IP-2022-000001 - [2024] EWHC 2806 (IPEC)

The Claimant ("WaterRower Ltd") is a company registered in England & Wales (WATERROWER (UK) Limited). Its business is a designer and retailer of exercise equipment, including the water resistance rowing machines sold under the trade mark, WaterRower. The Defendant ("Liking") is a company incorporated under the law of Hong Kong (LIKING LIMITED). It retails water resistance rowing machines in the UK under the name TOPIOM (TOPIOM Models 1 and 2).

WaterRower Ltd asserts various of its water resistance rowing machines are each works of artistic craftsmanship within s.4(1)(c) Copyright Designs and Patents Act 1988 (as amended) ("CDPA"). These are defined by WaterRower Ltd as embodied in the water resistance rowing machines shown in Annex 1 to the Amended Particulars of Claim dated 1 April 2022 ("APOC") and defined as the Works (Annex 1 to the APOC is reproduced as Annex 1 to this judgment and is referred to as Annex 1 throughout this decision).

WaterRower Ltd's case is that Liking has copied the Works, reproduced a substantial part of those Works in its TOPIOM machines and has therefore infringed its copyright in the Works.

Liking alleges no copyright subsists in the Works (as defined in WaterRower Ltd's APOC and additionally has a counterclaim for a declaration that no copyright subsists in the Works as they are not works of artistic craftsmanship. There is also a dispute regarding which articles are pleaded within the Works.

The CMC Order of David Stone sitting as a Deputy High Court Judge dated 8 August 2023 lists the Issues for trial ("the List of Issues"):

Late in Liking's closing arguments there was discussion of a point regarding the 'first copyright work' of the series of WaterRower rowing machines relevant to this case. Liking argue "There is also no copyright claim for the prototypes of the WaterRower". It alleges "…Mr Duke's mahogany prototype is not relied upon as a copyrighted work." and that therefore "any copyright in Version 1 could at most be the changes set out in Mr Duke's witness statement". Mr Duke is the asserted creator of the WaterRower design. Version 1 of the WaterRower machines is one of the models in dispute in the case. Liking does not accept the 'first copyright work' is a pleaded work within the case. This issue was first raised in the Liking's skeleton argument.

There is no photographic image of the 'first copyright work'. The unchallenged evidence of Mr Duke is that the 'first copyright work' ("the Prototype") is reproduced in 2-D drawings in the May 1987 patent application US No. 049616 ("the Patent Application"). Mr Duke's explains that, subsequent to the creation of the Prototype, the "final finished prototype", using mahogany wood was displayed at the Small Boat Show in Newport, Rhode Island - also in May 1987 ("the Boat Show Prototype"). The Boat Show Prototype had some adaptations from the Prototype. There was some mixing of terminology used in the case between the Prototype and the Boat Show Prototype. The Prototype is asserted by WaterRower Ltd as the 'first copyright work'.

WaterRower Ltd's position in opening was that "The task for this court is to assess whether the WaterRower, as first created by Mr Duke, is a work of artistic craftsmanship.". WaterRower Ltd's, counsel, Ms Reid, confirmed she had further rebutted Liking's position on this pleading point during opening. Unfortunately, the transcript did not record that relevant statement as it was inaudible.

There therefore appear to be two related points to consider in the context of whether the issue of any copyright subsisting in the Prototype is appropriately set out in the pleadings: (1) is the Prototype a Work, and (2) if the Prototype is not a Work, do the pleadings nevertheless suitably circumscribe the need for an assessment of whether copyright subsists in the Prototype. Where the case does not involve any assessment of the subsistence of copyright in the Prototype this could have a substantial impact on the claims relating to the later modified models of the WaterRower. Therefore, due to the potential importance of this argument and the lateness of it being expounded, the parties provided post-trial submissions on the issue.

