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). 

This approach resolves the tension by choosing to interpret the requirement in Cofemel, that originality is the only question to determining whether copyright exists, as a starting gate rather than a finish line. Is it another work-around? The solution will depend on which is your favoured approach. The expansionist trend, led by the CJEU, allowing copyright to cover ever more creations, or a compartmentalised intellectual property system, each right more clearly sitting in its own lane and where copyright more quickly cedes to designs.

Work of artistic craftmanship

Whichever solution you prefer, the discussion focuses on the definition of ‘works of artistic craftmanship’. Expand this definition too far and all manner of works are protected. There is often some aesthetic consideration after all. Restrict the definition and more works will fall outside the scope of copyright. 

The Judge sought to summarise the different ratios in the leading decision of Hensher v Restawile, itself criticised for not providing a clear definition, and the Judge makes clear many of the difficulties in his discussion of the authorities, whilst attempting to draw the different reasons together. There are, however, unanswered questions. Should an object which had won awards for its design, and which was created with an eye to aesthetic appeal, not be a ‘work of artistic craftmanship’? 

The Judge here found, no. Such a work was, after all, intended for commercialisation and mass production. Aesthetics and artisanry, although not pulling in a different direction, played a secondary role to function.

Further guidance, and clarity, on the meaning of artistic craftmanship would be welcome. As with many definitions of ‘artistic works’, the definition has not kept up with the times and changing perceptions of art and craftmanship.

The future

The Judge was placed in an unenviable position of having to resolve two incompatible positions (“a particularly difficult tension” as it was delicately put). He chose to take on the challenge and with his detailed examination of the case law and legal background has set the field nicely for a discussion on the direction of UK copyright. It is hopeful that the decision will be appealed (it appears that was the intention of the parties at the summary judgment application). An appeal will provide an opportunity for the courts to consider whether to explicitly disapply the EU Cofemel line of decisions. This would amount to a welcome rowing back from the ongoing EU trend of expanding the scope of copyright.

This rejection could be coupled with a restriction on how works of artistic craftmanship are defined. It should be limited to aesthetically appealing items not intended for mass production. This approach should start to reinstate the border between designs and copyright.

This decision will not answer the question of whether we should still operate a closed list when awarding copyright protection; that is a matter for the legislature. What the courts can do is to act to slow the creep of copyright that has been introducing uncertainty for businesses operating in the creative industries.