Case No. IP-2017-000174

19.Mr Patel said in his witness statement that some time before April 2009 he conceived a number of designs, one of which was a wave pattern running through the fabric of a ladies jacquard top. Elsewhere in his statement Mr Patel referred to a design idea. The distinction is important, and I understand from the pleaded Reply dated 12 April 2018 to a Part 18 Request that it was no more than the idea of having waves of unspecified design within the fabric. Mr Patel’s answers in cross-examination were consistent with this. 20.In his witness statement Mr Patel said that his design idea was sent to Mr Park of GIN Textile. Communications were handled by an agent based in the UK, Barry Nathan. Mr Nathan did not give evidence. Mr Patel said that he was now retired and did not want to have anything to do with this litigation. 21.Mr Patel conceded that he did not know the manner in which his request was passed by Mr Nathan to GIN Textile and had no direct knowledge as to what GIN Textile did as a result, including whether GIN Textile copied anything when it created the Wave Fabric. Mr Patel thought at first that GIN Textile had taken about 6 weeks to create the Wave Fabric, but this seems to have been based on the period between sending the request and receiving the first sample. Mr Patel accepted in cross-examination that he did not know how much time within that 6 weeks had been taken by GIN Textile in creating the Wave Fabric. 22.The Wave Fabric, or more likely a copy of it, was received from GIN Textile and made up by Response into a ladies top. A photograph of the top was taken by Response on 6 April 2009, the date confirmed by a digital camera record. It is the photograph shown in Annex 1 to this judgment and is the earliest record available of the design of the Wave Fabric. 23.The evidence as to what GIN Textile did in creating the Wave Fabric came solely from Mr Park’s witness statement, without the benefit of cross-examination. Mr Park said that he now resides in China and conducts business through a mill there. He confirmed that before April 2009 he had received a request from Mr Patel, transmitted by Mr Nathan, for the GIN Textile mill to experiment with a design idea. The experimental work done as a consequence was carried out by an employee of GIN Textile who was a South Korean citizen. Mr Park said that he could no longer recall the identity of the individual or contact them. The employee had taken Mr Patel’s idea and created the fabric used to make up the top shown in the photograph in Annex 1. Mr Park said that the Wave Fabric was the original work of the employee and not copied from any other design. 24.I accept Mr Patel’s evidence, as clarified by him in cross-examination. Leaving aside the assertion of originality for the moment, I was given no good reason to doubt what Mr Park said in his statement and I accept that evidence. 25.It was common ground that GIN Textile produced the Wave Fabric. It was also not disputed by EWM that the photograph shown in Annex 1 provides an accurate representation of it. 26. The law 27.28.Given my finding that there was no graphic work on which Response can rely, it was common ground that if Wave Fabric is not a work of artistic craftsmanship, the design knitted into it is not protected by any other provision of the 1988 Act. 29.I begin with s.1 of the Act which, so far as is relevant, provides: “1. (1) Copyright is property right which subsists in accordance with this Part in the following descriptions of work – (a) original literary, dramatic, musical or artistic works, (b) sound recordings, films or broadcasts, and (c) the typographical arrangement of published editions. … ” 30. “4. (1) In this Part ‘artistic work’ means – (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality, (b) a work of architecture being a building or a model for a building, or (c)a work of artistic craftsmanship.” 31.Protection for works of artistic craftsmanship was first provided in the Copyright Act 1911, but neither that Act nor the Copyright Act 1956 nor the 1988 Act give any indication as to what the term means. 32.The meaning was considered by the House of Lords in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64, a case concerned with a claim to a work of artistic craftsmanship under the 1956 Act. 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. 33.The meaning was discussed by Mann J at first instance ([2008] EWHC 1878 (Ch); [2009] FSR 2). Having considered Hensher, he turned to a judgment from the New Zealand High Court: “[131] In Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216 the New Zealand High Court had to consider ‘artistic craftsmanship’ in the context of woollen sweaters. Tipping J. considered Hensher and other authorities and concluded that: ‘… [F]or 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. