Intellectual property lawyers and designers alike had been treading water in anticipation of the Intellectual Property Enterprise Court's ruling in WaterRower (UK) Ltd. v. Liking Ltd., a case with critical implications for copyright protection concerning functional designs.[1]
On Nov. 11, Deputy Judge Campbell Forsyth dismissed WaterRower's claim that its rowing machines, which blend function and style, were "works of artistic craftsmanship" under U.K. copyright law. This judgment underscores the challenges of protecting designs that serve both practical and aesthetic purposes, signaling a more stringent approach for hybrid works in a post-Brexit context.
This is a significant judgment for designers seeking to understand the boundaries of copyright protection in the U.K.
Background
WaterRower, a company known for its water resistance rowing machines designed by John Duke, argued that its machines were protectable as artistic works due to their unique aesthetic qualities. The machines, handcrafted from wood with a water flywheel system, were designed to replicate the experience of rowing on water.
As the machine was first designed in 1987, patent and design right protections were unavailable to the claimant at this point in time. Instead, WaterRower contended that these features qualified as artistic craftsmanship under Section 4(1)(c) of the Copyright, Designs and Patents Act 1988, or CDPA, giving them copyright protection.
WaterRower claimed that the test for "works of artistic craftsmanship" needed to be understood in light of European Union decisions that have held that for copyright to subsist, there must exist an original subject matter, in the sense of being the author's own intellectual creation, and that classification as a work is reserved to the elements that are the expression of such creation.
The evidence relied upon by WaterRower included commercial journals showing that a significant section of the public found the design aesthetically pleasing. WaterRower also relied on the presence of the WaterRower models in commercial design stores, including those at the Museum of Modern Art and the Design Museum, to indicate the high regard for the quality of the design.
Liking Ltd., a Hong Kong-based business, sold similar rowing machines under the Topiom brand. WaterRower claimed Liking had copied substantial parts of its designs, resulting in copyright infringement. Liking contested this claim, arguing that WaterRower's machines were fundamentally functional, meaning they did not qualify for copyright as works of artistic craftsmanship.
The case raised questions about the threshold for copyright protection for functional objects with aesthetic qualities and highlighted potential divergence between U.K. and EU interpretations of copyright law.
The Court's Decision
Deputy Judge Forsyth's assessment revolved around the historical context of artistic craftsmanship under U.K. law, with an examination of several key cases.
The leading case on the meaning of "works of artistic craftsmanship" in the U.K. is the 1976 House of Lords case George Hensher Ltd. v. Restawile Upholstery (Lancs) Ltd.[2] While the House of Lords provided different reasonings as to why the item in question — furniture, was not protected by copyright — the decision suggests that a work of artistic craftsmanship must have some aesthetic quality.
In Lucasfilm Ltd. v. Ainsworth,[3] the U.K Supreme Court in 2011 applied Hensher in considering the meaning of artistic craftsmanship. In this case, concerning "Star Wars" Stormtrooper helmets, the court found the helmets did not qualify as works of artistic craftsmanship, emphasizing that functionality often overpowers any aesthetic appeal in industrially produced items.
Notably, Lucasfilm considered Bonz Group (Pty) Ltd. v. Cooke,[4] a 1994 New Zealand High Court case highlighting that hand-knitted garments constituted artistic craftsmanship due to the creativity and skill involved in their production. Bonz defined a craftsman as someone who creates skillfully with pride in their work and an artist as one who imbues their work with "aesthetic appeal." This test therefore considered that "for a work to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist."
Notably, the approach by the U.K. courts is inconsistent with Cofemel–Sociedade de Vestuário SA v. G-Star Raw CV,[5] in which the European Union Court of Justice in 2019 confirmed that the only requirement for a design to qualify for copyright protection in the EU is originality.
To qualify as a work under Cofemel, there are two cumulative requirements to be met: (1) there must exist an original object and expression of intellectual creation; and (2) the subject matter must be identifiable with sufficient precision and objectivity. It further confirmed that a design that generates a specific and aesthetically significant visual effect is not enough to justify it being classified as a "work" for the purposes of copyright protection.
