Deputy High Court Judge David Stone has ruled that the the question of whether a WaterRower water resistance rowing machine (pictured) is a work of artistic craftsmanship is one that requires a full trial and cannot be determined in summary judgment. In his judgment on 5 August 2022, he rejected an application for strike out /summary judgment of a copyright infringement claim (WaterRower (UK) Ltd v Liking Ltd (T/A Topiom)).
The claimant sells the WaterRower, which was designed by former US rower Mr John Duke between 1985 and 1987. He was influenced by Shaker design and aspects of the machine continue to be hand-made. It was initially protected by a US patent, which has expired.
The defendants make a rival machine, called TOPIOM. They argued that there was no copyright to infringe as the WaterRower is not a work of artistic craftsmanship.
The UK test
The judge reviewed both UK and EU case law and concluded that the claim that the WaterRower is a work of artistic craftsmanship was not “bound to fail”. Whether it is such a work will be a matter for a judge to decide at trial.
The judge noted that the Copyright, Designs and Patents Act (CDPA) requires that the object be both artistic and a work of craftsmanship. This requirement was addressed by the House of Lords in Hensher, which concerned a prototype piece of furniture.
The judge rejected the argument that WaterRower had no real prospect of proving that its product was artistic because:
The intention of the creator is at least relevant to whether or not a work is artistic, and there was already evidence in this case about Mr Duke’s intention.
The WaterRower is no less artistic in conception or appearance than works that the Lords said could be held to be artistic, such as hand-painted tiles or wrought-iron gates.
As to whether the WaterRower was a work of craftsmanship, he said there was evidence that Mr Duke was a craftsman, produced a high-quality product and had pride in his work:
“It matters not that the creation of the WaterRower is now outsourced to others - there is nothing in the authorities that requires works of artistic craftsmanship to be the work of a single person, and art practice for centuries, and, more recently, craft practice, have both involved heavy aspects of outsourcing of the actual manufacture.”
He also could not rule out that the WaterRower would pass any of the other tests put forward by the defendant based on legal textbooks. This does not mean that the WaterRower is a work of artistic craftsmanship but simply that further analysis is required before reaching a decision.
The EU test
The defendant argued that the test set out by the CJEU in its judgments in Cofemel and Brompton was different to that in Hensher, and that the WaterRower would also fail these tests.
However, the judge said the claimant also had “a real prospect of success” under the CJEU test, as the WaterRower was an original object, an expression of Mr Duke’s intellectual creation and it was arguable that it was not solely dictated by technical function:
“In my judgment, on the evidence before me the Claimant has real prospects of demonstrating that Mr Duke worked within the constraints for a water resistance rowing machine such that he was still able to exercise his own free and creative choices, and design the WaterRower in such a way that it reflects his personality. Reliance was placed on the use of wood, and the choice of wood. That was clearly a creative choice.”
The last word?
The judge acknowledged there was an apparent inconsistency between the law as it has developed in the UK and before the CJEU, in particular regarding the need for eye appeal. He said the interaction between the CDPA and Cofemel/Brompton “would appear to need to be resolved at some stage, by Parliament or the higher courts” but the inconsistencies did not arise on the facts in this case at this point in time.
That position could of course change once the judge has heard the evidence at trial and made the necessary findings of fact.