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal.’ I find that helpful. Having said that, he was prepared to combine the artistry of the designer and the craftsmanship of the knitters and conclude that the sweaters fell within the description, rejecting authorities which tended to suggest that they had to be the same person. That seems to me to be a sensible approach, at least where there is a proper nexus between the two people.” 34.Mann J went on (at [133]-[135]) to find that the production helmets and armour required the activity of a craftsman to realise the vision of the creators of the Star War films in which they featured. They were therefore works of craftsmanship, but not artistic craftsmanship. Their purpose was not to appeal to the aesthetic, but rather to give a particular impression in a film. 35.In Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1) [2001] FSR 5 EvansLombe J had also agreed with the conclusion of Tipping J in Bonz Group, finding that a bedspread design was not sufficiently artistic to be a work of artistic craftsmanship, although he did not give a reason beyond saying that the designs may be pleasing to the eye but did not exhibit the necessary requirement of creativity. 36.Adopting Tipping J’s summary of what constitutes a work of artistic craftsmanship, I would have to decide whether the employee of GIN Textile who created the Wave Fabric was both (a) a craftsman in that he or she made the fabric in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he or she used their creative ability to produce something which has aesthetic appeal. 37.38.I do not understand Tipping J’s definition of a craftsman to require that the object created must invariably be made only by the hands of the craftsman without the help of a machine. I can illustrate my view on this by giving an example. A potter might be a putative craftsman. One can contemplate a spectrum of means of making pots: at one end a pot is made only using the hands of the potter, then using a foot-driven wheel, then using an electric wheel, through various further stages of development leading finally to a process at the other end of the spectrum which, although controlled and directed by the potter, is carried out by a high-technology machine so that the potter does not touch the clay or the pot until it is finished and fully decorated. It seems to me to be difficult to draw a line at any point on that spectrum beyond which the potter, however brilliantly creative, is no longer creating a work of craftsmanship. 39.Assuming that the employee of GIN Fabrics who made the Wave Fabric was a craftsman working in a skilful way, it would be an unusual individual who did not take justified pride in the workmanship involved. 40.The primary goal of this individual was presumably to make something that would be aesthetically pleasing to customers. I am not sure whether Tipping J’s formulation has in mind the intention of the craftsman to make something aesthetically pleasing or rather whether the work is aesthetically pleasing to at least some people. Either way, I think it is likely that the criterion was satisfied in the present case. I know from Mr Patel’s evidence that the top made from the Wave Fabric was a commercial success, so customers must have found it aesthetically pleasing. 41.I therefore think that it is possible to say that the Wave Fabric falls within the definition of a work of artistic craftsmanship stated in Bonz Group and approved by Mann J and Evans-Lombe J. 42.But there is a difficulty. My impression is that none of their Lordships in Hensher would have concluded that the Wave Fabric is a work of artistic craftsmanship had that been the issue before them. To explain why, I must say more about Hensher. 43.The work in question was the prototype of a popular suite of furniture. The respondents conceded that it was as work of craftsmanship. At least some of their Lordships appear to have doubted the wisdom of that concession and three of them expressed an obiter view as to the meaning of ‘craftsmanship’. Lord Reid said (at p.77): ‘A work of craftsmanship suggests to me a durable useful handmade object.’ Viscount Dilhorne stated the view (at p.84) that a work of craftsmanship ‘is something made by hand and not something mass produced’, which I take also to exclude a work (such as that in issue in Hensher) made for subsequent mass reproduction. Lord Simon (at p.91) stated: ‘“Craftsmanship,” particularly when considered in its historical context, implies a manifestation of pride in sound workmanship – a rejection of the shoddy, the meretricious, the facile.’ There is no consistent definition, but the Wave Fabric falls outside at least those of Lord Reid and Viscount Dilhorne. 