Liking's position is that WaterRower Ltd did not take any issue on this pleading point in opening and its cross-examination at the trial was therefore prepared on that basis. Liking's counsel, Mr Moss, explained that had Liking known the "prototype being a copyright work" was being asserted by WaterRower Ltd the "cross-examination would have been different because I would have cross-examined Mr Duke much more heavily on the prototype that was in the Newport Boat Show.". It is not clear if Mr Moss meant the Boat Show Prototype or the Prototype here – I have assumed, despite his statement, that in the context of Liking's arguments on this point being about the first copyright work, that he likely meant the Prototype. On the evidence, the Prototype and Boat Show Prototype are very similar shapes (Liking acknowledge this – for example see the excerpt from the closing argument of Mr Moss in the following paragraph) and were created close together in time. There seems little relevance in any of the minor differences between the two designs. For the purpose of this case, the Boat Show Prototype and any differences with the Prototype are not asserted as creating a separate copyright work. The Prototype was the "first hand-made version of the Works" as described in paragraph 9 of the APOC and confirmed in its 24 February 2023 response to Liking's Request for Further information ("the RFI Response"). Liking's position is disputed by WaterRower Ltd.

Liking's counsel, cross-examined Mr Duke on the genesis of the original drawings in the Patent Application and the development of the Prototype into later versions of the WaterRower rowing machine. Mr Moss explained in closing, "… we know the prototype, the picture that is in the patent is the one that was on show or very close to the one on show at the Newport boat show. That means that itself must also be a work of artistic craftsmanship, if they are right, in which case version 1 is not actually, version 1 is an iteration.". Liking also argue there were previous iterations of the Prototype, mainly based on earlier partial sketches prepared during its development, and that these have relevance to the question of the 'first copyright work' in the case. I accept WaterRower Ltd's evidence that the design of the Prototype was reproduced in the drawings of the Patent Application. It is not disputed that there was earlier developmental work, years of it, culminating in the Prototype. This point on earlier iterations was not debated with any real force. Based mainly on the explanation of Mr Duke, I accept WaterRower's position that the Prototype was the 'first creative work' in the series.

Liking's position is a formal point that the Prototype is not a pleaded work in the case, is not covered by the issues to be determined as set out in the CMC Order and therefore, under CPR63.23(2), and, lacking any exceptional circumstances, WaterRower Ltd cannot place any reliance on the Prototype at trial. WaterRower Ltd has not made an application to the Court for any amendment to its pleadings on this point. Therefore, the question to be determined is whether the pleadings specify WaterRower Ltd's case with sufficient precision on this issue, such that the arguments did not come as a surprise to Liking at the trial.

Prior to commencement of these proceedings, WaterRower Ltd provided draft Particulars of Claim ("draft POC") to Liking. These refer to Mr Duke's hand-drawn drawings in the Patent Application as the "original design", the Boat Show Prototype and a later version of the WaterRower design. The draft POC identify the earliest WaterRower design as the Prototype.

Liking allege that subsequently the APOC changed such that the Prototype is no longer in issue in the case. A key point is therefore how the relevant products/works in the case are defined in the Statements of Case. WaterRower Ltd defines "Works" in the APOC at paragraph 3 as:

Annex 1 starts with a photograph of a rowing machine referenced as Series 1 Version 1. Annex 3 to the APOC (Annex 3 to the APOC is reproduced as Annex 2 to this judgment and is referenced as Annex 2 throughout this decision) sets out modifications to iterations of WaterRower Ltd's products – starting with Series 1 Version 1. WaterRower Ltd confirmed in the RFI Response that there are no photographs of the first hand-made version of the Works (the Prototype) and that the Boat Show Prototype is not the same as the Prototype.

The APOC describes the Prototype in various ways, including: (1) the "first version of the rowing machine was created in the period 1985-1987 by John H. Duke" (paragraph 4), (2) "The initial design was created solely by Mr Duke and recorded in drawings created from approximately 1985 to 1987." and "The initial design was handmade by Mr Duke. It is a feature of the Works that they continue to be hand-made." (paragraph 7), (iii) "The first version of the Works was created and subsequently modified by Mr Duke …. In late 1987 Mr Duke presented his hand-made version at a public boat show and received his first orders." (paragraph 9).

The List of Issues in the CMC Order of Deputy High Court Judge David Stone uses the language of the Statements of Case and refers to Works under both the headings of Copyright subsistence and infringement.

