The importance of the decision in WaterRower UK Limited v Liking Limited (t/a Topiom)

In this long-awaited decision, the starting gun has been fired on a debate as to what can be protected by copyright in the UK. The case demonstrates the incompatibility between the Cofemel line of Court of Justice for the European Union (CJEU) case law and the UK statutory requirement of closed list categorisation. It gives hope to those who want to see a return to more clearly defined borders between designs and copyright, where currently copyright has been edging into designs’ designated lane. 

The decision

WaterRower UK v Liking concerns whether the original version of a wooden, aesthetically pleasing, land-based, water rowing machine can be classified in the UK as a work of artistic craftmanship and, thus, acquire copyright protection. If yes, the question was whether that copyright was infringed by a party who, by their own admission, had copied a later version of the machine.

Whilst undoubtedly aesthetically pleasing, and having won recognition for its design, at first instance in the Intellectual Property Enterprise Court, the Deputy High Court Judge concluded, in a detailed analysis of the relevant law, that it did not meet the definition of a work of artistic craftsmanship. Despite an acceptance that consideration had been given by the designer to the look of the product, functionality flooded in to sink the copyright aspirations. It had craftmanship but was not ‘artistic’ in the way required by the statute. This decision followed on from an earlier decision on an application for summary judgment by the defendant, which, in rejecting that application, held it to be at least arguable that the machine could be protected.

The UK/EU tension

In reaching his decision, the Judge has shone an unforgiving light on the state of copyright law in the UK. EU law requires that only originality be a bar to copyright protection. The UK statute requires that an original work also fall within one of the defined categories. The two are incompatible.

A previous, pre-Brexit decision, Edinburgh Woolen Mill v Response Clothing Limited, sought to overcome this by expanding the meaning of the categories. If the categories can be read to encompass all works, then the waters calm. In Edinburgh Woolen Mill, the court concluded that a fabric weave was a work of artistic craftmanship. This seems unusual. The decision addressed the problem, but in a way which instinctively feels like a work-around, not a solution.

A similar approach might have worked in WaterRower. However, the judge commendably chose to steer into choppier waters, advocating a two-stage test as a way to reconcile the EU and UK positions. First, he asked whether the work is ‘original’ using CJEU case law as a guide. Second, he asked whether the original work falls within one of the statutory definitions (here, artistic craftmanship).