44.Before turning to what makes a work of craftsmanship artistic, it is to be noted that whereas s.4 of the 1988 Act makes artistic quality irrelevant to the assessment of whether a graphic work, photograph, sculpture or collage is an artistic work, there is no such removal of artistic merit from the assessment of a work of architecture or artistic craftsmanship. It might be said that in consequence artistic merit is relevant to the latter assessments. But, on one view anyway, artistic merit or quality can only ever be a subjective consideration. Parliament cannot have intended the assessment to depend on the chance of a particular court’s artistic appreciation, or lack of it. The only alternative would be to have experts explain their own (presumably opposing) views. Yet even received views on artistic merit can change markedly over time and sometimes they change back again. 45.Views on the value of expert evidence were mixed in Hensher in the course of discussion as to the meaning of ‘artistic’. 46.Lord Reid said: “I think that by common usage it is proper for a person to say that in his opinion a thing has an artistic character if he gets pleasure or satisfaction or it may be uplift from contemplating it.” (at p.78) “It is I think of importance that the maker or designer of a thing should have intended that it should have an artistic appeal but I would not regard that as either necessary or conclusive.” (at p.78) “In the present case I find no evidence at all that anyone regarded the appellants' furniture as artistic. The appellants’ object was to produce something which would sell. It was, as one witness said, ‘a winner’ and they succeeded in their object. No doubt many customers bought the furniture because they thought it looked nice as well as being comfortable. But looking nice appears to me to fall considerably short of having artistic appeal. I can find no evidence that anyone felt or thought that the furniture was artistic in the sense which I have tried to explain.” (at p.79) 47.Lord Morris took the view that the assessment was largely objective: “In deciding whether a work is one of artistic craftsmanship I consider that the work must be viewed and judged in a detached and objective way. The aim and purpose of its author may provide a pointer but the thing produced must itself be assessed without giving decisive weight to the author's scheme of things. Artistry may owe something to an inspiration not possessed by the most deft craftsman. But an effort to produce what is artistic may, if forced or conscious, for that very reason fail. Nor should undue emphasis be given to the priorities in the mind of a possible acquirer. A positive need to purchase an object or thing in order to put it to practical use may be the primary reason for its acquisition but this may be reinforced by a full appreciation of its artistic merits if they are possessed. So I would say that the object under consideration must be judged as a thing in itself. Does it have the character or virtue of being artistic?” (at p.81) 48.Lord Morris also thought that there is value in expert evidence as to whether the object is artistic: “I consider that as in all situations where a decision is required upon a question of fact the court must pay heed to the evidence that is adduced. Though it is a matter of individual opinion whether a work is or is not artistic there are many people who have special capabilities and qualifications for forming an opinion and whose testimony will command respect. In practice a court will not have difficulty in weighing their evidence and in deciding whether it clearly points to some conclusion. In cases where the court is able to see the work which is in question that will not warrant a decision on the basis of a spot opinion formed by the court itself but it will be a valuable aid to an appreciation of the evidence.” (at p.82) 49.Viscount Dilhorne saw little point in glossing the ordinary meaning of artistic beyond saying that no aesthetic assessment was involved (see above): “The phrase ‘works of artistic craftsmanship’ is made up of words in ordinary use in the English language. Unless the context otherwise requires, they must be given their ordinary and natural meaning. I can find nothing in the context to require that they should be given a different meaning from that.” (at pp.8687) “So, in my view, it is simply a question of fact whether a work is one of artistic craftsmanship. … 50.Lord Simon also believed that the word ‘artistic’ must be given its ordinary meaning although he warned against divorcing it from the composite phrase ‘work or artistic craftsmanship’ which must be construed as a whole (at p.91). He continued (at pp.9495): “ … whether