Rowing back from Cofemel – WaterRower is “original” but not “artistic”

In the autumn of 2022, we reported on the interim decision of the Intellectual Property Enterprise Court (“IPEC”) in WaterRower v Liking Limited (t/a TOPIOM) which held that a wooden rowing machine was “arguably” a work of artistic craftsmanship under section 4(1)(c) of the Copyright, Designs and Patents Act 1988 (“CDPA”).

Now, two years on, the High Court has ruled that whilst the WaterRower satisfies the test of “originality” under the Information Society Directive 2001/29/EC (the “InfoSoc Directive”) as interpreted by the Court of Justice (“CJEU”) in Cofemel v G-Star Raw (C-683/17) (“Cofemel”), it does not qualify as a “work of artistic craftsmanship” under the CDPA and therefore does not benefit from copyright protection.

This long-awaited decision sees the High Court wrestle with “irreconcilable” EU and UK principles of copyright protection for works of applied art. It represents a landmark shift in favour of a more restrictive interpretation of the CDPA and will come as a blow for designers who rely on copyright to protect 3-dimensional works.

Background

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

^{Source: Approved Judgment of the High Court}

WaterRower Ltd, the claimant (“WRL”) alleged that the defendant, Liking Ltd (“Liking”) had infringed its copyright by copying the WaterRower designs by retailing similar machines in the UK under the name TOPIOM. WRL claimed that its machines were works of artistic craftsmanship (“WOACs”) under section 4(1)(c) of the CDPA. Liking countered that no copyright subsisted in the works and sought a declaration of non-infringement.

Key Issues

The court identified several key issues for trial:

1. Whether the first prototype of the WaterRower machine (the “Prototype”) was a WOAC in which UK copyright subsisted.
2. Whether each of the subsequent versions of the WaterRower machine qualified for UK copyright as WOACs.
3. Whether Liking had copied any version of the WaterRower machine directly or indirectly in the creation of the TOPIOM models and reproduced a “substantial part” of these works. 

Muddy waters: The WOAC dilemma

The question of what amounts to a “work of artistic craftsmanship” under the CDPA has been the subject of a series of UK cases. The 2020 ruling in Response Clothing v Edinburgh Woollen Mill (see here) foreshadowed that s. 4(1)(c) was on a direct collision course with the InfoSoc Directive and its interpretation by the CJEU in Cofemel.

To re-cap:

1. The CDPA requires 3-dimensional works (other than sculptures and works of architecture) to embody ‘artistic’ craftsmanship to qualify for copyright protection.
2. This goes against the Cofemel decision which said that, per the InfoSoc Directive, Member States must not impose any requirements over and above “originality” (in the sense of it being the author’s own intellectual creation) for copyright to subsist in an article.

The court in Response Clothing acknowledged that the CDPA was not in ‘complete conformity’ with the CJEU’s interpretation. The IPEC (in its interim ruling on WaterRower) went further, re-stating the CDPA principle which required WOACs to possess “a real artistic or aesthetic quality, beyond simply being appealing to the eye” – whilst accepting that strict application of Cofemel would exclude any requirement that the work has 'aesthetic appeal'.

Conflict of laws

In its quest to break down the tension between the CDPA and EU law, the High Court recounted the history of "applied art" copyright protection across Europe.

• It noted that the UK had traditionally been reluctant to grant copyright protection to ‘industrial’ works, originally denying it altogether. This was in contrast to some continental European countries, notably France, which took a more liberal approach and granted equal copyright protection to both ‘pure’ art and industrially applied art.
• Meanwhile, the Berne Convention left it up to the Union members to determine whether, and how, to protect works of applied art under their national laws (Article 2(7)).
• The concept of “works of artistic craftsmanship” was introduced to the CDPA in 1911 to provide limited protection for 3-dimensional works of applied art, influenced by the late 19th Century Arts and Crafts movement. At the time, WOAC protection filled a notable ‘gap’ in UK intellectual property protection, at a time when copyright and industrial design rights could not co-exist in a work.
• In the absence of a statutory definition, the meaning of “artistic craftsmanship” has been elusive from the start. However, it was clear that it had the additional requirement that the work had to have an ‘artistic quality in its craftsmanship’ as opposed to other categories of copyright, which did not require any artistic quality.
• Meanwhile, the CJEU in Cofemel interpreted the InfoSoc Directive as having fully harmonised copyright protection regardless of subject matter, based solely on “originality”, without any further limitation. 
• The High Court therefore had to determine whether the UK retained its discretion under Article 2(7) of the Berne Convention to self-determine the extent of copyright protection for works of applied art.
• The Court accepted that it could not simply ignore CJEU case law. The InfoSoc Directive had displaced its discretion under 2(7) of Berne, and the Marleasing principle required it to construe domestic legislation "as far as possible in conformity with, and to achieve the result intended by, the [InfoSoc] directive" and "according to principles of interpretation of EU legislation developed by the CJEU."
• At the same time, it was bound by CDPA and UK case law (notably, the House of Lords decision in Hensher Ltd v Restawile Upholstery (Lanes) Ltd [1976] AC 64 (“Hensher”)) that had applied the requirement of “artistic craftsmanship”.

