The Interface between Copyright and Design Law

 

Jane Lambert

The guest of honour at yesterday's dinner meeting of The Intellectual Property Society of Yorkshire ("TIPSY") was Jonathan Moss of Hogarth Chambers.  The title of his talk was Rowing Uphill? The UK Position on Copyright in Works of Industrial Handicraft or Applied Art.  Rowing Uphill? was clearly a reference to Mr Campbell Forsyth's judgment in WaterRower (UK) Ltd v Liking Ltd. [2024] EWHC 2806 (IPEC)  in which Mr Moss represented the defendant.  That was not quite the same as the title of the advertised talk "Is copyright making a comeback for the protection of industrially produced items?” which referred to Ian Karet's judgment in Equisafety Ltd v Woof Wear Ltd [2024] EWHC 2478 (IPEC) (25 Sept 2024) as well as WaterRower but Mr Moss's talk was still jolly interesting all the same.  Coming two days after the launch of the IPO's Survey on priorities to shape UK system for protecting designs which I discussed in NIPC News yesterday the timing of Mr Moss's talk could not have been better.

Mr Moss divided his talk into three parts:

• Part I: Cofemel, Brompton and the copyright/design interface
• Part II: The Position following WaterRowe v Liking
• Part III: The Future?

Cofemel referred to C-683/17 Cofemel – Sociedade de Vestuário SA v G-Star Raw CV [2020] ECDR 9, EU: C:2019:721, ECLI:EU: C:2019:721, [2019] EUECJ C-683/17 and Brompton to Case C-833/18 SI, Brompton Bicycle Ltd and another v Chedech/Get2Get [2020] ECDR 10, [2021] CEC 670, EU: C:2020:461, ECLI:EU: C:2020:461, [2021] 1 CMLR 2, [2020] FSR 36, [2020] Bus LR 1619, [2020] EUECJ C-833/18.  These are two important judgments of the Court of Justice of the European Union to which Mr Forsyth referred in WaterRower.   I should add that Mr Karet also considered those cases in Equisafety.   The "copyright/design interface" referred to the fact that some industrial designs can also be protected by artistic copyright.  Mr Moss illustrated the point with a picture of a bookcase from his study which contained items that were definitely protected by copyright such as books but also ornaments that could be protected by design law. To underscore the point he referred to art 2 (7) of the Berne Convention and art 17 of the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289, 28.10.1998, p. 28–35)).  Mr Moss took us through the Court's decision in Cofemel and Brompton Bicycle.

In Part II Mr Moss took us through WaterRower which is a case that I discussed in The Trial - WaterRower v Liking on 20 Nov 2024 in NIPC Law. Before discussing Mr Forsyth's judgment he summarized Judge Hacon's judgment in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd. [2020] WLR(D) 88, [2020] EWHC 148 (IPEC).  In that case, the learned judge held that the Marleasing principle could be used to make the EU test for a copyright work within the meaning of art 2 of the Information Society Directive with the test of artistic craftsmanship within the meaning of s.4 (1) (c) of the Copyright, Designs and Patents Act 1988,  For those who want a bit more detail on the point, I wrote about Response Clothing in Copyright: Response Clothing Ltd v The Edinburgh Woollen Mill Ltd. in NIPC Law on 31 Jan 2020.  Mr Moss said that Mr Forsyth had held in WaterRower that:

1. Artistic craftsmanship under s.4 (1) (c) CDPA could not be read in line with the Cefemel line of case law.
2. The WaterRower was not protected as a work of artistic copyright because it was intended for commercial use and the designer did not have the necessary characteristics of an artist-craftsman.
3. The WaterRower would have been protected under Infosoc and Cofemel.

Part III consisted of a picture of the Royal Courts of Justice and one slide which considered:

• The possibility of future cases of pleading copyright works that fall outside the closed categories of the CDPA;
• The test of intellectual creation as a gateway test when it comes to works of artistic craftsmanship;
• It is still unclear what exactly is the test for artistic craftsmanship; and
• The IPO's announcement of further consultation on the design/artistic copyright interface.

Surprisingly, there was only one question from the floor and that came from me.   As a patent had been granted for the WaterRower I asked whether Mr Moss had considered the point that Mr Justice Whitford (a former head of my previous chambers) had raised at first instance in Catnic Components Ltd. v. Hill & Smith Ltd. [1982] RPC. 183  that an applicant for a patent dedicates any copyright that may subsist in his patent drawings to the public. The answer was that the point had been considered and even raised but it was not properly developed because of the time limitations in the Intellectual Property Enterprise Court.

An additional bonus was that I was seated at a table with some very interesting companions.  The lady next to me was a Ukrainian national who had read law at one of the best law schools in Ukraine and the University of Dundee which had been a college of my alma mater until 1967.  As Andrew Clay is also a St Andrean I introduced my companion to him.  He already knew the lady's sister who was also at the dinner and whose acquaintance I subsequently made.   I invited both ladies to chambers whenever they have some spare time in London during a working day.  As my companion worked for  Womble Bond Dickinson I also introduced her to Patrick Cantrill who had once headed the intellectual property team at that firm and to Michael Harrison, Past President of the Chartered Institute of Patent Attorneys.

My only disappointment was that prices seem to have skyrocketed and standards of service seem to have nosedived at the Leeds DoubleTree Hilton.  The cost of the dinner meeting on 27 Nov 2024 was £68 and we got to hear a Lord Justice of the Court of Appeal, a cloakroom, Christmas crackers and party hats (although Mr Harrison and I were the only diners who wore them) and coffee.  Yesterday's cost £75.  We had nowhere to put our coats and above all we had no coffee.  The hotel is very convenient for Leeds mainline railway station though it is not always possible to park in or around Granary Wharf.  However, I would not object to our meetings taking place at a less expensive venue possibly in Bradford or some other city.

Nevertheless, I am very grateful to our organizer, Andrew Clay, for setting up and running TIPSY.  He has kindly agreed to speak to the St Andrews students' Law Society on 14 April 2025.  I intend to motor up to the auld grey toon that  Andrew Lang described so poignantly in Almae Matres in order to hear Andrew's talk.

Anyone wishing to discuss any of the topics referred to by Mr Moss or me should call me on 020 7404 5252 during UK office hours or send me a message through my contact form.