the subject matter is or is not a work of artistic craftsmanship is a matter of evidence; and the most cogent evidence is likely to be from those who are either themselves acknowledged artist-craftsmen or concerned with the training of artist-craftsmen – in other words, expert evidence. In evaluating the evidence, the court will endeavour not to be tied to a particular metaphysics of art, partly because courts are not naturally fitted to weigh such matters, partly because Parliament can hardly have intended that the construction of its statutory phrase should turn on some recondite theory of aesthetics – though the court must, of course, in its task of statutory interpretation, take cognisance of the social-aesthetic situation which lies behind the enactment, nor can counsel be prevented from probing the reasons why a witness considers the subject matter to be or not to be a work of artistic craftsmanship. It is probably enough that common experience tells us that artists have vocationally an aim and impact which differ from those of the ordinary run of humankind. Given the craftsmanship, it is the presence of such aim and impact – what Stewart J. called ‘the intent of the creator and its result’ – which will determine that the work is one of artistic craftsmanship.” 51.Lord Kilbrandon thought that evidence of the intention of the craftsman will be what matters: “The conscious intention of the craftsman will be the primary test of whether his product is artistic or not; the fact that many of us like looking at a piece of honest work, especially in the traditional trades, is not enough to make it a work of art.” (at p.97) 52.That still requires the court to decide whether the intended goal of the craftsman qualified as ‘artistic’ within the meaning of the statute. This was the judicial function of the court which could not be assisted by expert evidence: “You will get no assistance, until you have exercised that judicial function, by asking the opinion of an expert; if he says ‘I regard that object as artistic’ the next question which must be asked in order to make his last answer intelligible is ‘What do you mean by artistic?’ That question is incompetent, because the answer would be irrelevant. Since the word is a word of common speech, it requires, and permits of, no interpretation by experts. It is for the judge to determine whether the object falls within the scope of the common meaning of the word.” (at p.97) 53.As I have said, the Wave Fabric is not a work of craftsmanship as that term was apparently understood by Lord Reid and Viscount Dilhorne. As to whether the Wave Fabric is artistic, my impression is that Lord Reid would have found that it falls short of having the requisite artistic appeal, as would Lord Morris. Lord Simon thought that the question of whether a work is artistic is a matter of evidence and that the most cogent evidence will come from experts. For Lord Kilbrandon, the conscious intention of the craftsman to make a work of art was the primary test. 54.I am therefore left with a view that on the hypothesis that in 1974 (when the judgment in Hensher was delivered) the House of Lords had been called upon to determine whether the Wave Fabric is a work of artistic craftsmanship, for differing reasons the answer would have been that it is not. But no binding principles of law can be deduced from the judgment in Hensher which compel me to the same conclusion now. Moreover, the summary definition of a work of artistic craftsmanship provided by Tipping J in Bonz Group has been approved twice in England at first instance and the Wave Fabric can be said to fall within that definition. 55.“Article 2 Reproduction right Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: (a) for authors, of their works;” 56.Thus, the copyright law of a Member State must afford protection to authors of a ‘work’. In Levola Hengelo BV v Smilde Foods BV “[33] … arts 2–4 of Directive 2001/29 state that the Member States are to provide for a set of exclusive rights relating, in the case of authors, to their ‘works’, while art.5 sets out a series of exceptions and limitations to those rights. The directive makes no express reference to the laws of the Member States for the purpose of determining the meaning and scope of the concept of a ‘work’. Accordingly, in view of the need for a uniform application of EU law and the principle of equality, that concept must normally be given an autonomous and uniform interpretation throughout the EU (see, to that effect, judgments of 16 July 2009, Infopaq International A/S v Danske Dagblades Forening (C-5/08) EU:C:2009:465; [27] and [28], and of 3 September 2014, Deckmyn v Vandersteen (C-201/13) EU:C:2014:2132, [14] and [15]). … [35]In that regard, two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of Directive 2001/29.