A recent decision of the Intellectual Property Enterprise Court ("IPEC") has addressed the extent to which mass produced articles can and should benefit from copyright protection.
The judge, His Honour Judge Hacon, considered the harmonising Directive 2001/29/EC on certain aspects of copyright and related rights in the information society (the "Infosoc Directive") as well as recent rulings on the scope of copyright by the Court of Justice of European Union ("CJEU"). In doing so, his judgment demonstrates – insofar as such might have been in doubt – how strict adherence to the prescriptive closed categorical approach that had hitherto characterised the basis for the UK's protection of industrial designs, is no longer appropriate.
However, UK law in this area is still on a journey and, despite this latest judgment, uncertainty lingers as to what are the eligibility criteria to be applied before mass produced artistic works will be held to benefit from copyright protection.
The case concerned jacquard fabric – a type of cloth devised in France during the Napoleonic period by the eponymous Joseph-Marie Jacquard whereby, rather than being stamped, embroidered or printed onto the surface, intricate patterns can be introduced into the warp by specially adapted weaving machines. This shift in fabric manufacture was a major technological leap forward. Indeed, the punch cards used in the Jacquard machines are credited with being the inspiration for 'Analytical Engines' conceived by Charles Babbage in the mid 19th century – regarded as the first programmable mechanical calculators.
The Edinburgh Woollen Mill Limited ("EWM") is a major UK retailer with 400 stores. For three years, from 2009 to 2012, Response Clothing Limited ("Response") supplied EWM with ladies tops made of a jacquard fabric with an integrated 'wave arrangement' design (the "Wave Fabric"), which had been originally shown to EWM by Response. Some time later, the parties fell out over price and EWM took a swatch of the Wave Fabric to another UK company, Visage Limited ("Visage"), providing instructions that Visage was to produce and supply to EWM a similar product. Visage did so and then, in 2015, EWM gave similar instructions to manufacturers in Vietnam, China and Bangladesh from whom EWM also sourced supplies of the ladies tops.
Response issued proceedings against EWM alleging that the manufacture and/or sale of the ladies tops, produced by Visage and the other suppliers, constituted acts by EWM of primary and secondary copyright infringement pursuant to the Copyright, Designs & Patents Act 1988, as amended (the "CDPA").
The 'closed model' approach
From when over three hundred years ago, the UK passed the world's first copyright legislation (being the Statute of Anne in 1709), its approach has been prescriptive – requiring the work for which protection is sought to fit into a designated category before it can become eligible for protection. This 'closed model' can be seen in the CDPA, the UK's current governing law on copyright. Indeed, a primary objective of the CDPA was to deprive products which are mass produced and/or devoid themselves of substantial artistic merit, from the benefit of the lengthy period of protection afforded by copyright (as set out in section 51 of the CDPA).
Instead, legislators replaced copyright protection for such designs with the new and more limited right of UK unregistered design right. In consequence of the drafting of the CDPA, copyright was essentially withdrawn as the basis for protecting the designs of three dimensional products unless the product itself was a work of substantial artistic merit.
Unlike the UK, other countries (e.g. France and the Netherlands) adopt a more inclusive stance towards copyright protection, requiring simply instead that eligibility shall be determined solely by assessing the results of the author's intellectual creative efforts. Moreover, Article 2(1) of the Berne Convention for the Protection of Literary and Artistic Works, to which the UK is a signatory, describes works as "…every production in the literary, scientific and artistic domain, whatever may be the mode or form…" and includes specifically "works of applied art".
On enactment, the CDPA continued with this prescriptive categorisation approach. Section 1(1) of the CDPA stipulates that copyright subsists in the following works:
(a) original literary, dramatic, musical or artistic works
(b) sound recordings, films or broadcasts, and
(c) the typographical arrangement of published editions.
Section 1(2) of the CDPA states that 'copyright work' means "a work of any of those descriptions in which copyright subsists".
Section 4(1) of the CDPA defines 'artistic works' as:
(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality
(b) a work of architecture being a building or a model for a building, or
(c) a work of artistic craftsmanship.
Response contended that the Wave Fabric was an original artistic work under section 1(1)(a) of the CDPA and, for the purposes of section 4 thereof, fell into either the category a 'graphic work' or a 'work of artistic craftmanship'.
With regard to the alleged acts of infringement, Response argued that the ladies tops supplied under instructions to EWM were copies or substantial copies of the Wave Fabric. Response had not joined any of EWM's other suppliers of the ladies tops in the proceedings but, nevertheless, it argued that EWM was a primary, as well as a secondary, infringer of Response's copyright in the Wave Fabric. Response alleged that EWM was a primary infringer in that the sale of the ladies tops that it had initially commissioned from Visage constituted an issue of copies of the work to the public, contrary to section 18 of the CDPA. Response also alleged that EWM was a secondary infringer under section 23 of the CDPA for its possession, sale, and offer for sale of the ladies tops because such products were articles that were, and which EWM knew or had reason to believe were, infringing copies.
Other than for a dispute over ownership in relation to Response's title to copyright in the Wave Fabric – which was readily settled in Response's favour by the judge – his decision on these various issues was as follows.