Liking refers to the partial transcript of the CMC and the fact that Series 1 to 4 of the Works (as set out in Annex 1) were the only versions of the WaterRower discussed at the hearing, and not the Prototype. However, these discussions focused more on infringement than subsistence of copyright. Earlier in that transcript there was also discussion of an issue relating to the pictures in US4846460 ("the US Patent") and in the Patent Application. This related to an ancillary point (which was not progressed) regarding fraud on the US patent office. WaterRower Ltd's position on the drawings in the Patent Application prepared by Mr Duke also appears to have been discussed.

The IPEC Guide (4.6(c)) states:

The reference in the List of Issues to subsistence of copyright in Version 1 (as defined in Annex 1) does, at first, seem at odds with the position that the Prototype is pleaded within the case. In the case, Version 1 is asserted as a reproduction embodying the copyright (intellectual creation) expressed and subsisting in the Prototype and, separately, attracting separate copyright protection resulting from its iterative changes. In context, it was an understandable choice of terminology for the CMC List of Issues based on the descriptions of the WaterRower products in Annex 1 and 2. I do not believe in the context of the dispute that the reference in the CMC List of Issues to Version 1 (not Series 1 (Version1) as expressed in Annex 1) was somehow intended to be exclusory. Whether the Prototype attracts copyright protection is a core issue contained within the Statements of Case, for example in paragraphs 4, 5, 7, 9, 10 of the APOC. It is quite possible the phrase used in the CMC List of Issues simply meant the first version of the work (rather than the defined term used) – that would be in-line with the other positions. Regardless, in the context, the expression was implicitly including the requirement of an assessment of any copyright subsisting in the Prototype. In order to determine any copyright subsisting in Version 1 or the later versions it is important to understand the nature of any earlier copyright subsisting in the Prototype.

Subsequent to the CMC and the exchange of evidence, Liking's RFI dated 8 February 2023 asked a series of detailed questions about the "first hand-made version of the Works" (APOC paragraph 9) and the "finished prototype" referred to in paragraph 30 of the Statement of Mr Duke dated 25 January 2023. As noted, the RFI Response clarified the distinction between the Prototype and the Boat Show Prototype. Therefore, at this latter stage in the preparation of the case, after the evidence, Liking were asking, in the context of CPR Part 18, detailed questions relating to the earliest versions of the Works – the Prototype.

WaterRower Ltd's position is that the Works are 3-D objects. Annex 1 contains 2-D images of a series of water resistance rowing machines which embody the original artistic works where copyright subsists, not the Works themselves i.e. the images of the various versions set out in Annex 1 are not limiting in that there are earlier relevant versions (such as the Prototype and the Boat Show Prototype) which are not set out in Annex 1.

Liking did not adopt WaterRower Ltd's pleaded definition of Works in its pleadings and instead used the term "WaterRower". Liking's pleadings did not separately define the scope of this term. Paragraph 3(b) of the Re-Amended Reply and Defence to Counter-Claim dated 22 August 2022 ("RDCC") notes for the purpose of the case that WaterRower Ltd will assume Liking's reference to WaterRower is intended to be to the Works. This was not disputed. The Defence in paragraph 12.6 avers that, "The first designs of the WaterRower are those embodied in US Patent no. 4846460" and that the designs WaterRower Ltd pleads (the Works) differ from that disclosure (the drawings in the US Patent appear to be professional reproductions of the sketches in the Patent Application). In its RDCC WaterRower Ltd's case is that the Works differ from the images in the US Patent and that the images are 2-D compared with 3-D articles embodying the Works. What is relevant about the exchange is the preceding paragraph 12.5 in the Defence where Liking makes clear the WaterRower could, "only be protectable in the form it was first designed. Any iterations would not amount to being a work of artistic craftsmanship". WaterRower Ltd's Reply dated 2 August 2022 takes the position that a Work that is a work of artistic craftsmanship (and explains the "Works were created as set out in the APOC." i.e. from the Prototype) can be modified (and the Works were modified into a number of iterations over the years) and can still benefit from copyright protection subsisting in the earlier Work.