Navigating “irreconcilable differences”

The Court concluded that it could not reconcile Hensher and the CDPA with the Cofemel “originality” test. It held that the InfoSoc Directive did not extend to ‘harmonising away’ (and effectively erasing) the CDPA requirement of artistry in craftsmanship – as this would have made s.4(1)(c) CDPA entirely meaningless.

As a compromise, the Court effectively ‘merged’ the UK and EU tests rather than disregarding either:

1. It treated the Cofemel “originality” test as a ‘gateway’ in a two-stage assessment, asking first of all whether the work embodied the ‘author’s own intellectual creation’. If it did not, the work was not “original” and could not qualify for copyright protection under the CDPA in any event, regardless of whether it met the conditions of artistic craftsmanship.
2. However, if it sailed through the “gateway” of originality, only then would the Court consider the s.4(1)(c) WOAC test.

Applying this novel two-stage test, the Court held:

1. The Prototype was in fact “original” within the meaning of Cofemel. Whilst it was subject to some functional constraints, it was not “solely” dictated by them and was capable of being an expression of Mr. Duke’s own intellectual creation* (applying Brompton Bicycle Ltd and another v Chedech/Get2Get (Case C-833/l 8) [2020] E.C.D.R. 9).
2. However, it did not qualify as a WOAC under s.4(1)(c), for the reasons explained below.

*Note – this was in contrast with subsequent, modified forms of the WaterRower which were held not to be “original” because the modifications were largely driven by better manufacturability, rather than being expressions of creative freedom.

The law

The High Court acknowledged the difficulty of determining what qualifies as a WOAC, in the absence of a statutory definition. It observed that:

• Different people have different views about what is artistic
• Judges are not experts in art or aesthetics
• The determination had to exclude any questions of taste, subjective quality and personal opinion
• There was no settled position on the relevance of the author's intention, or expert evidence.

As such, the Court felt it proper to take into consideration all relevant evidence in performing a multi-factorial analysis, and having regard to the “natural meaning” of the words of s.4(1)(c).

The evidence

The claimant’s evidence highlighted Mr. Duke's intention to create an aesthetically pleasing piece that broke away from the norm of 'unappealing metal exercisers.' His goal was to design a machine that provided smooth and authentic movement that felt as much like real rowing as possible. Drawing from his extensive experience in rowing wooden single sculls, he had sought to replicate the "sound and feel of the water" through the innovative use of a water flywheel, aiming to create a "non-mechanical experience".

His efforts did not go unnoticed. The WaterRower was described in the press as “stylish”, “beautiful” and an “attractive piece of furniture”. The Museum of Modern Art recognised its “focus on aesthetics” and its appearance was praised by many other notable design institutions. That being said, WLR acknowledged the principle that 'form follows function', with certain aspects of the shape being driven by engineering choices.

Art for art’s sake

The court reiterated that a WOAC needed to combine both craftsmanship and artistry. Citing Lucasfilm Ltd v Ainsworth [2011] UKSC 39, this required:

1. A craftsman producing something in a skilful way and taking justified price in their workmanship; and
2. Having as part of their purpose that the resulting work should in some way appeal as a piece of art or that it should be admired for some aspect of its appearance as such.

In its ruling, the Court accepted that the Prototype was a work of “craftsmanship” because its creation had involved significant effort and skill, including great effort to preserve and enhance the beauty of the natural wood materials.

