Cofemel’s first UK outing – The wooly world of copyright and designs

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

The case
Edinburgh Woolen Mill (“EWM”) bought women’s tops from Response Clothing (“Response”) made of a particular jacquard fabric with a ‘wave arrangement’ design over a number of years. However, when Response attempted to raise their prices, EWM supplied a swatch of the fabric to other suppliers and invited them to reproduce the fabric.

Response sued EWM for copyright infringement, claiming that the design of the ‘wave arrangement’ was a work of artistic craftsmanship. In his judgement, HHJ Hacon acknowledged the tension between the 1988 Act and the related EU Directives and noted that he had a responsibility under the Marleasing principle to interpret the 1988 Act as far as possible in conformity with Directive 2001/29.

HHJ Hacon concluded on a few important points:

• The decision in Cofemel excludes any requirement that the ‘wave arrangement’ has to have aesthetic appeal;
• This exclusion is inconsistent with the definition artistic craftsmanship under English law; and
• EU copyright law only requires a work to be original so that “the subject matter reflects the personality of its author, as an expression of his free and creative choices” and that the work was not solely dictated by function.

After some analysis HHJ Hacon concluded that he did not need to decide “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”, as he had already decided that the ‘wave arrangement’ was a work of artistic craftsmanship.

HHJ Hacon did not expound further upon what would have happened if he had decided the design was not a work of artistic craftsmanship and was instead ‘functional’. He therefore avoided needing to rule on the tension between the exclusion of the aesthetic appeal requirement and UK law.
HHJ decided that EWM had infringed Response’s copyright.

Comment
Although the decision was not itself impacted by the Cofemel decision, HHJ Hacon’s judgment is a clear indication that the English courts may now consider English copyright legislation incompatible with EU law. What happens next is up for debate though in light of the UK leaving the EU on 31 January 2020. UK courts are obliged to follow EU law for the duration of the transition period, until 31 December 2020 (unless extended), but post transition the UK will be free to legislate as it wishes (subject to any further agreements).

Will the law return to its carefully calibrated state as created through centuries of copyright case law in the UK? Or will UK copyright continue under the current EU direction? We know at least that the UK does not currently intend to implement the hotly debated EU Copyright Directive (previously discussed here).

The impact of Cofemel on the two, usually separate, regimes of copyright and design is not yet fully understood, but it is definitely one to monitor over the coming months and years.

By Simon Casinader and Georgina Rigg