Although it falls upon a claimant to prove originality in its alleged works, the judge did take into account the failure by EWM, in preparing its defence, to find any similar fabrics that pre-dated the creation of the Wave Fabric. Although the individual author of the Wave Fabric was never identified and there was only limited evidence given as to what had been the creative process, the judge held that on the balance of probabilities the Wave Fabric had not been copied from any other design.
He also held, citing the leading CJEU decisions of Infopaq International A/S v Danske Dagblades Forening (C-5/08) and Levola Hengelo BV v Smilde Foods BV (Case C-310/17) and noting how Articles 2 – 4 of the Infosoc Directive called simply for the protection "…for authors, of their works…", that the Wave Fabric was original because it constituted the author's own intellectual creation.
Was the Wave Fabric a 'work'?
The judge was not prepared to extend the definition of 'graphic work' in section 4(a) of the CDPA so to include to fabrics. He concluded that all of the examples for graphic work given in that section are of creations where the author makes marks on a substrate to generate an image – a different process to the knitting or weaving of a fabric.
Accordingly, the judge turned his attention to whether the Wave Fabric was a work of artistic craftsmanship, pointing out that the CDPA provides no definition for such term. He cited with approval the approach the New Zealand court chose in Bonz Group (Pty) Ltd v. Cooke  3 N.Z.L.R 216, a case which involved the alleged 'artistic craftmanship' of woollen sweaters. He adopted the description used in the Bonz case, to hold that works of artistic craftsmanship involved the combination of (a) a craftsman that took justified pride in their skilled workmanship even if such was carried out on a machine; and (b) an artist (not necessarily the same person) who used their creative ability to produce something which has aesthetic appeal. He held that the Wave Fabric satisfied such criteria, and it did not matter that multiple copies were subsequently made and marketed or that the aesthetic quality of the Wave Fabric was no more than it had the potential to appeal to some customers.
HHJ Hacon was conscious that if ex hypothesi their lordships in the case of George Hensher Limited v Restawhile Upholstery (Lancs) Ltd  AC 64 (which involved a prototype of a popular suite of furniture), had opined on the Wave Fabric, the judges would – either on grounds of lack of artistry and/or lack of craftsmanship – have probably reached a different conclusion as to whether copyright can subsist in the Wave Fabric. However, he did not regard the Hensher judgment as having declared any binding principle of law and, since that decision, there had been developments in European legislation and relevant CJEU rulings. The judge was required, in accordance with the Marleasing principle, to interpret the CDPA so as far as is possible in conformity with the Infosoc Directive and other relevant European law.
In this regard, last year, the CJEU ruled in Cofemel-Sociedada de Vesturário SA v. G-Star Raw CV (Case C-683/17) – a case involving jeans, sweat shirts and T-shirts – that the national law of Member States could not impose a requirement of aesthetic or artistic value when assessing what is a 'work' eligible for copyright protection under the Infosoc Directive. Instead, as stated in Cofemel, it is "…sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices…". On the other hand, when the realisation of the subject matter "…has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work…".
HHJ Hacon was not prepared to go so far as to depart from the language of the CDPA and decisions such as Hensher by deciding that the Wave Fabric did not need to have any aesthetic appeal (which would be the conclusion if Cofemel was followed in its entirety). However, on the basis of the Marleasing principle and the Bonz decision, he held that the Wave Fabric was a work of artistic craftsmanship.
Primary and secondary infringement
The judge held that EWM was not a primary infringer because the act of issuing to the public for the purposes of section 16 and 18 of the CDPA occurred when Visage supplied the ladies tops to EWM and thus put the infringing articles into circulation within the European Economic Area. The issue to the public was not when EWM sold on such items to its own customers.
However, the judge did find that EWM had reason to believe that the ladies tops which it sourced from Visage and the other suppliers were infringing copies of the Wave Fabric. Even accepting EWM's assertions that it did not expressly ask Visage to copy the Wave Fabric, HHJ Hacon concluded that a reasonable retailer aware of the facts known to EWM at the relevant time would have arrived at the belief that the ladies tops were infringing copies. The judge noted in particular how, when EWM fell into dispute with Response over pricing, EWM's managing director took some time trying to scout out fabrics similar to the Wave Fabric but failed to do so, after which EWM passed Visage a sample of the Wave Fabric whereupon Visage came up with a design which was similar to the Wave Fabric.
In these circumstances, the judge ruled that EWM was a secondary infringer of the copyright owned by Response in the Wave Fabric, in accordance with section 23 of the CDPA, by selling the ladies tops which it had sourced from Visage and the other suppliers.
This decision is a further indication of how UK domestic copyright law has moved towards an extended and more open interpretation about what should constitute 'originality' and 'artistic works', aligned more closely with the approach in other European countries. This is welcome news for the creators of works, and their advisers should consider whether items that previously would have been unlikely to qualify as 'works of artistic craftmanship', might now be found to do so by the courts.
Significantly, this expanded eligibility test will be unaffected by Brexit, unless and until the UK Supreme Court or legislature were to reverse the position.
Nevertheless, the judgment by HHJ Hacon also shows that the UK is not prepared to embrace fully the decision of the CJEU in rulings such as Cofemel, in that the courts will require some aesthetic quality to be demonstrated in order for parties to argue successfully that the work is indeed a work of artistic craftsmanship.
 Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1)  EWHC 148 (IPEC)