[36]First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (judgment of 4 October 2011, Football Association Premier League Ltd v QC Leisure (C-403/08 and C-429/08) EU:C:2011:631, [97] and the case-law cited). [37]Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (see, to that effect, judgments of 16 July 2009, Infopaq International (C-5/08) EU:C:2009:465, [39], and of 4 October 2011, Football Association Premier League, [159]). [38]It should be recalled in that regard that although the EU is not a party to the Berne Convention , it is nevertheless obliged, under art.1(4) of the WIPO Copyright Treaty, to which it is a party and which Directive 2001/29 is intended to implement, to comply with arts 1–21 of the Berne Convention (see, to that effect, judgments of 9 February 2012, Luksan v van der Let (C277/10) EU:C:2012:65, [59] and the case-law cited, and of 26 April 2012, DR v NCB - Nordisk Copyright Bureau (C-510/10) EU:C:2012:244, [29]). [39]Under art.2(1) of the Berne Convention, literary and artistic works include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression may be. Moreover, in accordance with art.2 of the WIPO Copyright Treaty and art.9(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which is mentioned in [6] of this judgment and which also forms part of the EU legal order (see, to that effect, judgment of 15 March 2012, Societa Consortile Fonografici (SCF) v Del Corso (C-135/10) EU:C:2012:140, [39] and [40]), copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such (see, to that effect, judgment of 2 May 2012, SAS Institute Inc v World Programming Ltd (C-406/10) EU:C:2012:259, [33]).” 57.In Cofemel-Sociedade de Vesturário SA v G-Star Raw CV 58.The CJEU ruled that national law could not impose a requirement of aesthetic or artistic value. It reiterated the two conditions stated in Levola [30]As regards the first of those conditions, it follows from the Court’s settled case-law that, if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices (see, to that effect, judgments of 1 December 2011, Painer, C-145/10, EU:C:2011:798, paragraphs 88, 89 and 94, and of 7 August 2018, Renckhoff, C-161/17, EU:C:2018:634, paragraph 14). [31]On the other hand, when the realisation of a subject matter has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work (see, to that effect, judgment of 1 March 2012, Football Dataco and Others, C-604/10, EU:C:2012:115, paragraph 39 and the case-law cited).” 59.I take the view that, subject to my being satisfied that the Wave Fabric is original in that its design was its author’s own intellectual creation, that design is a work within the meaning of art.2 of Directive 2001/29. If no sufficiently similar design existed before it was created, it must have been the expression of the author’s free and creative choices. 60.61.Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU, see Marleasing SA v La Comercial Internacional de Alimentación SA (Case C-106/89) EU:C:1990:395; [1990] ECR I-4135. 62.Mr Harbottle accepted that if the Wave Fabric is not a work of artistic craftsmanship then its design is not protected by copyright (or even design right) under the 1988 Act. He submitted that Parliament was content to leave gaps in protection and pointed to Lambretta Clothing Co. Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886; [2005] RPC 88 as illustrating an example of that. 63.The issue I have to resolve is not whether Directive 2001/29 has the effect of removing all the gaps there may be in copyright protection available from a court at first instance for ‘works’ within the meaning of art.2 of the Directive, but whether it is possible to interpret s.4(1)(c) of the 1988 Act in conformity with art.2 of Directive 2001/29 such that the Wave Fabric qualifies as a work of artistic craftsmanship and thereby its design becomes entitled to copyright protection. In my view it is, up to a point. Complete conformity with art.2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the Wave Fabric has aesthetic appeal and thus would be inconsistent with the definition of work of artistic craftsmanship stated in Bonz Group. I need not go that far since I have found on the facts that the Wave Fabric does have aesthetic appeal. This part of the definition in Bonz Group is satisfied whether or not, in law, it is required. 64.I will adopt the Bonz Group summary definition of a work of artistic craftsmanship with clarifications which I believe to be consistent with the definition: (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed. No binding English authority has been drawn to my attention which prevents me from construing s.4(1)(c) in that way. Accordingly, the Wave Fabric is a work of artistic craftsmanship.