In a recent Intellectual Property Enterprise Court (IPEC) judgment, the Court concluded that a series of horse-riding accessories exhibited at a trade fair by the Defendant, Woof Wear Ltd, did not infringe copyright asserted by the claimant, Equisafety Ltd. Equisafety’s products – which were functional in nature and lacked originality – did not benefit from copyright protection so there was nothing for Woof Wear to infringe.
The decision serves as a reminder that it cannot be assumed that a 3D article will necessarily be protected by copyright as ‘work of artistic craftmanship’, particularly if the article consists of technical or functional elements.
Background
Equisafety had originally sued Woof Wear for design infringement and passing off. Woof Wear successfully defended those claims via a summary judgment application but the IPEC allowed Equisafety to amend its claim to cover copyright infringement.
Equisafety’s copyright claim alleged infringement of copyright it asserted in several high-visibility equestrian products: a waistcoat for horse riders, an elasticated band for a riding hat, and a neck band for horses. The primary issue was whether Equisafety’s products could be considered works of artistic craftsmanship and therefore be protected as copyright works. Woof Wear accepted that if the articles were protected by copyright then its own products would be infringing.
An earlier Court order in the proceedings had restricted the claim to only certain additions made to earlier versions of Equisafety’s products, not its products as a whole.
Judgment
The Court examined the nature of the products and the modifications made to them. As an initial point, the Court held that the use of tools (in this case CAD software) in the creation of Equisafety’s works did not bar them qualifying as works of artistic craftsmanship under the Copyright, Designs and Patents Act 1988 (CDPA).
Reviewing previous authorities on works of artistic craftsmanship (including the CJEU’s decision in Cofemel, on which Equisafety relied), the Court found that it was not possible to draw a principle from caselaw about whether a given type of product would necessarily be protected as a work of artistic craftmanship: each work needs to be considered on its own facts.
Doing so, the Court concluded that the features added to Equisafety’s existing articles did not amount to copyright works under either the EU law principles of Cofemel or the wording of the UK’s CDPA should it be read differently:
- Dealing first with the waistcoat, the new logos and wording applied to it were functional additions for improving visibility that could have been made in a number of different ways. Neither they nor the addition of different fabric and a zip around a Velcro tab reflected the author’s personality. They were practical solutions which could be addressed in multiple different ways but which fell short of copyright protection. They were not the work of a craftsman.
- In the same vein, the addition of LED lights to the existing hat band were practical solutions which could not transform the band into a work of artistic craftsmanship.
- The features added to the neck band for the horse were likewise functional improvements for better performance. Taken together, they did not qualify as copyright works: it was not clear that Equisafety’s founder was both an artist and a craftsman in their creation of the works (to the extent they created them, which was itself unclear).
In case the Court was wrong to only consider the new additions to the articles, it went on to consider the articles as entire items, reaching the same conclusion. Whilst the waistcoat did differ from a mass market reflective builder’s vest, its design was dictated by function: its features did not reflect the personality of the author and were not the work of an artistic craftsman. The same was true of the hat band and neck band: they were functional items dictated by form, lacking the originality required for copyright works.
Analysis
Like a number of other copyright decisions before it, in reaching the same conclusion on copyright subsistence under both EU case law (Cofemel) and UK legislation (the CDPA) the judgment avoided an explicit finding that the UK’s closed list of copyright works is inconsistent with the approach under EU law.
At the time of publishing, it is reported that the IPEC has taken a different approach in its judgment in the WaterRower v Topiom case, which was heard in July 2023 (before Equisafety) but only handed down on 11 November 2024. The judgment has not yet been published but the Court is reported to have concluded that there is a conflict between EU and UK copyright law, finding that no copyright subsisted in the works in question because they failed to meet the UK definition of ‘works of artistic craftmanship’ despite meeting the relevant EU ‘originality’ test. An appeal to the Court of Appeal would not be surprising.
If you would like to discuss the issues raised in this article please contact Harry Jewson, Emily Roberts, or another member of our IP team.
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