Case No. IP-2022-000001

58.Counsel for the Defendant’s primary submission was that “the law on artistic craftsmanship is set out in the binding House of Lords authority of Hensher v Restawile.” I have already explained why I consider the Defendant’s strike out application fails on that primary basis. However, counsel for the Defendant also argued that the WaterRower would fail to attract copyright protection under principles set out in the Court of Justice decisions of Cofemel and Brompton. I therefore discuss those cases below. 59.Cofemel (C-683/17) involved an allegation of infringement of copyright in jeans and t-shirts. These were said to be “original creations” and therefore “works” protected by copyright. The Supremo Tribunal de Justiça60.The Court of Justice held that there are two cumulative requirements, both of which are necessary to qualify as a work: i)the existence of an original object; and ii)the expression of intellectual creation. Hence, the object in question must express the “intellectual creation” of its author, ie, the author has made free and creative choices in creating the work. The Court of Justice noted at paragraph 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).”61.In Brompton, infringement was alleged of copyright in the shape of a folding bike. The Tribunal de l’entreprise de Liège62.“[31] In that regard, as recalled in paragraphs 24, 26 and 27 of the present judgment, that cannot be the case where the realisation of a subject matter has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom or room so limited that the idea and its expression become indissociable.……[36] As regards the existence of an earlier, now expired, patent in the case in the main proceedings and the effectiveness of the shape in achieving the same technical result, they should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.…[39]… that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality…”63.Whilst both parties agreed that the apparent inconsistencies between UK law on the one hand (with its closed categories) and EU law on the other would need to be resolved in due course, I do not need to do so. I have already found that the Claimant has a real prospect of success under Hensher. In my judgment, the Claimant also has a real prospect of success under Cofemel/Brompton“it needs runners, a seat with padding. It has to be virtually flat. It needs footrests with something to keep your foot in place. It needs a pool of water with a paddle in it for resistance. It needs cross-beams to keep the two planks of wood which act as runners for the seat together. It has a groove on the inside of the runners to stop the seat flying out the back. It has a wheel to allow the end to be lifted up and moved. The pulleys to allow the paddle to be moved in the water.”64.The Claimant submitted that there is no evidence of these allegations – and I accept that submission up to a point. It is clear to me on the evidence before me that the WaterRower has those features, but it is also clear from the images of other types of rowing machine that were in evidence that those features can be presented in different forms, in different materials and in different combinations. On the basis of the evidence before me, these constraints do not seem to be of the type that force a designer to a single, defined outcome. In my judgment, on the evidence before me the Claimant has real prospects of demonstrating that Mr Duke worked within the constraints for a water resistance rowing machine such that he was still able to exercise his own free and creative choices, and design the WaterRower in such a way that it reflects his personality. Reliance was placed on the use of wood, and the choice of wood. That was clearly a creative choice. But creative choices also needed to be made as to the shape and dimensions of the various features mentioned by counsel for the Defendant, in addition to choosing which features would be made of which materials, and how those materials would be treated. Whilst a body of water is present in all water resistance rowing machines (but not all rowing machines), the size and shape of that body of water, and how it is contained, are all creative choices, or, to put it more correctly, on the basis of the evidence already before me the Claimant has a real prospect of establishing as much at trial.65.I also reject counsel for the Defendant’s argument that the existence of the US patent application to which I have already referred means that all of the features of the WaterRower are technical features. Obviously, aspects of the WaterRower are technical, and, as I have set out above, there were technical constraints (some of which are described in the patent application). But the patent application does not deal, for example, with the selection of materials, or how those materials would be treated. To adopt the words of counsel for the Claimant, the patent application “says nothing about how it’s made”.66.The Defendant’s third set of arguments rest primarily on the submission that Response Clothing was wrongly decided. Neither counsel submitted that Response Clothing is binding on me – and so in at least one respect, this submission goes nowhere. However, as it was canvassed in written and oral argument, I will deal with it briefly. 67.Response Clothing involved a claim for copyright infringement of a jacquard fabric with a distinctive wave design. The claimant alleged that copyright subsisted in the wave design as a graphic work or as a work of artistic craftsmanship. I have already set out above HHJ Hacon’s comments in relation to Hensher. His Honour then turned first to Lucasfilm, where Mann J considered Hensher, before turning to a judgment of the High Court of New Zealand, Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216, where that court considered “artistic craftsmanship” in the context of woollen sweaters. Mann J adopted the approach of Tipping J in Bonz:“…[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”. 