The scope of the term Works is also referred to in the APOC at paragraph 10; the "…assignments of the copyright in the Works…" was set out in various assignment documents annexed to the pleadings. These documents note in their internal definition of Works that this includes "… the original and all subsequent "WaterRower" rowing machines … related drawings and related prototypes..." and attaches a non-limiting sets of images of versions of the WaterRower's in dispute (although not the drawings of the Prototype).

Finally, Liking have counterclaimed for a declaration that no copyright subsists in the Works. It would be possible, but unusual, if such a declaration was not intended to cover all the relevant WaterRower designs where copyright may subsist.

The question is therefore, bearing in mind these points on the Statements of Case, the CMC, its Order and the clarifications in the Response to the RFI, did the Statements of Case suitably define the issues in dispute to include the Prototype as a Work or suitably circumscribe the need for an assessment of any copyright that subsists in the Prototype and thereby allow Liking access to relevant disclosure and evidence to be examined before the court?

WaterRower Ltd explained there were no photographs of the Prototype. Paragraph 9 of the APOC confirms (rather than extends) that the Prototype (and the Boat Show Prototype) are part of the asserted Works. The Response to the RFI further clarifies this pleaded position. Although not directly relevant to the pleaded case, the Response to the RFI serves to demonstrate the issues of the first created Work were being actively considered by both parties through this detailed exchange of relevant information on the Prototype. However, at no point prior to Liking's skeleton argument was its position on this central issue raised. WaterRower Ltd responded to the point in the opening argument at trial. If Liking had really felt the Prototype was not in the case, that was the time to deal with the point, prior to the evidence being tested.

The purpose of Statements of Case are such that the overriding objective is properly served and the case – and the relevant issues therein – are heard fairly. Liking notes it would have prepared its cross-examination differently if it had appreciated the subsistence of copyright in the Prototype was part of the case. On the basis of the above analysis, I am not convinced by this or that Liking suffered any prejudice in the circumstances.

The issue of the creation of the Prototype and whether copyright subsists in it as a work of artistic craftsmanship (and by extension its reproduction in later versions, such as Series 1 Version 1 in Annex 1) was at the forefront of consideration of both parties during the preparation for this case and during the trial. Drawing these points together and bearing in mind the overarching nature of the claim being brought, the definition of Works in WaterRower Ltd's Statement of Case is not limited by the pictures of embodiments in the referenced APOC Annex 1 or in the List of Issues and includes the Prototype. Alternatively, if I am wrong and the Prototype is not a Work, then the issue of any copyright that may subsist in the Prototype was suitably set out in the Statements of Case. WaterRower Ltd do not claim any copyright in the Boat Show Prototype and therefore I have not made any finding on whether it may have been included within the definition for Works. The parties could both have ensured the pleadings and the List of Issues were better expressed, but in the overall context of the pleaded exchanges, the meaning was clear enough. The subsequent evidence and further exchanges between the parties re-enforces this position.

If I am wrong that the Statements of Case suitably circumscribe the Prototype as a Work in the case or that they do not satisfactorily set out the issue of any copyright that may subsist in the Prototype, in the alternative, based on the noted extensive contextual information, the evidence, submissions, cross-examination and timing on this central point, then this is an example of a case where it is just to allow such a non-pleaded issue to be determined. The issue was suitably set out in the evidence, disclosure and related RFI exchanges and by way of cross-examination and argument regarding the Prototype and Boat show Prototype at the hearing.

The Prototype is therefore a work asserted by WaterRower Ltd as a Work defined in its APOC and its Annexes or the issue of any copyright subsisting in the Prototype was one that was suitably circumscribed in the Statements of Case to be determined.

