Copyright protection for designs is currently under the spotlight, in light of the European Court of Justice (CJEU) decision in Cofemel and a CJEU decision expected in the coming months on copyright protection for the shape of the Brompton bicycle. A recent UK decision (Response Clothing v The Edinburgh Woollen Mill) has considered the impact of the Cofemel decision, particularly in relation to the tension that it highlights between UK and EU copyright law on a number of central themes. Whilst the Judge in the Intellectual Property Enterprise Court (IPEC) decided that he did not need to resolve this tension in this case, the scene is set for further consideration of the issues presented by Cofemel in an appropriate case.
The reason the Judge did not need to grapple with this tension was that he decided that the design in this case, a design applied to fabric, qualified for copyright protection as a 'work of artistic craftsmanship'. In doing so, he applied a fairly generous assessment of the relevant criteria, which may be relied upon by designers of a range of consumer items to assert copyright protection, not least because of the longer period of protection available to copyright works.
The Claimant, Response Clothing, had supplied major retailer The Edinburgh Woollen Mill (EWM) with over three seasons of women's tops made from a jacquard fabric in a 'wave arrangement' design created on a knitting machine ("the Wave Fabric"). After Response put its prices up, EWM supplied samples of the Wave Fabric to other suppliers and asked them to make and supply tops made from a similar fabric. Response sued EWM for copyright infringement in relation to three fabrics based on its copyright in the Wave Fabric design.
Did copyright protect the Wave Fabric design?
The traditional approach of UK law is that it is necessary to show that a work falls within at least one of the categories of protection set out in the copyright legislation. Therefore, applying this approach in this case was necessary for Response to demonstrate that the Wave Fabric was a type of artistic work. Response argued it was either a graphic work or a work of artistic craftsmanship. The Judge recognised however that the UK's 'closed list' approach to copyright protection is in tension with the approach developed through CJEU case law interpreting the various copyright related directives, most recently its Cofemel decision. In Cofemel, the CJEU reiterated that in order to be a copyright work, the only requirements are that:
- The work is original in the sense that it is the author's own intellectual creation. This means that the subject matter must reflect the author's own personality and be an expression of their free and creative choices. It must not be dictated by technical considerations, rules or other constraints, leaving no room for creative freedom.
- It must be an expression of the author's own intellectual creation.
- The subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity. There should therefore be no element of subjectivity, such as aesthetic value.
Was the Wave Fabric a copyright work?
The IPEC Judge considered whether the Wave Fabric design fell within the description of a 'graphic work' or a 'work of artistic craftsmanship', i.e. he applied the 'closed list' approach.
Whilst he said that the definition of a 'graphic work' in the Copyright, Designs and Patents Act 1988 (CDPA) was not expressed exhaustively, he concluded that it was not "endlessly flexible" and could not therefore be stretched to include a fabric, whether made on a weaving loom or a knitting machine. This aspect of his decision can be contrasted with an earlier case, Abraham Moon v Thornber, where the Court had found that a 'ticket stamp' (used to set up a loom to make a fabric design) was a graphic work, albeit an unusual one, as it was a record of a visual image.
However, the Judge concluded that the Wave Fabric design did qualify for copyright protection as a work of artistic craftsmanship. He recognised that the key UK case on this issue, the House of Lords' decision in Hensher v Resstawhile (concerning a suite of furniture), had provided inconsistent guidance as to how to approach the assessment of such works. Instead, he applied a test derived from a New Zealand High Court case, Bonz v Cooke:
- A work is craftsmanship where it is made in a skilful way and the craftsman takes justified pride in their workmanship.
- A work is artistic where someone with creative ability produces something which has aesthetic appeal.
This approach had been applied in earlier cases, one example being the Star Wars Stormtrooper helmets. The outcome in that case was they did not qualify as works of artistic craftsmanship (they were also not sculptures), as they were not intended to appeal to the aesthetic, but to give a particular impression in a film.
Applying the Bonz test, the IPEC Judge concluded that the Wave Fabric design was both artistic and a work of craftsmanship. He also made the following points:
- It is not necessary for an object to be made by hand, as opposed to by machine, to qualify as a work of artistic craftsmanship.
- Aesthetic appeal can be of a nature which causes the work to appeal to potential customers. The Wave Fabric had been a commercial success, so he concluded customers must have found it aesthetically pleasing.
- A work is not precluded from being a work of artistic craftsmanship solely because multiple copies of it are subsequently made and marketed.
- Under the various judgments given in the Hensher v Restawhile decision, the design would most likely not have qualified as a work of artistic craftsmanship. However, as no binding principles of law could be deduced from that decision, it was appropriate to apply the Bonz test.
The EU law approach
Given the CJEU's decision in Cofemel, which provides that there can be no aesthetic requirement as to whether something qualifies as a work capable of copyright protection, it would appear that maintaining a category under UK copyright law of 'works of artistic craftsmanship' is no longer tenable. The IPEC Judge recognised that he was required to interpret UK copyright law, so far as possible, in conformity with the EU Copyright Directive and how it had been interpreted by the CJEU. Further, complete conformity with the Copyright Directive, as interpreted in Cofemel, "…would exclude any requirement that the Wave Fabric has aesthetic appeal and this would be inconsistent with the definition of work of artistic craftsmanship stated in Bonz Group". However, as he had found that the Wave Fabric did qualify as a work of artistic craftsmanship applying that test, he did not need to determine the implications of the tension between UK and EU law.
Was copyright infringed?
Having found that the Wave Fabric was protected by copyright and was original, the IPEC Judge went on to conclude (including by reference to expert evidence) that, whilst the Wave Fabric had not been copied in every detail, each of the alleged infringements was an infringing copy. A further interesting point concerned identifying which transaction in a distribution chain for a product constitutes issuing that product to the public for the purposes of infringement of the distribution right. In one instance, the supplier had supplied the infringing fabric to EWM in the UK and this qualified as the issue of the fabric to the public, and so EWM had not infringed the distribution right in respect of that fabric. However, for that fabric, EWM was found liable for secondary infringement as a reasonable person would know or have reason to believe that dealing in the copies would infringe copyright.
The implications of the Cofemel decision is likely to be a feature of more cases in the immediate future, with the Courts having to assess the extent to which it permits copyright protection for functional designs and works of applied art, and the impact on the interplay between copyright and design protection. However, we understand that in the Cofemel case itself, the Portuguese Supreme Court has recently decided, applying the CJEU's decision, that the jeans and tops in question are not, after all, protected by copyright.