Would you say that the fitness equipment pictured below – a water resistance rowing machine called WaterRower, originally created between 1985 and 1987 by former professional US rower John Duke and the subject of a now expired US patent – could be protected by copyright?
The answer seems to be ‘Why not!’ and was provided in a judgment ( EWHC 2084 (IPEC)) of the Intellectual Property Enterprise Court (IPEC) handed down earlier this month by Deputy High Court Judge David Stone.
The decision follows a strike out application (or, alternatively, a summary judgment application) of the alleged infringer and only concerns the question whether the WaterRower has the potential to be regarded as a work of artistic craftmanship within the meaning of section4(1)(c) CDPA.
What is interesting to both UK and 'continental' readers is that the ‘Why not’ response refers to the standard of protection under both EU copyright – as developed though time by the Court of Justice of the European Union (CJEU), most recently in Cofemel [Katposts here] and Brompton Bicycle [Katposts here] – and the traditional UK approach to works of artistic craftmanship. For a discussion of how the standard of originality has developed in the case law of the CJEU and what impact all this has had, including on UK law, see here.
As stated, the WaterRower was designed by John Duke. He took inspiration from inter alia Shaker furniture design “to recreate the sparse elegance of a Shaker design and to create a rowing machine in which the user has “a welcoming emotional connection, as they would with a piece of art or furniture".”
Evidence was also provided that the WaterRower:
- has been considered an “iconic design” in the US and the UK;
- has been covered in several publications, including of MoMA’s, design magazines like Architectural Digest and Galerie, as well as several other magazines, newspapers, and TV shows (GQ, Men’s Health, Playboy, Men’s Fitness and House of Cards);
- is on display in the Design Museum in London.
There have been eight iterations of the WaterRower in four series, each of which differs from the previous one
The Defendant admitted to have copied the eight iteration of the WaterRower to create its TOPIOM Model 1 and that TOPIOM Model 2 sought to work around any rights said to subsist in the WaterRower.
The Defendant's TOPIOM
The judge did not deem it necessary to differentiate between the various iterations of the WaterRower since nothing suggested that some might be protected while others would not.
In the end, the key issue turned out to be whether the Claimant would have “no reasonable grounds” to claim that the WaterRower is a work of artistic craftsmanship and/or that it has no real prospects of success in relation to that claim.
The judge addressed all the above by considering, first, the UK approach to works of artistic craftmanship (including the leading House of Lords authority Hensher) and, secondly, the standard under EU law.
While deeming it unnnecessary to reduce the speeches in Hensher “to a snappy definition of “works of artistic craftsmanship””, the judge rejected the defendant’s argument that WaterRower would not be in any case artistic enough to be regarded as a protectable work of artistic craftmanship.
He concluded that “[t]he Claimant has a real prospect of proving that the WaterRower has a real artistic or aesthetic quality, beyond simply being appealing to the eye, and that the WaterRower embodies a sufficient degree of both craftsmanship and artistry, with the combination of these two things leading to the end result.”
Turning to EU law, the judge noted that both parties agreed on the apparent inconsistencies between UK and EU law (as also flagged in Response Clothing). On this point and for the purpose of the application at issue, his position was that there would be no “need to resolve the apparent inconsistency between Cofemel/Brompton and the CDPA.”
This said, he considered that the “the Claimant also has a real prospect of success under Cofemel/Brompton”, on account that “the WaterRower is an original object [and] is an expression of Mr Duke’s intellectual creation.”
While the designer faced some technical constraints (including those described in the patent application), the judge considered that such constraints would not force a designer like the WaterRower's one to a single, defined outcome, also considering the types of rowing machine that were in evidence. As a result, “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”.
In conclusion, the judge refused to strike out the application. He did not hold that the WaterRower is in fact a work of artistic craftsmanship: that will be a matter for the Enterprise Judge who hears the trial to address. What he did was to exclude that this would not possibly be the case.
If the case continues, it will be interesting to see whether and how the “inconsistencies” between UK and EU law are resolved, including having regard to the closed catalogue of protectable subject-matter under the former. As readers familiar with the Response Clothing judgment will recall, this was an aspect that Judge Hacon also flagged.
It is not however the only one.
The elusive category ‘work of artistic craftmanship’ is problematic for several reasons: not only determining what falls and does not fall under it is challenging in light of the convoluted domestic (UK and Commonwealth) case law, but from an EU perspective there are further aspects of it that are difficult to reconcile with the case law of the CJEU.
One example for all (but there are several others that could be flagged): the author’s intention to create something artistic. Does it matter or not?
In CJEU case law, this is not something that was specifically addressed in Brompton Bicycle, since one of the questions of the referring court related to the relevance of the alleged infringer’s intention.
This said, in his Opinion in Brompton Bicycle, Advocate General (AG) Campos Sánchez-Bordona advised the Court to rule that, when examining whether or not there is a right for an object to be protected as a work, a court is entitled to explore – not the alleged infringer’s intention – but rather the inventor or designer’s original intention. For that purpose, he said, account is to be taken of the time when the invention or design was initially conceived in order to assess whether its author was really seeking to achieve their own intellectual creation or whether, instead, they were only trying to protect an idea applicable to the development of an original industrial product with a view to the mass production and sale of that product on the market.
As stated, in its judgment, the CJEU did not touch upon this suggestion of the AG at all, and limited itself to answering the question asked concerning the alleged infringer’s intention, ruling out the relevance thereof.
This said, as I commented here, the author’s or designer’s intention should not be a factor to consider, whether under UK or EU law. In line with Cofemel, what is only required is a work that is original: nothing more, nothing less. Such an assessment is to be based on objective criteria, not subjective ones like whether – at the time of creation – the author was thinking that they were ‘making’ art.
In sum: it remains difficult to provide a “snappy” definition of what a work of artistic craftmanship is, and so is determining with clarity the conditions at which works of applied art can be protected by copyright … both in post-Brexit Britain and in the rest of Europe [see here for a recent example from Italy]. Further guidance from courts is thus still needed.
[Originally published on The IPKat on 21 August 2022]