WaterRower Ltd relied on three witnesses of fact. Mr Duke, the original creator of the WaterRower product, came across as a witness trying to assist the Court. He answered promptly and fairly. This was clearly a subject he was passionate about and he provided helpful detail. Mr Caccia was a director/shareholder of WaterRower Ltd for a period of time. His evidence was somewhat distanced from the subject matter at times and was not always factual in nature. In general, his evidence was given in a fair manner, but was of limited assistance. Mr King is currently a director and shareholder of WaterRower Ltd. His views strayed into opinion. In some of his answers he appeared, perhaps unsurprisingly, influenced by his role at WaterRower Ltd. I have considered this in the context of the evidence provided. Otherwise he came across as a reasonable witness.

Liking relied on two witnesses. Ms Pearse is Liking's legal representative in the case. WaterRower Ltd raised an issue relating to Ms Pearse's evidence dated 26 January 2023 and the limited extent to which that evidence was factual in nature. This was mainly resolved with Liking providing a redacted version of that evidence prior to cross-examination. Much of Ms Pearse's evidence was a vehicle for introducing documents into the case. Ms Pearse gave evidence in a fair manner, albeit it was of modest relevance and I have placed little weight on it. Concerns were also raised by WaterRower Ltd's counsel regarding certain exhibits where Ms Pearse was not able to confirm they related to products in the proceedings. There did appear to be a discrepancy, but it does not impact the evidence in any material way. Mr Fu is the Vice President and Research and Development Director of Liking. His role was limited by the fact it was a previous employee who had been involved in the relevant history and had left Liking. Mr Fu's evidence was provided with the benefit of a translator. His evidence was also of modest relevance. It was provided in an open and reasonable manner.

There were a number of other preliminary matters raised at the start of the trial. Upon hearing these, including the Claimant's Application dated 8 March 2023 for relief from sanction under CPR 3.9(1) due to late filing of its witness evidence, the outcomes were that; the requested relief was ordered, Liking could rely on Mr Fu's statement as evidence at trial and Liking would not rely on their Amended Defence and Counterclaim to the extent it was evidence in the case.

The following history was set out in the evidence and unless otherwise noted was unchallenged. Mr Duke was actively involved in competitive rowing from a young age, starting at secondary school. During that time he enjoyed sculling (a scull is a narrow single person rowing boat with two oars) on a large pond in Long Island, USA. At University he continued rowing at Yale College and in the summer of 1975 was selected for the US lightweight rowing team. Later, attending Massachusetts Institute of Technology ("MIT"), Mr Duke completed a Master's degree in Oceans Systems Management. Although his course was mainly about international shipping, it also had courses in naval architecture.

Soon after graduating from Yale, Mr Duke built his own 'experimental' scull. Working from information provided by a company called Gougeon Brothers, it was built from a "cold moulded system of laminated thin veneer wood" with an epoxy. Mr Duke explains he used this experimental scull but that it had too much longitudinal flex and was abandoned.

After this exercise (and before attending MIT) in 1978 Mr Duke worked for Composite Engineering (also known as Van Dusen Racing Boats). He worked building carbon fibre sculls and learned how these boats were "put together". After a period of time working in bulk commodity shipping Mr Duke decided to try his "hand at being an inventor" and in 1984 set up a company which later became known as the Providence Design Company ("PDC"). Mr Duke explains he narrowed in on the idea he could "design a rowing machine that was better than the 'original' 'Model A' Concept II" (shown in the evidence as a metal monorail rowing machine with a vertical flywheel). After some experimentation working on his own in his basement, in 1985 he started work on a rowing machine with a water flywheel, which later became the first WaterRower, the Prototype.

Mr Duke's evidence on his inspiration and design ethos for what became the Prototype and later versions of the WaterRower was also largely unchallenged. It stems from his experience in competitive rowing in "beautiful cedar shells down the Squamscott River under cool blue New Hampshire skies.". His view is that rowing wooden single sculls is different to the larger fours and eights (referring to the number of rowers in the boat), "You are even more connected to the water because they are so narrow – even narrower than your own legs. You don’t even see the boat directly below you. So your body feels like it is flying over the water.".

Other aspects stressed by Mr Duke are: (1) the sound of water "rushing under the hull", particularly in cedar boats made by George Pocock, which were "just beautiful", and (2) the feel of the water through the oar or scull. Mr Duke explained the impact of his experience rowing in "graceful and light" wooden shells – including sculls (this feeling was referred to by him as 'kinaesthetics'). This sound and feel of the water led Mr Duke to create the water flywheel used in the WaterRower as a "non-mechanical experience.".

