Copyright: fabric as work of artistic craftsmanship

Background

In order for copyright to subsist under UK law a work must fall into one of the categories of work protected by copyright: a graphic work, photograph, sculpture or collage, irrespective of artistic quality; a work of architecture being a building or a model for a building; or a work of artistic craftsmanship (section 4(1), Copyright, Designs and Patents Act 1988) (CDPA) (section 4(1)).

The European Court of Justice (ECJ) has held that for subject matter to be classified as a work under the Copyright Directive (2001/29/EC) (the Directive), two conditions must be satisfied:

• The subject matter concerned must be original in the sense that it is the author's own intellectual creation.
  
  
• Only something which is the expression of the author's own intellectual creation can be classified as a work (Cofemel - Sociedade de Vestuário SA v G-Star Raw CV, see "Copyright: protection of designs as copyright works", Bulletin, IP & IT, this issue).

In Bonz Group (Pty) Ltd v Cooke, the New Zealand High Court defined a work of artistic craftsmanship as one where the author of the work was both:

• A craftsman in that they made the fabric in a skilful way, taking justified pride in their workmanship.
  
  
• An artist in that they used their creative ability to produce something that had aesthetic appeal ([1994] 3 NZLR 216).

The English High Court approved Bonz in Lucasfilfm Ltd v Ainsworth.

Facts

R supplied E with ladies' tops made of a fabric with a wave design (wave fabric). After R increased the price of the tops, E supplied a sample of the tops to other garment suppliers.

E then sold tops supplied by the other suppliers that incorporated other fabrics (E fabrics). R sued E for copyright infringement claiming that protection would subsist in its wave arrangement as either a graphic work, or a work of artistic craftsmanship.

Decision

The IPEC held that E had infringed R's copyright in the wave fabric by selling the E fabrics made up into tops.

The definition of a graphic work in the context of subsistence of copyright could not be stretched to include a fabric whether made on a loom or a knitting machine. However, copyright subsisted in the wave fabric on the basis that it was a work of artistic craftsmanship under section 4(1).

Cofemel excludes any requirement that the wave fabric has to have aesthetic appeal. This exclusion is inconsistent with the definition of artistic craftsmanship under UK law. ECJ copyright law only requires a work to be original so that the subject matter reflects the personality of its author, as an expression of their free and creative choices, and that the work is not solely dictated by function.

The court did not need to decide whether it was possible to interpret section 4(1) in conformity with the Directive, as it had already decided that the design was a work of artistic craftsmanship. The court therefore avoided ruling on the inconsistency between the exclusion of the aesthetic appeal requirement in Cofemel and UK law.

The similarities between the wave fabric and the E fabrics were sufficient to infer that there was direct or indirect copying. While the design of the wave fabric was not copied in detail, it had been reproduced closely enough for a substantial part of it to have been copied. Therefore, E had taken the intellectual creation of the author.

Comment

This decision is the first in which the UK courts have considered Cofemel. The court confirmed that, to be protected, a work must still fall into one of the categories listed in the CDPA, which for the time being must be interpreted in accordance with EU law. The case is interesting for its acknowledgment that full compliance with Cofemel would probably require granting protection to an original work irrespective of its aesthetic appeal as well as, possibly, irrespective of the category of work to which it belongs.

After the UK leaves the EU, the UK courts will be obliged to follow EU law for the duration of the transition period, but the UK will then be free to determine the future path of its copyright law. The UK recently announced, for example, that does not currently intend to implement the EU Digital Single Market Copyright Directive (2016/0280/EU), which may indicate a more general decision not to align UK law with EU copyright law (see News brief "New EU Copyright Directive: harmony or discord?", www.practicallaw.com/w-020-1790).

Case: Response Clothing v Edinburgh Woollen Mill [2020] EWHC 148 (IPEC).

First published in the March issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.