Gill Dennis October 3 2022 Judge declines to rock the boat on complex copyright questions in water resistance rowing machine case Pinsent Masons | Intellectual Property - United Kingdom Gill Dennis Intellectual Property IntroductionFactsDecisionCommentIntroductionThe UK High Court has declined to answer some longstanding unresolved questions of copyright law. In WaterRower v Liking Limited,(1) the Court was invited to provide a definition of a "work of artistic craftsmanship" and to explain the interplay between UK and EU law on the subsistence of copyright in works. The judge held, however, that it was not necessary in this case to provide a "snappy definition" of works of artistic craftsmanship, and that he would not "grasp the nettle" on the interaction between UK and EU law on subsistence because this was not a simple issue or short point of law. Much needed clarity on these issues has, somewhat disappointingly, been left to another day.FactsThese proceedings concerned a water resistance rowing machine sold by the claimant and known as the "WaterRower". The WaterRower had been designed by John Duke, a former rower and expert in naval architecture with a lifelong interest in artistic design and crafting with wood. The initial WaterRower was handmade by Mr Duke from mahogany (although subsequently from more sustainable woods), the evidence being that it was "deliberately crafted in the same manner in which a cabinet maker would make a fine piece of furniture" 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) The WaterRower had been recognised in the United Kingdom and the United States as an iconic design, featuring in numerous high-end design publications and television shows, and was on display in the Design Museum in London.The defendant conceded that the WaterRower was aesthetically pleasing. It sold its own water resistance rowing machine known as the "Topiom", acknowledging that this was a replica of the WaterRower and had been copied from it.The claimant issued proceedings, arguing that the WaterRower was a work of artistic craftsmanship within section 4(1) of the Copyright Designs and Patents Act 1988 (CDPA), in which copyright subsisted and had been infringed. The defendant applied to strike out the claim under section 3.4(2)(a) of the Civil Procedure Rules (CPR), arguing that the claimant had no reasonable grounds to claim that the WaterRower was a work of artistic craftsmanship and that it had no real prospects of success in relation to that claim.Decision"Work of artistic craftsmanship" definedThe primary issue before the Court was whether the test for strike out under section 3.4(2)(a) of the CPR had been satisfied. However, in order to be able to answer that question, the Court had to tackle the issue of whether there was any prospect of the WaterRower being found to be a work of artistic craftsmanship, and that required the judge to consider what exactly a work of artistic craftsmanship is. There is no definition in section 4(1) of the CDPA.The judge referred to Hensher,(3) a decision of the House of Lords (now known as the Supreme Court), which is the leading case on works of artistic craftsmanship. He agreed with earlier judicial observations that this was "not a straightforward judgment"(4) but he proceeded to analyse the individual judgments of each of the five Law Lords with a view to establishing some points of principle on the nature of a work of artistic craftmanship. The judge acknowledged that their Lordships had focused only on the "artistic" element (the defendants in that case having conceded that "craftsmanship" had been established). He concluded by saying that "it was not necessary for him to reduce their Lordships' speeches to a snappy definition of works of artistic craftsmanship"(5) but that, based on his analysis of Hensher, he was not in a position to conclude that WaterRower was not artistic. His reasoning was as follows:The intention of the creator was at least relevant to whether a work of craftsmanship was artistic (although it was not necessary that the creator's primary or dominant purpose was artistic). The judge was satisfied on the evidence as to Mr Duke's artistic intention.The question of whether the WaterRower was a work of artistic craftsmanship was a question for a trial judge on the basis of the evidence adduced at trial. The evidence currently before the Court was probative that the WaterRower was indeed artistic, meaning the judge was unable to say that the claimant's case was hopeless.The judgments in Hensher had referred to a number of examples of possible works of artistic craftsmanship, including hand-painted tiles and stained-glass windows. The judge said that "although technology has clearly moved on since 1974, I cannot conclude on a strike out basis that the WaterRower is any less artistic in its conception or its appearance than the examples given [in Hensher]".The judge also held that, on the evidence before him, he could not conclude that the claimants had no real prospects of proving that the WaterRower was an act of craftsmanship. In particular, the judge was satisfied that Mr Duke was a craftsman and not a slavish copier or jobbing tradesman, and that he had produced a high-quality product that was initially made entirely by hand.The judge refused to be pressed on the nature of the required interplay between "artistry" and "craftsmanship". Counsel for the defendant suggested that "craftsmanship" required the working of materials by manual dexterity and that "artistic" required the visual appearance to be significant such that it would (assessed objectively) cause at least some members of the public to wish to acquire and retain the object because of that. The judge replied that he "did not need to form a view on whether that test was an appropriate one"(6) but:the evidence is that Mr Duke worked on materials with manual dexterity. The visual appearance of the WaterRower is clearly popular - and at least some members of the public have wished to acquire, and indeed have acquired, it.