As such, the IPEC faced the challenge of reconciling the stricter U.K. standards with broader EU interpretations. Ultimately, Deputy Judge Forsyth could not harmonize these differing standards, leading him to apply the stricter U.K. test. The question as to whether WaterRower rowing machines could benefit from copyright protection hung on whether it was a work of craftsmanship with artistic or aesthetic appeal, in a divergence from EU law.
Assessing Copyright: Originality
Despite the court's conclusion that the differing standards cannot be reconciled, the IPEC found that when considering Section 4(1)(c) of the CDPA, there should be a consideration of whether the relevant work is original in the meaning of the EU InfoSoc Directive. As such, for a work to be original, it must be formed by the free and creative choices of the author, meaning it cannot be dictated by functionality alone.
The very first prototype of the WaterRower was deemed to meet the threshold for originality within the meaning of the InfoSoc Directive. Since there were a number of alternate ways the first prototype could have been designed, and Duke exercised his creatives choice in selecting the materials and the shape and finish of the machine, the fact that some of the choices were dictated by function did not undermine the work's originality.
While there were further adaptations of the WaterRower rowing machine made over the years, the IPEC found the nature of the changes as workmanlike, practical alternative adaptations rather than reflective of the creative choices of Duke.
The IPEC considered that many of the changes in later editions of the WaterRower were based on cost and efficiency, given the changes were made to improve the manufacture and commerciality of the WaterRower. The first prototype was therefore the only work subjected to the question of whether it can qualify as a work of artistic craftsmanship within the meaning of CDPA Section 4(1)(c).
Assessing Copyright: Artistic Craftsmanship
As to whether it would also qualify as a work of artistic craftsmanship, the IPEC construed the statutory phrase in light of its "ordinary and natural meaning." Further, to assist with its findings, the IPEC also considered the Bonz test, in other words whether the WaterRower had aesthetic appeal or artistic quality to be a work of artistic craftsmanship.
Ultimately, the IPEC found that in creating the WaterRower, Duke did not have a desire "to produce something of beauty which would have an artistic justification for its own existence." Instead, the rowing machine was viewed as a "commercial development" and did not go beyond mere "eye appeal."
While the evidence indicated the WaterRower was included in design stores and was praised for its "elegant and artful" look, this did not overcome the importance of the perceived commercial mindset of the author when creating the work.
In light of the IPEC's assessment, which included the multifactorial nature of the evidence, the IPEC found the WaterRower was not a work of artistic craftsmanship within the meaning of CDPA Section 4(1)(c).
Key Takeaways
Judges remain reluctant to provide a determinative test to identify a work of artistic craftsmanship. The IPEC in fact acknowledged the difficulty in formulating any additional test beyond the application of the statutory phrase. This in turn leaves designers of 3D works in doubt about whether their works can benefit from copyright protection in the U.K., leaving them vulnerable to competitors taking advantage of their marketed designs.
An appeal of this decision may offer further clarity, potentially harmonizing, or widening, the divergence between U.K. and EU copyright regimes.
Nevertheless, at the present time, WaterRower v. Liking reinforces a strict interpretation of artistic craftsmanship under U.K. law and provides some useful guidance to designers and practitioners. In light of this decision, rightsholders should consider the following.
Rely on Design Rights
Where possible, designers of 3D works should seek to register their designs and rely on design rights as a first choice. Copyright should only be considered where design rights have expired, i.e., after a maximum of 25 years for registered designs and up to 10 years from the end of the year in which the product was first sold for unregistered designs.
Intention Matters
A creator's motive plays a pivotal role in distinguishing artistic work from functional work. Designs rooted primarily in functionality or commercial goals are less likely to qualify for copyright. The artistic element of the design is key.
Stricter U.K. Standards
U.K. law's requirement for artistic merit creates challenges for designers of hybrid works, distinguishing it from EU copyright principles, which prioritize originality alone.
Practical Impact
Designers and intellectual property practitioners must carefully document their artistic intentions and creative processes to bolster claims for protection. Without such evidence, functional designs remain vulnerable to competition.
Originally published by Law360
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