68.In addition to the approval of Tipping J’s analysis by Mann J, HHJ Hacon in Response Clothing also notes the approval of Tipping J’s comments in Vermaat (t/a Cotton Productions) v Boncrest Ltd (No 1) [2001] FSR 5. In Response Clothing, His Honour also adopted the Bonz test, explaining that, for the fabric in issue before him to be a work of artistic craftsmanship, it was necessary to show that the fabric design was (a) a work of craftsmanship in the sense that the creation of the fabric required skilful workmanship, and (b) artistic in the sense that it was produced with creative ability that produced aesthetic appeal. His Honour found that the fabric was a work of artistic craftsmanship.69.However, at paragraph 42 of his judgment, HHJ Hacon expressed a “difficulty” – his impression was 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”. As I have said, I do not consider that that difficulty confronts me. However, given that counsel for the Defendant argued the point, I will deal with it briefly. 70.Having set out excerpts from the five speeches, HHJ Hacon found that whilst their Lordships may have concluded that the wave fabric was not a work of artistic craftsmanship had that issue been before them, “no binding principles of law can be deduced from the judgment in Hensher which compel me to the same conclusion now.” Rather, he again referred to Tipping J’s comments in Bonz, and the approval of those remarks at first instance in Lucasfilm and Vermaat. 71.HHJ Hacon then reviewed the position under EU law, which included a discussion of Cofemel, but not Brompton, as it had not been decided prior to His Honour’s judgment. HHJ Hacon then used the Marleasing principle (Marleasing SA v La Comercial Internacional de Alimentación SA (C-106/89) to read section 4 of the CDPA, so far as possible, in conformity with the principles set out in Levola Hengelo BV v Smilde Foods BV (C-310/17; EU:C:2018:899) and Cofemel. 72.Counsel for the Defendant referred me to the discussion of Response Clothing in Copinger at [13-565]:“Nevertheless, as the judge recognised, it is not clear that Marleasing will always provide an adequate solution. For example, a work of design which (unlike that in issue in Response Clothing) did not have an aesthetic appeal or a three-dimensional work which failed to qualify as a “sculpture” under UK law might satisfy the Levola Hengelo/Cofemel requirements for copyright protection and yet fall outside the closed lists of the 1988 Act as traditionally construed. It remains to be seen whether, in order to conform with those requirements, the 1988 classification system can be re-interpreted so that its references to “artistic”, “craftsmanship” and “artistic quality” are taken to refer to the personality of or the creative choices available to the author and to the quasi-functionality rule. In other words, merely as imposing a requirement that a work is not one that is dictated by function and is one where the author had exercised at least some creative choices in a manner similar to that discussed in Cofemel.”73.Before me, counsel for the Defendant submitted that HHJ Hacon’s approach in Response Clothing was incorrect. He submitted that whilst His Honour recognised that conforming to Article 2 and Cofemel would exclude any requirement that the wave design had aesthetic appeal, he went on to apply the test for artistic craftsmanship in Bonz, which included the requirement of aesthetic appeal. 74.I was informed that permission to appeal the decision in Response Clothing was given. However, because the Edinburgh Woollen Mill went into administration, the appeal did not proceed.75.As I have explained, 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 (but not sufficient), 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, Cofemel/Brompton and Bonz. It therefore does not matter for present purposes if those requirements are not aligned. 76.I therefore also reject this third basis for the Defendant’s strike out application. 77.During the oral hearing, counsel for the Defendant urged me to “grasp the nettle” and dispose of what he described as a “short point of law”. That would enable, he said, one of the parties to appeal to the Court of Appeal, and would allow the Court of Appeal an opportunity to consider the difficulties set out above. For my part, I do not consider the submissions put to me to amount to a short point of law. The interaction between the CDPA and Cofemel/Brompton is not a simple one. It is one which would appear to need to be resolved at some stage, by Parliament or the higher courts. But the inconsistencies on which counsel for the Defendant relied do not arise on the facts of this case as they are currently before the Court. If the evidence at trial changes that, then the Enterprise Judge who hears the trial can make all the necessary findings of fact, and the Court of Appeal will, if permission is given, determine the position in light of proper findings of fact. In my judgment, that is the appropriate course in this case.78.Counsel for the Defendant suggested that the issue before the Court could have been determined by way of a preliminary issue. But that is not how this application was framed – this is an application to strike out the claim. Further, he submitted that it would be better to have the Court of Appeal set out now a test for work of artistic craftsmanship so that the Enterprise Judge can then apply that test to the facts of this case. However, there is no mechanism for me to refer a question for a preliminary ruling to the Court of Appeal, and the option to do so to the Court of Justice is no longer open to me. 79.I therefore reject the Defendant’s application to strike out the claim on the basis that the WaterRower is not a work of artistic craftsmanship.