(7)Counsel for the defendant also argued that Mr Duke had been constrained in his design choices by functional considerations inherent in designing an exercise machine, and that the more a designer was so constrained, the less likely the work was to be a work of artistic craftsmanship. The judge, however, held that a work of artistic craftsmanship "can still be useful"(8) and that functionality was not bar to finding that a work was indeed one of artistic craftsmanship.In light of this, the judge could not conclude that the claimant had no real prospects of establishing that the WaterRower was a work of artistic craftsmanship under Hensher. Accordingly, he rejected the defendant's strike out application.Anyone seeking a clear test for a work of artistic craftmanship will have to wait until another day. The judge implicitly acknowledged that such a test was needed but that his hands were tied as he had not been asked to determine this as a preliminary issue, Further, there was no mechanism available to him to leapfrog the question to the Court of Appeal.UK versus EU lawIn leading judgments in Cofemel(9) and Brompton Bicycle,(10) the Court of Justice of the European Union (CJEU) held that a design could be protected by copyright provided the design was:original;the expression of the author's own intellectual creation (ie, their free and creative choices); andnot dictated by technical considerations, rules or other constraints which left no room for creative freedom.Cofemel and Brompton Bicycle were both handed down pre-Brexit and so now form part of retained law that the UK courts must follow.There is, therefore, currently a legal mismatch. The United Kingdom has a system of closed categories, in that the CDPA sets out which categories of work can be protected by copyright and the particular requirements that must be satisfied for that protection to arise. In the case of works of artistic craftsmanship under section 4(1), some artistic or aesthetic quality is required. This is directly at odds with the open EU system that simply requires a work to be original and not dictated by functional or technical constraints. Significantly, there is no requirement that the work be artistic, aesthetic or otherwise appealing to the eye.The defendant argued that the WaterRower would not be protected by copyright under the EU test as the design had been dictated by the technical constraints inherent in creating an exercise machine. The judge disagreed, holding that the claimant had a real prospect of success under the Cofemel/Brompton test. It was clear to him that the WaterRower was an original object and an expression of Mr Duke's intellectual creation. He was also satisfied that Mr Duke had not been constrained by functional considerations, holding that the constraints were not of a type that had forced Mr Duke to a single defined outcome, but that his creative choices were apparent in various aspects of the WaterRower, including the type of wood used, the size and shape of the body of water present and how that water was contained.The judge rejected the defendant's strike out application in light of this analysis also.Which prevails?The judge was asked, however, to tackle the broader question of which was the right test to apply in the United Kingdom to determine whether a work was protected by copyright – the UK closed category approach (which, as in the case of works of artistic craftsmanship, sometimes requires artistic merit) or the EU open originality approach?The UK courts had previously been asked to determine this point in Response Clothing(11) but the judge in that case had declined to do so, holding that a fabric incorporating a wave design had aesthetic appeal such that it could be both a work of artistic craftsmanship under the UK closed system and protected under the (arguably lower) originality bar of EU law.In WaterRower, the judge similarly declined to decide the point. He said:for the purposes of the present application, I do not need to resolve the apparent inconsistency between Cofemel/Brompton and the CDPA. If the WaterRower did not have eye appeal, it may well have been necessary for me to resolve the apparent inconsistency - because the Law Lords in Hensher said that eye appeal is necessary . . . whereas Cofemel says that eye appeal cannot be required. However, the Defendant has conceded that the WaterRower has eye appeal - and I have held that the Claimant has a real prospect of demonstrating at trial that the WaterRower meets the requirements of Hensher [and] Cofemel/Brompton . . . . it therefore does not matter for present purposes if those requirements are not aligned.(12)Instead, the judge felt that the appropriate course was for the trial judge to decide the point with all the evidence before them. Again, the judge noted that he could not refer this point of law to the Court of Appeal now or, in this post-Brexit era, to the CJEU. He acknowledged that the interaction between the CDPA and Cofemel/Brompton was not a simple one and observed that it would need to be resolved at some stage by Parliament or the higher courts.CommentClarity on the various copyright issues raised in these proceedings has been needed for some time. Although this judgment in and of itself does not provide that, it is helpful in highlighting where the gaps are that the courts or Parliament need to fill. The judgment on liability in this case may be a step towards getting some clarity and is, therefore, eagerly awaited.For further information on this topic please contact Gill Dennis at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.Endnotes(1) WaterRower (UK) Limited v Liking Limited (T/A Topiom)  EWHC 2084 (IPEC).(2) See paragraphs 19-24 of the judgment.(3) George Hensher Ltd v Restawile Upholstery (Lancs) Ltd  AC 64.(4) See paragraph 34, agreeing with the comments of Hacon HHJ in Response Clothing Ltd v Edinburgh Woollen Mill  EWHC 148 (IPEC).(5) See paragraph 44.(6) See paragraph 51.(7) See paragraph 51.(8) See paragraph 53.(9) Cofemel-Sociedade de Vestuário SA v G-Star Raw CV (C-683/17).(10) SI and another v Chedech/Get2Get (C-833/18).(11) Response Clothing Ltd v Edinburgh Woollen Mill  EWHC 148 (IPEC).(12) See paragraph 75.