[2024] EWHC 1727 (IPEC)

The Claimant’s copyright infringement claim relates to a CAD drawing, dated 18 March 2013 and referred to in the action as the “AGA Panel Work 1”. (Footnote: ¹⁶) It shows the design of the control panel for the Claimant’s electric AGA Cookers.

The Claimant asserts that copyright subsists in this drawing as an original artistic work and was infringed by the Defendants in making the control panels for their eControl Cookers. The drawing is shown below together with photographs of control panels of one of the Claimant’s electric AGA Cookers (below left) and of an eControl Cooker (below right).

In their Defence, the Defendants deny that copyright subsisted in the drawing on the basis that the work was entirely dictated by function and was not an expression of the artist’s own intellectual creation. If that was wrong, they assert that such copyright as subsists is limited and that the similarities between their control panel and the design drawing are because the designs “are either trite or commonplace, dictated by function or form, or in respect of which a designer would have little creative freedom.” Finally, the Defendants assert that they have a defence to an infringement action by reason of s.51 of the Copyright Designs and Patents Act 1988 (“the CDPA 1988”).

For copyright to subsist in the drawing as an artistic work, it must be original (see s.1(1)(a) of the CDPA 1988). In the case of a 2013 work such as this, this means that the work must have been its author’s own intellectual creation. This test is satisfied where, in creating the drawing, its author has expressed his or her creative abilities by making free and creative choices so as to stamp the work created with his or her personal touch. This test is not satisfied where the content of the work is dictated by technical considerations, rules or other constraints which leave no room for creative freedom – see Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262 per Arnold LJ at [39]-[40]. In the context of a design for a product, the CJEU has made clear that, where an author has expressed his or her creative ability by making free and creative choices in relation to the design of the shape of that product, copyright can subsist even though that shape is, at least in part, necessary to obtain a technical result – see Case C-833/18 Brompton Bicycle Ltd v Chedech/Get2Get at [35] and [38]. See also the passages from Case C-683/17 Cofemel – Sociedade de Vestuario SA v G-Star Raw CV (“Cofemel”) referred to in paragraph 96 below.

The test to be applied in determining originality is objective, it is not one of artistic merit, the onus of proof is on the Claimant and, particularly in a case concerned with graphic works, a key item of evidence is the work itself (see Lidl at [42]).

As set out above, the Defendants assert that the drawing was not original on the basis that the appearance of the control panel it depicts was dictated by technical considerations, such that there were no or only very limited creative choices that its author could make. I reject that argument. Although, as Mr Johnson accepted, the design depicted in the drawing was influenced by the function which the panel was intended to perform (namely to control the operation of the cooker), I do not accept that it was dictated by that function. There were numerous designs which could have performed that function. (Footnote: ¹⁷) Having heard Mr Johnson’s evidence, I have no doubt that he made creative or aesthetic choices driven by his wish to create a design that captured what he called the historic look of the traditional AGA Cookers. The drawing reflects those choices. He chose to create a design drawing featuring rotational dials (rather than push buttons) aligned vertically, to which he chose to add an elongated oval line around the dials and to add a further line running, initially horizontally, away from that oval across and then vertically up to a thermodial positioned on the upper right hand side of the panel.

A further point raised by Mr Malynicz in closing, but not pleaded or referred to in the Defendants’ skeleton argument, was that the drawing was not original because the relevant features had been contained in design drawings or models created earlier in the design process described by Mr Johnson. These included (inter alia) a sketch, which Mr Johnson said he had created but which has been lost, and certain design drawings dated 8 February 2013, which showed the layout of the dials but not the elongated oval line or the line up to the thermodial. It is, of course, correct, that there is no originality in elements of a work that have simply been copied from an earlier work. However, this is rarely a point taken in a case where the work is created as part of a single, relatively short, creative process. Thus, in most design cases, the claimant will rely on the final design (often embodied in a drawing) rather than on earlier drawings or models created in the design process leading up to that final drawing. Similarly, in the case of a novel or a screenplay which had gone through various drafts, or of a sculpture that was created using design sketches, a claimant will usually rely on the novel as published or on the finished sculpture. A defendant will not usually challenge this unless there is a good reason to do so - such as where the earlier work had had a different copyright owner so that there is an issue as to title to the copyright. However, if a defendant is to raise such a challenge, it must be adequately pleaded so that the claimant has the chance to meet the point and, if necessary, to amend its pleadings to rely on the earlier work. Here, the Defence (at [2]) contains a general statement which puts the Claimant to proof of anything that is not admitted. However, I do not accept that this is sufficient given that the Defence elsewhere specifically denies that copyright subsists solely on the basis of functionality. In particular, I do not think that this is sufficient given that in the IPEC a party is required in its statement of case to set out concisely all the facts and arguments upon which it relies – see CPR 63.20 and Trailfinders Limited v Travel Counsellors Limited [2020] EWHC 591 (IPEC) at [46] where HHJ Hacon commented:

In my judgment, it would be unfair to allow the Defendants to rely on this challenge to originality. I should say that, even if the Defendants were allowed to rely on the point then, on the evidence, it seems likely that the Claimant was the owner of copyright in the earlier drawings and models in any event.

