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Copyright: Works of artistic craftsmanship and Cofemel

Published on 02 June 2020

Response Clothing Limited v The Edinburgh Woollen Mill Limited

The question

What is the impact of the CJEU’s decision in Cofemel on UK copyright law relating to “works of artistic craftmanship”?

The key takeaway

This is the UK’s first decision following the CJEU’s decision in Cofemel. It appears to recognise that UK copyright law is inconsistent with EU law, at least in respect of any requirement for a work of artistic craftsmanship to have aesthetic appeal.

The background

There has been much debate in the UK around whether certain elements of the Copyright, Designs and Patents Act 1998 (the CDPA) remain compatible with EU law following the CJEU’s recent decision in Cofemel, which suggests that there is a harmonised EU-wide definition of “work” for copyright purposes, which is not restricted by any pre-specified categories and should not take into account any aesthetic considerations/limitations. 

By contrast law, the UK approach has been: 

  • the “closed-list” of categories of works which can benefit from copyright protection under the CDPA
  • the concepts of “sculptures” and “works of artistic craftmanship” as found in section 4 of the CDPA and developed over time by the English courts
  • under section 51 of the CDPA, “it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.”
This IPEC case is the first judgment of a UK court following Cofemel to consider this question. The dispute concerned the supply from 2009 to 2012, by Response Clothing (Response) to Edinburgh Woollen Mill (EWM), of certain ladies’ tops made of a jacquard fabric of a design referred to as a “wave arrangement”, consisting of multiple lines woven into the fabric in a wave pattern.

In 2012, following an attempt by Response to increase its prices, EWM supplied a sample of Response’s top to other garment suppliers with an invitation to supply tops made from a similar fabric. 

Response brought a claim of copyright infringement against EWM, alleging that copyright subsisted in its wave arrangement design, including on the basis that it was a work of artistic craftsmanship. 

The decision

The judge referred to the New Zealand High Court’s decision in Bonz Group (Pty) Ltd v Cooke (itself referred to by Mann J in the first instance decision in Lucasfilm Ltd v Ainsworth (the “stormtrooper helmet” case)) which established that for a work to be one of “artistic craftsmanship”: (1) its creation required skilful workmanship; and (2) be artistic, such that there was creative ability that resulted in “aesthetic appeal”

The judge found that, in his view, the wave fabric could be a work of artistic craftsmanship following Bonz, despite being made with a machine rather than by hand, as the employee who designed the fabric would have been a craftsman working in a skilful way, and the primary goal was presumably to make something aesthetically pleasing to customers. 

Turning to EU law, the judge was also satisfied that the wave fabric was original in that “its design was its author’s own intellectual creation” and if “no sufficiently similar design existed before it was created, it must have been the expression of the author’s free and creative choices.” 

Pursuant to the Marleasing principle, the judge was required to interpret the CDPA in line with the Information Society Directive (2001/29/EC) so far as possible and therefore “in conformity with the way in which that Directive has been interpreted by the CJEU”. In doing so, the judge noted (at paragraph 63 of the Judgment): 

“The issue I have to resolve is not whether Directive 2001/29 has the effect of removing all the gaps there may be in copyright protection available from a court at first instance for ‘works’ within the meaning of art. 2 of the Directive, but whether it is possible to interpret s. 4(1)(c) of the 1988 Act in conformity with art. 2 of Directive 2001/29 such that the Wave Fabric qualifies as a work of artistic craftsmanship and thereby its design becomes entitled to copyright protection. In my view it is, up to a point. Complete conformity with art. 2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the Wave Fabric has aesthetic appeal and thus would be inconsistent with the definition of work of artistic craftsmanship stated in Bonz Group. I need not go that far since I have found on the facts that the Wave Fabric does have aesthetic appeal. “

Why is this important?

Although the decision was not reached on this basis, the judge appears to accept that the consequence of the Cofemel decision is that UK copyright law is inconsistent with EU law, at least in respect of any requirement for a work of artistic craftsmanship to have aesthetic appeal.

Practical tips

The future development of UK copyright law is uncertain – in particular whether functional items, lacking aesthetic appeal, may nevertheless have copyright protection. Following Brexit, any inconsistencies between UK and EU law remain (and further divergence is possible). 

In the meantime, carefully consider whether works (in the broadest EU sense) might attract copyright protection, rather than applying a traditional, narrower UK analysis of copyright subsistence for particular categories of work.