However, that craftsmanship fell short of being “artistic”. It was not enough that Mr. Duke was a craftsman, and that he had produced something with aesthetic appeal. The craftsmanship itself needed to have an artistic quality. Per Hensher, the author had to have a desire "to produce something of beauty which would have an artistic justification for its own existence". Against that backdrop, Mr. Duke did not have the character of an ‘artist craftsman’.

The Court reached this conclusion despite acknowledging that “the carefully hand-crafted, visually striking Prototype appears to have achieved Mr Duke’s goals of creating a rowing machine with a sensory and visual experience that was different to other rowing machines at that time.” This was relevant, but not determinative. These subjective experiences were not protectable through artistic copyright. Giving the words of s.4(1)(c) of the CDPA their natural meaning, the WaterRower was not a WOAC.

Accordingly, the Court determined that no copyright subsisted in the works claimed by WRL. Consequently, the defendant’s works did not infringe any copyright, and the counterclaim for a declaration of non-infringement was dismissed.

The ripple effect

This decision will come as a blow to designers of industrially-applied works who rely on WOAC copyright as a form of protection. Some had hoped that a direct face-off between Cofemel and the CDPA in a UK court would lead to a more liberal interpretation of s.4(1)(c) and potentially broaden the scope of UK copyright protection for 3-dimensional works, to reduce the direct conflict with retained EU law.

However, the Court’s ruling rows the other way. It marks a shift back towards the traditional UK reluctance to confer generous copyright protection on industrial items, in favour of ‘pure’ art. The decision appears to raise the bar of what will qualify as a WOAC, limiting it to articles in which the craftsmanship itself (and not just the resulting object) can be considered ‘artistic’.

In its holistic assessment of taking all factors into account, the Court was also swayed by evidence that Mr. Duke was motivated, at least in part, by the desire to create a product that would enjoy commercial success – effectively, to design a “better rowing machine”. This appears to have dampened the argument that the WaterRower was a work of “art”.

Critics will question the Court’s “gateway” approach of treating Cofemel “originality” as the first hurdle in a two-stage test. Some will argue that “originality” is the only relevant requirement, and simply applying it in addition to the ‘irreconcilable’ CDPA standard does not resolve the conflict.

However, the High Court was faced with an impossible choice between disregarding the CDPA and binding UK case law, or ignoring retained EU law. With its hands tied, the Court had little choice but to accept that they simply couldn’t be reconciled, and to do its best to find a solution. Whether it did so correctly is subject to further debate under a possible appeal – but ultimately, only Parliament can bring the CDPA fully in line with Cofemel. In view of the historical backdrop of UK copyright law, and the availability of design rights, this seems an unlikely outcome.

For all the questions it seeks to address, this decision also raises many others. What does it mean for a work to have “an artistic justification for its existence” – and when does careful and skilled craftsmanship become “artistic” in nature? Why should the objective of ‘commercial success’ detract from the author’s aim of creating an aesthetically beautiful work? And – perhaps most importantly of all – why is craftsmanship of an “aesthetic” (rather than “artistic”) nature less deserving of copyright protection?

Copyright owners may take some comfort in knowing that the case ultimately turned on its facts. There is still ample scope for 3-dimensional works of applied art to qualify as WOACs. Helpfully, the decision confirms that:

• Craftsmanship is not limited to “handicrafts”;
• Something machine-produced can still be “artistic”; and
• A WOAC does not lose its status on account of its functional qualities.

Safer harbours

While the stormy waters of UK copyright law continue to cause uncertainty, rights-holders can look to registered designs, and UK unregistered design law, to protect the appearance of 3-dimensional articles. Whilst it gives shorter-term protection, design law does not discriminate between ‘artistic’ and ‘industrial’ design, provided it is not solely dictated by function. Readers can revisit some of these principles in our summaries of the Chiaro v Mayborn, Lego and Marks & Spencer v Aldi cases.

International copyright holders should also take note of the growing UK/EU divide when deciding where to sue for infringement of 3-dimensional works. Claimants may find it easier to assert their rights before EU courts, particularly in Member States which have traditionally been more protective of industrial design innovation (such as France).

CMS’ international IP network includes local design specialists in most EU jurisdictions – so please get in touch if you’d like guidance on your international IP protection strategy in light of the WaterRower decision.

Co-authored by Xenia Baranova, Trainee Solicitor