WaterRower Ltd and Liking rely on a number of published articles about WaterRower products in support of their asserted positions in the case, for example regarding Mr Duke's intention as regards the nature of the creation of the Prototype.

WaterRower Ltd relies on articles including in the Wall Street Journal, a number of UK newspapers and specialist health and rowing journals going back to 1995. The excerpts chosen emphasise the relevant publication's views of the WaterRower product. They focus on the WaterRower being "stylish", "a beautiful object", and an "attractive piece of furniture".

In addition, WaterRower Ltd rely on two examples of how they say the WaterRower product has been recognised as an iconic design by institutions/stores whose opinions are held in high regard.

There is no dispute on the accuracy of these excerpts. The WaterRower series has been in the MOMA Design Store for 16 years. Its inclusion is said to be "curator approved". In cross- examination Mr Caccia explained (for the first time) that a WaterRower had been installed in the Design Museum in London, separately to being sold in a Conran shop. The limited information on this fact would not impact my assessment in this case, but in any event, the lack of context or support for this statement means it adds little additional weight to the issues.

Liking relies on articles closely contemporaneous with the creation of the earliest WaterRower including:

Liking also rely on a video entitled "Inventors - News Network" Episode 1 1993. This includes an interview with Mr Duke on the development of the WaterRower. It supports much of his evidence on his process arriving at the first WaterRower product, the Prototype. Mr Duke explains he had been working for three years on "all kinds of different rowing machines". He describes the resulting WaterRower as one that had a stainless steel blade that rotated in a sealed unit filled with water, the water was spun acting like a flywheel, an advantage was that water has a "tendency to absorb shock" such that the motion feels smoother to muscles and joints, the balance between the inertial and viscous forces when rowing give a feeling of "gliding between strokes", that this sound, feel and visual gives a sense of connection you do not get in a purely mechanical resistance and creates the "same kind of rhythm you get by accelerating a shell and having it glide between strokes, that's what all of the tweaking was about.".

The process leading to the Prototype was conducted by Mr Duke involving sketches, testing parts and 'learning as he went' – culminating in a finished Prototype. Mr Duke's sketches in the Patent Application are the earliest surviving drawings of the Prototype. Figures 1, 2 and 3 of the Patent Application are reproduced below.

Mr Duke further described the Prototype (the individual elements of the description are generally self-explanatory, the table and annotated diagrams in Annex 2 assist with orientation) explaining aspects of the development of design as one where he strove "… to create an aspect of structural purity in the WaterRower in the "form follows function" approach to design, one thing led to another; The main rowing force was to the Forward Strap Pulley. Firstly, the Pulley Shaft had to be held down to the forward ends of the twin Main Rails. My answer was two parallel vertical boards that I called the Forward Risers, which also enclosed the Pulleys. Secondly, I felt that the Pulley Shaft had to be held forward away from the top of the Footboard. Here my answer was two parallel horizontal boards over the fly wheel Tank. I later called these the "Top Deck" and "Bottom Deck", and they also supported the Paddle Shaft and Guide Rollers - which I regarded as very important. What I developed in this way was a repeating motif of parallel structural elements in different planes and scales: parallel Main Rails, parallel Forward Risers, then parallel Top and Bottom Decks. Lastly, this refrain was repeated again in smaller scale in the parallel Seat Risers. l feel this repeating pattern of parallel structural elements is fundamental to the design identity of the WaterRower as a whole."

Liking takes the position that the court does not know what the early prototypes looked like. However, Mr Duke's evidence that the contemporaneous drawings reproduced in the Patent Application represent the Prototype was not seriously contested. Although the drawings do not come with precise measurements it was clearly designed, as were the later models, for use by a human. This gives some scale to the drawing. I have proceeded on the basis that this was the first completed WaterRower product, that its shape and structure was as described in his witness statement and as drawn in the Patent Application, and that Mr Duke was the sole creator.