The rowing pains continue – no copyright in rowing machine

Background

The case concerned whether the claimant's iconic, high-end, water-powered rowing machine (the "WaterRower" - see first image below) was protected by copyright as an artistic work, and more specifically, a 'work of artistic craftsmanship'. The WaterRower was designed by Mr John Duke, a former rower who had studied naval architecture. He explained that he was trying to design a machine to re-create the sound and feel of in-water rowing. The claimant considered its functional rowing machine to be the work of an 'artist craftsman', highlighting the choice and selection of wood, manual staining, sanding and oiling of the wood, and (at least originally) manual assembly. If the WaterRower was protected by copyright, the claimant argued that its copyright was infringed by Liking Limited, which was producing two of its own models of water-resistant rowing machines (see second image below).

Earlier strike out/summary judgment application

This IPEC decision follows the earlier judgment of David Stone (sitting as a deputy High Court judge) in August 2022 (WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) [2022] EWHC 2084 (IPEC)), where the defendant sought to sink the claimant's case for copyright infringement by applying for strike out. The defendant argued that the claim should not continue since the WaterRower was not a "work of artistic craftsmanship" under section 4(1)(c) of the Copyright Designs and Patents Act 1988 ("the CDPA"), applying the traditional, higher bar test set by the English courts (see below for further detail).

The application ultimately failed to float, with Deputy Judge Stone stating that he was not in a position at that stage in the proceedings to rule out that the WaterRower was a work of artistic craftsmanship and to say that the claimant had no real prospect of proving that the WaterRower was artistic. Since there was evidence that in creating the WaterRower, the claimant had intended to recreate the 'sparse elegance' of a Shaker design and to create a rowing machine in which the user had "a welcoming emotional connection, as they would with a piece of art or furniture", this was sufficient to avoid striking out the claim. The case therefore stayed afloat. For full details on the case, see our earlier article here: It's a race to the finish line as Judge dismisses strike out application holding that rowing machine could be a work of artistic craftsmanship.

EU/UK copyright law conflict

The case has been of particular interest to IP practitioners given its potential to remedy the apparent stark conflict between EU and UK copyright law – or as the defendants referred to it, 'the divergence between the 'closed categories of work set out in the CDPA and the Cofemel requirements'.

Decisions from the Court of Justice of the European Union ("CJEU"), namely Cofemel and Brompton, confirm that the only requirement for an identifiable object to qualify for copyright protection is originality (i.e., the work must be the author’s own intellectual creation). By contrast, a higher bar was set by an old House of Lords case - Hensher v Restawile [1976] AC 64, where the majority held that something more than eye appeal was necessary for an object to be a work of artistic craftsmanship under section 4(1)(c) CDPA. As such, it would be reasonable to argue that certain objects protected by copyright under EU law would not be protected under UK law. The concern with WaterRower was that if only the EU approach was followed, there could be potential for a wide range of functional products to be protectable by copyright, when they should instead be protected by registered design, which would be a shorter period of protection.

IPEC judgment

Campbell Forsyth (sitting as a deputy judge of the High Court) concluded that, upon review of the interplay between EU and UK copyright law, the WaterRower was not a work of artistic craftsmanship and was therefore not protected by copyright. As a result, there could be no infringement.

The deputy judge confirmed that, despite Brexit, the court did not have the discretion to ignore the relevant CJEU cases, including Cofemel and Brompton (which preceded the IP completion date of 31 December 2020) 'in relation to its treatment of applied art under section 4(1)(c) CDPA'. It was not for the IPEC to 'go behind this CJEU case law' which was binding on the court. He acknowledged that it was this interaction of the EU legislation (e.g. InfoSoc Directive) and the relevant CJEU cases and the UK legislation and case law that was material to his decision.    

Whilst it was found that the prototype WaterRower was Mr Duke's own intellectual creation and an original work within the meaning of the InfoSoc Directive, satisfying the EU test, the UK statutory test under s.4(1)(c) of the CDPA also had to be met, effectively demoting the EU test to a "form of gateway". This was because, in the deputy judge's view, it was not possible to reconcile the two approaches - there being no requirement under EU law, for an object to have aesthetic appeal or be "artistic", but under UK law, there being a requirement for the item to have a real artistic or aesthetic quality and something more than just eye appeal.

As to the requirements under UK copyright law, it was said that the prototype WaterRower was not the result of a mind with a desire "to produce something of beauty which would have an artistic justification for its own existence" (Hensher) or that Mr Duke "was an artist in that he used [his] creative ability to produce something which has aesthetic appeal" (Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216). The intention had not been to create a work that went further. The deputy judge therefore put real emphasis on the intention of the creator as highlighted in Hensher and concluded that Mr Duke, whilst a craftsman, "did not have the character of an artist craftsman".

