessary if the WaterRower did not have eye appeal, as the court in Hensher had said that eye appeal was necessary whereas Cofemel says that eye appeal cannot be required. The interaction between the two approaches was not a simple one.

Comment

There has been much discussion about what constitutes a work of artistic craftsmanship, and can therefore benefit from the long protection given by copyright, often in the context of unregistered design law and its shorter duration. In this case, the design dated from 1985 to 1987 so no question of protection under design law arose.

Whilst it may not be hard to assess whether a work is one of craftsmanship, what makes a work artistic is more elusive. We know that under Hensher, the work must have eye appeal and more, but we do not have any case which tells us what “more” is, or how it is to be assessed. We also have very limited caselaw considering whether and if so how Cofemel should be applied to UK copyright law by the UK courts. As this was a summary judgment / strike out hearing, not a full trial, this was not the occasion to judge these controversial issues, but hopefully the courts will have that opportunity in the near future.

WaterRower (UK) Limited v Liking Limited (t/a Topiom) [2022] EWHC 2084 (IPEC) — to read the judgment in full, click here.