The tide of the law of copyright has ebbed and flowed over the years in its application to industrial designs.

Perhaps the high point certainly so far as concerns modern English law was the litigation in British Leyland “BL” v Armstrong in 1986. The House of Lords, when faced with the prospect that copyright could be extended to something as mundane as car exhausts, so giving a term of protection of over 100 years, found that the OEM (Original Equipment Manufacturer) in question, BL, could not derogate from the right it gave to the purchaser of the vehicle to repair it. This, and by an imaginative solution with its roots in the law of property and none of the then IP statutes, the ambit of copyright to the exhausts was restrained. The right to repair effectively trumped restraint by injunction preventing infringement of copyright.

This decision led in part to the introduction of “unregistered design right”, “UDR”, into English law, in the 1988 Copyright Designs and Patents Act (“CDPA”). A proprietor of such a right typically has a 10 year term of protection for products marketed and sold, the second half of which must be subject to licences of right. A much shorter term than copyright, and one may assume what the legislators thought suitable for items such as the shape of car exhausts.

Alongside the introduction of UDR, the CDPA also contained related provisions limiting the scope of copyright:

• s51 provides that, “It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design”.
• s52 was repealed in 2013, but it had allowed for 25 years of copyright protection for “artistic works” that had been industrially produced (>50 copies). This was a compromise of course, but it did allow for limited extension of copyright for artistic works.

Since the repeal of s52, interested parties have seemingly increased their efforts before the Courts to avail themselves of copyright protection. One approach has been to rely on the Cofemel case.

The decision of the European Court of Justice in Cofemel in 2017 concerned infringement of copyright in jeans. These were said to be “original creations” and therefore “works” protected by copyright. The court held there were (only) two cumulative requirements to qualify as a work and therefore benefit from copyright protection – (i) the existence of an original object, then (ii) the expression of intellectual creation. This is a much more generous position to would-be copyright owners than the current position under the CDPA, and unsurprisingly, it is increasingly relied on by practitioners in support of their client’s rights. Notwithstanding Brexit, at present Cofemel remains part of the laws retained by the UK in the Withdrawal Agreement.

By the intricacies of the Withdrawal Agreement, Cofemel is binding on first instance courts in the UK, but not the Court of Appeal and beyond. There is little doubt it conflicts with the traditional approach of the UK courts to consider copyright subsistence from the perspective of the closed categories of copyright works defined in the CDPA. Therefore we await a further decision on a suitable case from the UK Court of Appeal to resolve this conflict.

One such case may yet be Waterrower UK Ltd v Liking Ltd. The product in issue was this;

(Without wishing to pre judge any issues, the author might describe this as a nice looking wooden rowing machine, perhaps rather more aesthetic than the (excellent) Concept II instrument of torture languishing in his garden shed, which has no hope of being admitted into the house by his wife!)

The case came before the Intellectual Property Enterprise Court in August this year, but only on an application to strike out the claim, not a full trial, which would be determinative of the issues (including copyright subsistence) subject to any appeal. The strike out application highlights another approach relied on by parties looking to secure copyright protection in the UK – namely whether the product in question is a “work of artistic craftsmanship”. The importance of this phrase stems from s51 ibid. A work of “artistic craftsmanship” is one of the categories of “artistic work”, and so if it can be established that a product is such, then s51 will not apply and copyright in its full term will subsist in the product in question. The other categories of “artistic work”, being;

• a graphic work, photograph, sculpture or collage, irrespective of artistic quality,
• a work of architecture being a building or a model for a building,

are most unlikely to apply to industrially produced products, so much rests on what is a “work of artistic craftsmanship”.

However, the answer to this question is far from easy to answer, and, as is evident from the case law, rather fact specific. The leading case in the UK is Hensher, a House of Lords decision from 1976. It was unanimously held that the piece of furniture in issue was not a work of artistic craftsmanship. But it has already been conceded that the piece in question was a work of craftsmanship, so the only question was whether it was artistic. In a subsequent case Response Clothing, HHJ said this about the Hensher case;

“It is not a straightforward judgment, as has been acknowledged since. In Lucasfilm Ltd v Ainsworth [2011] UKSC 39; [2012] 1 AC 208 Lord Walker and Lord Collins (in a combined judgment with which Lord Phillips and Lady Hale agreed) concurred (at [29]) with Mann J’s assessment at first instance that it was difficult to identify the true principle of the judgment in Hensher and thus a meaning given to ‘artistic craftsmanship’ by the House of Lords. The Supreme Court in Lucasfilm was not required itself to reach a view on the meaning because after the first instance judgment the claimant no longer contended that its Imperial Stormtrooper helmets and armour, the articles in issue, were works of artistic craftsmanship.”

Each of the five judges in the House of Lords in Hensher gave slightly different reasons for their decision, and so it is not easy to pick out the ratio decidendi from the case. Indeed, the judge in the Waterrower case said it was not necessary for his decision for him to reduce the five speeches to a “snappy definition”, and declined to do so as it was unnecessary for his decision -he declined to strike out the case because he could not say at that pre – trial stage that the rower in question was not a work of artistic craftsmanship on the evidence before him. So the case will proceed to trial.

It is interesting to note that the rower had indeed been the subject of a now expired US patent. This begs one of the questions that the higher courts and quite possibly the legislature in the UK will have to deal with at some point on this topic – namely whether copyright can once again extend to industrially produced items long after any related patents have expired. It was precisely this issue that was to the fore in Leyland v Armstrong mentioned earlier.

So, it seems the tide of the law of copyright in industrial design is flowing once again. UK first instance judges have seemed understandably reluctant to adopt Cofemel when they can otherwise decide the cases before them based on the closed categories of copyright work defined in the CDPA, and so it will take an appellate court to determine the high water mark on a suitable case assuming Parliament does not intervene beforehand.

Intellectual Property

Contact: Kerry Russell   kerry.russell@shma.co.uk