Turning to the issue of infringement of copyright. The Claimant’s case is that, as evidenced by the similarity in the appearance of the two control panels, the Defendants have infringed its copyright by reproducing the AGA Panel Work 1 or a substantial part of it.

The Defendants’ response is that any protection for the AGA Panel Work was limited to those features of that work which reflected the creative choices made by the Claimant. (Footnote: ¹⁸) More fundamentally, they deny any infringement on the basis that their activities fell within the scope of s.51 of the CDPA 1988.

The Defendants do not, therefore, deny that there has been copying. However, it has to be said that Mr McGinley’s evidence on this issue was somewhat unclear. In his second witness statement he stated that he had not looked at or copied the Claimant’s control panel when he designed the control panel for the eControl Cookers. However, in cross examination, he accepted that the panels were similar and that, in creating the control panel for the eControl Cookers, he had been “influenced by” the Claimant’s control panel. Mr Selmi argued that this undermined his credibility. However, it seems to me that Mr McGinley was simply (but possibly rather clumsily) trying to hold the line set out in his Defence – namely that the similarities were in relation to features that were dictated by function and that he should not be taken to have “copied” because (as he put it in cross examination) “there are no two articles between the control panels which are identical”.

To the extent that it is in issue, I find that the Defendants’ control panel was copied from the Claimant’s, thereby indirectly copying the design drawing. It is true that there are points of difference. However, on any sensible view, the Defendants’ control panel reproduces a substantial part of the Claimant’s drawing. Moreover, the features reproduced include those features which were, as set out above, the result of creative choices made by Mr Johnson. In contrast, the main difference referred to by Mr McGinley (the fact that the upper dial on the Defendants’ control panel has five settings whereas on the Claimant’s control panel it has four) appears to me to be driven by function rather than by creative choices.

I turn now to the most difficult aspect of the copyright claim – whether the Defendants have a defence to the copyright infringement claim by reason of s.51 of the CDPA 1988.

So far as material, s.51 provides as follows:

It is, I think, fair to say that neither party really addressed the issues arising in relation to s.51 and, in particular, the status of s.51 in the light of the decision of the CJEU in Cofemel - a case to which I was referred with regard to the issue of the subsistence of copyright but not with regard to its relevance to the application of s.51. Mr Selmi’s submissions as regards s.51 were limited to asserting that it did not apply because the control panel was an artistic work.

Doing the best I can in the absence of any real assistance from the parties, I would analyse the position as regards s.51 as follows:

The purpose of s.51 is to limit the role of copyright in relation to the protection of what is usually referred to as industrial designs (i.e. designs for non-artistic articles). It was the result of extensive consultations leading up to the enactment of the CDPA 1988 (see Copinger & Skone James on Copyright 18^th ed. at 13-538 and 13-539) but its status has become the subject of much debate, particularly as a result of the decision in Cofemel.

In Cofemel the CJEU found that, in view of the provisions of Directive 2001/29/EC (the Information Society Directive):

The significance of Cofemel with regard to s.51 and how an English court should respond to it are unclear. On the one hand, it could be argued that s.51 does not set any additional requirement for the subsistence of copyright; where it applies, copyright subsists in the design document but is simply not infringed by the particular acts specified in s.51. On the other hand, under art.2 of the Information Society Directive, it is an infringement of copyright in a work to reproduce (i.e. to copy) that work and a provision such as s.51 goes far beyond anything which that Directive envisages as a permitted exception to this (see art.5 of the Directive). Moreover, it seems clear that the CJEU in Cofemel saw the answer to the problem that s.51 was intended to address (the unwanted application of copyright protection in the sphere of industrial design) as lying in applying the test for originality rigorously in the case of a design (see paragraph 100(b) above). This would suggest that, once that test is satisfied, a limitation on the scope of the protection provided by copyright would not be permitted.

In the absence of any submissions on this issue, I do not think that it is possible for me to reach any final conclusion as to the impact of Cofemel on s.51. Instead, like the parties, I will deal with the s.51 issue simply on the basis of its own wording. On that basis, for the reasons set out above, I find that although copyright subsisted in the design drawing, the actions of the Defendants were permitted by reason of s.51. I therefore dismiss the Claimant’s copyright infringement claim.