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WaterRower copyright sunk by artistry requirement

WaterRower copyright sunk by artistry requirement

Dr. Janet Strath

The Intellectual Property Enterprise Court (IPEC) has recently held that a commercial water resistance rowing machine known as “WaterRower” is not a “work of artistic craftsmanship” within the meaning of s. 4(1)(c) of the Copyright, Designs and Patents Act 1988 (CDPA).

In the court’s view, no UK copyright subsisted in the design and, therefore, the WaterRower machine was not infringed by sales of a replica rowing machine by Hong-Kong based company Liking Limited.

Although the WaterRower machine qualified as an “original work” under the EU Copyright Directive (also referred to as the InfoSoc Directive), the court found it was not a “work of artistic craftsmanship” under the CDPA as it failed to meet the criteria established in UK case law.

Campbell Forsyth, sitting as a Deputy High Court Judge, considered it immaterial that the WaterRower had featured in publications and on the television in the US and UK, was on display in the Design Museum in London and was recognised by the Museum of Modern Art (MOMA) in New York as an iconic design, since eye appeal alone was not enough to qualify an article as an artistic work.

Background

The WaterRower had been designed in the US between 1985 and 1987 by John Duke (an inventor and former member of the US Olympic Rowing Team), whose inspiration and design ethos stemmed from his experience in competitive rowing in “beautiful cedar shells down the Squamscott River under cool blue New Hampshire skies”.

Handcrafted from wood, the WaterRower was intended to offer an alternative to “aesthetically unappealing metal exercisers”.

MOMA described Mr Duke’s design process and resulting product as follows:

“He wanted to make an indoor machine that felt as much like a real rowing as possible, with a focus on aesthetics. It took him two years to get the design right, moving past failed ideas such as a flipper in the tank instead of a clutch. What began as a series of doodles at his desk turned into a sculptural piece of exercise equipment that upends expectations in two ways: by bringing water indoors, and by looking elegant and artful when stored.”

Mr Duke’s process leading to the Prototype involved sketches, testing parts and “learning as he went”. During the early years of its creation, the WaterRower had undergone several design changes.

Although there was no photographic image of the “first copyright work”, Mr Duke’s sketches (shown below) in a US patent application filed in May 1987 were generally accepted as the earliest surviving drawings of the Prototype.

Various iterations of the design were made after the patent application, as evidenced by photographs, sketches and witness statements. A couple of examples are shown below:

WaterRower Ltd claimed each iteration of the design was protected by copyright as a work of artistic craftsmanship under s. 4(1)(c) of the CDPA, and that the defendant’s TOPIOM machines infringed that copyright.

The defendant acknowledged that its machines were replicas of the WaterRower, but argued that no copyright subsisted in the WaterRower because it was not a “work of artistic craftsmanship” under the CDPA as it failed to meet the criteria established in UK case law.

Decision

A key question in this case was how to assess whether the WaterRower qualified as “a work of artistic craftmanship”. The problem was that although “works of artistic craftsmanship” were protected in the UK by copyright under s. 4(1)(c) of the CDPA, the term “artistic craftsmanship” had no statutory definition.

The leading case on the meaning of s. 4(1)(c) was George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64, in which the House of Lords found, amongst other things, that an intention to attract purchasers through design and shape was not sufficient to show artistic intent; for an item to be a “work of artistic craftsmanship” it had to have both the necessary qualities of being artistic and a piece of craftsmanship; and that originality of design and simple eye appeal were insufficient.

Other relevant decisions considered by the judge included Lucasfilm v Ainsworth, in which Stormtrooper helmets and armour were found not to be works of artistic craftsmanship, and Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216, in which Tipping J determined that an artist craftsman “… produces something which has aesthetic appeal” and confirmed that the subject matter must have “some artistic quality”.

Another issue was that the IPEC considered itself bound by retained EU case law, including Case C-683/17 Cofemel – Sociedade de Vestuário SA v G-Star Raw CV EU:C:2019:721, in which the CJEU held that there was no requirement for any aesthetic effect or artistry for copyright to exist in a work.

The IPEC sought to reconcile the tension between the CDPA and EU law by reducing the Copyright Directive and retained EU case law to a “form of gateway” to assess whether the work was original.

However, rather than resolving the tension between UK and EU law on the subsistence of copyright in works of applied art, the IPEC found that the WaterRower was a copyright work in the EU but not in the UK.

It was generally accepted that the Prototype design of the WaterRower had been created by Mr Duke, and that the work reflected “the personality of its author, as an expression of his free and creative choices”. While its shape was primarily influenced by its requirement to operate as a rowing machine, it was not “solely” dictated by its technical function. There was room for Mr Duke to reflect his personality in the subject matter combining striking visual elements as an expression of his free and creative choices.

Accordingly, the court found that Mr Duke's Prototype was original in that the design was his own intellectual creation as a work within the meaning of the Copyright Directive.

However, for the subsequent iterations, the court found that the design changes were minor and did not reflect the personality of its author, as an expression of his free and creative choices, so were not original within the meaning set out in Cofemel and the Copyright Directive.

The judge noted that Mr Duke did not have a particular background in any trade associated with craftsmanship, yet his evidence demonstrated significant effort and skill in the creation of the early development of Prototype. The evidence also supported the argument that a significant section of the public found the WaterRower design aesthetically pleasing.

However, in the judge’s view, the evidence did not give the impression that the subject matter was the result of a mind with a desire “to produce something of beauty which would have an artistic justification for its own existence” (a requirement stipulated by Lord Kilbrandon in Hensher) or that Mr Duke “was an artist in that he used [his] creative ability to produce something which has aesthetic appeal” ("the Bonz test").

The judge accepted that Mr Duke could be considered a craftsman in the context of his creation of the Prototype, that he used his skills to create the Prototype, and that it had aesthetic appeal. However, he concluded that Mr Duke did not have the character of an “artist-craftsman” in creating the work, and the work was therefore not a work of artistic craftsmanship, and so was not entitled to copyright protection. Accordingly, Liking Limited was found to have not infringed copyright as none subsisted, despite the fact that it admitted copying the WaterRower.

Comment

This decision suggests that 3D objects (other than sculptures) will struggle to gain copyright protection in the UK where the creator’s purpose is primarily commercial rather than artistic, even if, outside the CDPA, the two purposes are not mutually exclusive.

This far from satisfactory outcome will disappoint British designers who might have hoped for a decision more aligned with Cofemel, and the prospect of 70 years’ copyright protection for works of applied art as opposed to the maximum 25 years for registered designs.

It is not yet known whether WaterRower will seek permission to appeal the decision in what has been an uncertain area of copyright law, and it might be interesting to see what Arnold LJ, for instance, would make of the rather stark distinction between artistic and commercial intention that underpins the IPEC decision, while still applying retained EU case law.