10th December 2024

The UK Intellectual Property Enterprise Court (IPEC) delivered an important decision in WaterRower (UK) Limited v Liking Limited. The decision highlights the limitations of copyright protection for 3D objects.

Background

WaterRower UK Limited (‘WaterRower’) claimed its water resistance rowing machines qualified as works of artistic craftmanship and alleged that Liking Limited infringed their copyright by reproducing a substantial part of these works in their TOPIOM rowing machines.

Liking alleged that WaterRower’s machines did not qualify as works of artistic craftsmanship and were therefore not protected by copyright.

The primary issue in this case was whether the WaterRower, a rowing machine designed by Mr John Duke is a work of artistic craftsmanship under UK copyright law.

What did the Court decide?

The judgment considered the conflict between the UK and EU legal tests for copyright and referenced EU decisions Cofemel and Brompton, which indicate that functional objects can qualify for copyright protection if they meet the originality requirement reflecting the author’s own intellectual creation. Whilst the Judge acknowledged that the WaterRower would meet the originality requirement under EU copyright law, this was not sufficient to establish copyright protection under UK law.

Turning to the UK test, the Judge reviewed the evidence and found no suggestion to indicate that the WaterRower was the result of “any desire to produce something of beauty which would have an artistic justification for its own existence“. Further, the evidence did not give the impression that Mr. Duke “was an artist in that he used their creative ability to product something which has aesthetic appeal“.

Therefore, it was held that the WaterRower was created by Mr. Duke with the intention of producing something commercially successful and not for it to be a work of beauty. Accordingly, the WaterRower was found to be insufficiently artistic to meet the requirements under UK law as works of artistic craftsmanship.

IPEC’s judgment may of course be appealed which could provide a further opportunity for this area of law to be clarified.

What are the key takeaways from this decision?

This decision highlights the ongoing tensions and differences between UK and EU copyright law and provides clarity on the UK’s requirements for assessing whether functional 3D objects are eligible for copyright protection. Such objects must meet the test of artistic craftsmanship to qualify for copyright under UK law.

The question of what qualifies as a “work of artistic craftsmanship” lacks a clear legal test or consistent case law. The leading case, George Hensher Ltd v Restawile Upholstery (Lancs) Ltd (1976), involved the House of Lords unanimously deciding that a piece of furniture was not a work of artistic craftsmanship. However, their reasoning was varied, leaving no definitive test for future cases. Nevertheless, there are some key points that can be taken from this decision:

• The intention of the creator is relevant as to whether a work is artistic;
• More than eye appeal is needed for a work to be considered artistic;
• Determining whether an object qualifies as a work of artistic craftsmanship is a matter of evidence with expert evidence being the most compelling; and
• “Work of artistic craftsmanship” is a composite phrase which must be construed as a whole so the object would need to have the qualities of being artistic and a piece of craftsmanship.

Other relevant cases include Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (2020), where a knitted fabric was considered a work of artistic craftsmanship, and Lucasfilm Ltd v Ainsworth (2011), where Storm Trooper masks were not. Neither case established a clear framework for determining artistic craftsmanship.

Courts have been cautious not to interpret artistic craftsmanship too broadly, as doing so could undermine deign law, which provides separate and more limited protection for functional and industrial designs. If the same objects were protected under both copyright and design law, the latter could become redundant, as copyright is simpler, has fewer exclusions, and offers potentially more robust and longstanding protection.

What protection can be claimed for 3D objects in the UK?

There are two main options for legal protection of 3D objects under UK law: design protection and copyright protection.

Design protection

Design protection is available through registered designs and unregistered designs.

1. Registered Design Right

Registered design protection lasts for up to 25 years, but the design must be registered and then renewed every 5 years. This form of protection does not cover the object’s functionality, it only safeguards its aesthetic features.

Owners of registered designs can prevent third parties from using the design (or any other design which does not produce a different overall impression on the informed user) without needing to show copying.

2. Unregistered Design Right

The Unregistered Design Right protects the shape and configuration (how the parts are arranged, internally and/or externally) of a purely functional 3D article without aesthetic appeal without requiring registration.  It doesn’t protect surface ornamentation.  Protection either lasts for 10 years after the object was first sold, or 15 years from when the object was created.  The Unregistered Design Right enables holders to prevent unauthorised copying by third parties.

3. Supplementary Unregistered Design Right

The Supplementary Unregistered Design Right (SUD) protects the appearance of a 2D or 3D shape (including its shape, colours, texture, materials and/or ornamentation) for three years from disclosure of the design to the public.  The Supplementary Unregistered Design Right is the post-Brexit equivalent of the EU unregistered Community Design right, providing protection in the UK. Designs are eligible for SUD protection if they have been first disclosed to the public in the UK after January 2021. SUDs provide protection for 3-years  from the date of that disclosure.  The SUD provides the same protection as an EU Unregistered Community Design but is confined to the UK.  SUD owners can prevent third parties from using the design (or any other design which does not produce a different overall impression on the informed user) but must also show copying.

Copyright protection

If a 3D object can meet the criteria to be considered a work of artistic craftsmanship in copyright law, it can qualify for copyright protection. This protection lasts for the life of the creator plus 70 years, offering a significantly longer term of protection compared to design rights.

If you would like further information or advice on this subject, please contact Amanda McDowall.