The deputy judge agreed with the law lords in Hensher that the statutory phrase "works of artistic craftsmanship" was a composite phrase, and the words should be given their ordinary and natural meaning. He agreed with Hensher that the ordinary meaning did not require 'further formulation or judicial definition'. As such, some may consider the decision that the WaterRower is not protected by copyright to be well-founded. This could also be said to be supported by the fact that the WaterRower has various technical functional constraints, in order to replicate the physical dynamics of rowing. Indeed, any rowing machine requires certain features to allow for that (i.e., the biomechanical movement of the human body requires that there be two parallel runners, a moving seat pad, a foot pad and foot straps, a single handheld rod at the landscape position, a tension rope/pulley at the centre of the hand rod, and some kind of casement for the tension rope (or, in this instance, the water and the rotating paddles) (the 'WaterFlywheel')). The WaterFlywheel is more functional than aesthetic, too – it is to replicate water rowing and has to be cylindrical to allow for continuous water movement. The casement also has to hold a certain volume of water based on the weight/build of the user and therefore there is no creative choice in the size and shape of the WaterFlywheel casement. Any artistic elements are therefore limited solely to the choice of wood, its colour and finish.

Comment  

UK/EU copyright law conflict

Overall, whilst this judgment could be seen to further cement the stricter standard for what constitutes a work of artistic craftsmanship under UK law, we are no closer to getting past the finishing line of settling the discord between the EU and UK approaches. Interestingly, the deputy judge in the strike out application acknowledged the interaction between the CDPA and Cofemel/Brompton "would appear to need to be resolved at some stage, by Parliament or the higher courts”, but we still appear to be no further forward in this respect.

The deputy judge agreed with the Lordships in Hensher that the CDPA makes it explicit that the works referred to in section 4(1)(a) (a graphic work, photograph, sculpture or collage) need have no artistic quality (so in line with EU case law), but section 4(1)(c) specifically requires there to be 'artistic' craftsmanship. Parliament therefore intended there to be a distinction between the tests for the protection of forms of copyright such as graphic works, photographs, literary, dramatic, musical works and for the protection of works of artistic craftsmanship. To view this any other way would distort the intention of Parliament, and so the tension between EU and UK law remains. 

Given this judgment takes us no further in resolving this issue and failing the legislature addressing this ongoing uncertainty (which does not look likely any time soon), the case would need to be appealed in order for a higher Court to cox us towards any degree of parity between the two approaches.

Possible next steps

The issue could be resolved at a higher judiciary level by the Court of Appeal or the Supreme Court, should the case get there, especially given their ability to depart from EU case law handed down before 31 December 2020, 'where it appears right to do so'. However, one might query whether Deputy Judge Forsyth has already made moves towards this, given the importance he places on the UK test in this judgment, despite his acknowledgement that the CJEU case was binding on the IPEC. Additionally, the Supreme Court could decide to overturn Hensher and bring the UK test in line with the EU test and perhaps move away from the UK's closed list of works. Deputy Judge Forsyth referred back to the Response case on this point and agreed that the differing views in the speeches in Hensher made it difficult to identify binding principles of law in this area, so a proper review of Hensher would be welcome.

An attempt to clarify exactly what a work of artistic craftsmanship is perhaps requires a change in legislation to introduce a statutory definition. However, there does not seem to be much appetite for this from the judiciary, especially given the deputy judge's agreement with Hensher that the statutory phrase does not need further formulation or judicial definition. Further and as explained above, to read the phrase any other way than requiring some form of artistic quality for a work of artistic craftsmanship, would 'go against the grain' of the CDPA. 

Practical implications

In terms of the practical impact on designers, some may be relieved that this judgment could lead the way for a shorter period of protection for functional designs. However, for those designs that are both functional and creative, as Mr Duke thought the WaterRower was, a higher bar has been set. Whilst the WaterRower was displayed in the Design Museum in London, featured in numerous publications, including those by the Museum of Modern Art (MOMA), the Conran shop, design magazines (Architectural Digest and Galerie) and others, as well as in newspapers and on television, it was still not considered creative enough. The decision could also mean that a design may be protected by copyright in the EU, but not in the UK which would be unsatisfactory to many.

In any event, this is a very fact-specific case, and the analysis may not necessarily apply to other functional, yet creative designs in the UK in quite the same way. Indeed, it is hard to tell from this case what functional designs are also likely to pass the artistic test. It may be that we see more designers issuing proceedings to test the boundaries.

We will be keeping our eyes peeled for an appeal!