IP Insight: Response Clothing Ltd v The Edinburgh Woollen Mill Ltd
IP Insight is a series by Virtuoso Legal, the intellectual property specialists. This entry concerns the latest big decision concerning copyright and the application of the "Cofemel" EU case in the UK.
The Claimant ('Response') designs and markets clothing; the Defendant ('EWM') is a major retailer of clothing with about 400 stores in the UK. This was a copyright dispute concerning the claimant Response’s ‘wave arrangement design’ and whether it qualifies as a work of ‘artistic craftmanship’ under section 4 (1)(c) of the Copyright, Designs and Patents Act 1988 (“CDPA”).
Defining a work of ‘artistic craftmanship’ (section 4 (1)(c) CDPA has long been in debated amongst Judges in various cases in the UK and EU. In the case of Hensher  Lord Simon suggested the term should be seen in no more depth than its ordinary meaning, whilst Lord Kilbrandon argues that the evidence of intention of the craftsman is the defining factor in establishing a work of ‘artistic craftsmanship’.
The controversial EU case of Cofemel highlighted harmonisation of what is considered a ‘work’ throughout the EU, accordingly throwing prominent UK Court decisions such as the Lucasfilm decision relating to the Stormtrooper Helmet into muddy waters. This decision marks the first application of Cofemel in the UK.
In this case, Judge Hacon initially considered the preliminary issue of ‘Can the wave fabric qualify as a work of artistic craftmanship and therefore be entitled for copyright protection?’
To qualify, the reviewed the interpretation of ‘artistic craftsmanship’ from previous case law, as below in the words of Tipping J in Bonz Group (Pty) Ltd v Cooke  3 N.Z.L.R. 216 the New Zealand High Court had to consider 'artistic craftsmanship' in the context of woollen sweaters.;
For a work to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal.'
Judge Hacon also considered the opinions of Evans-Lombe J following the Bonz case in Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1)  FSR 5 and the opinions in the case of Hensher.
Of course, alongside the various interpretations of ‘artistic craftsmanship’, Judge Hacon was also required to decide whether the intended goal of the craftsman qualified as ‘artistic’ within the meaning of the statutory provisions, ss 1 and 4 of the CDPA. He also acknowledged the tension between the CDPA and the related EU Directives and noted that he had a responsibility under the Marleasing principle to interpret the CDPA as far as possible in conformity with Directive 2001/29.
Turning to focus on Art.2 of Directive 2001/29/EC of 22 May 2001, the two conditions set in the case of Levola Hengelo BV v Smilde Foods BV  were considered respectively. (Levola’s key issue, in this case, was whether the taste of a food - cheese to be exact - was eligible for copyright protection, The reason that the appeal court considered that it may well be is that the Dutch Supreme Court had previously stated that copyright might subsist in the scent of a perfume in - Kekova BV v Lancôme Parfums et Beauté & Cie SNC NL:HR:2006: AU8940.) The first consideration ‘the subject matter concerned must be original in the sense that it is the author's own intellectual creation..’ and second; ‘only something which is the expression of the author's own intellectual creation may be classified as a 'work' within the meaning of Directive 2001/29’.
Intriguingly, synthesising this information, Judge Hacon stated his view that ‘If no sufficiently similar design existed before it was created, it must have been the expression of the author's free and creative choices.’ A statement that could be seen as contradictory to the international understanding of creative processes, especially in the fashion industry. Just see the case of LOUIS VUITTON MALLETIER v. MY OTHER BAG INC.
Effectively, the court’s judgment adopted reasoning in the Bonz Group case, from which it extracted three key points against the backdrop of s.4 (1)(c) CDPA, that a work of artistic craftmanship can be made using a machine, the nature of aesthetic appeal can be based on customer appeal, and finally that works that are made and marketed in multiple copies are not automatically precluded from being ‘work of artistic craftmanship’. Accordingly, the court ruled that the ‘Wave Fabric’ is indeed a work of artistic craftsmanship, and that EWM had in fact infringed under ss. 16, 18 and 23 of the CDPA.
It appears we now have express acceptance from an English judge that the practical impact of the Cofemel decision is to exclude any requirement for a work to have aesthetic or artistic appeal. It follows that English law, as it has been interpreted to date, is incompatible with EU law in this respect.
It is also significant to get some more clarity from the courts regarding works of artistic craftsmanship which have been industrially manufactured following the repeal of s 52 of the CDPA in 2016. Following the repeal, the term of copyright protection for industrially manufactured artistic works, of which more than 50 copies were made, was extended from just 25 years to be brought in line with other artistic works (where the protection of the duration is the life of the author + 70 years). With this decision confirming that works made by machines can be works of artistic craftsmanship, and the value of industrially manufactured works enhanced by their longer term of protection, producers of these works will surely welcome this updated judicial guidance.
Overall, the Response decision employs rather cautious language and confirms that to be protected, a 'work' must continue to fall - at least formally - under one of the categories in s1 CDPA which, for the time being, must be interpreted in accordance with EU law.
Although the decision in Cofemel pushed the harmonisation of countries approach and application of extended criteria in copyright, this case has confirmed the UK is on board with the harmonised approach, to an extent. What will be the effect post Brexit for the UK concerning the copyright criteria? Will the judges still take an objective stance, or return to the traditional categories in the UK, focusing on artistic and aesthetic value? More to come on this, we're sure of that at least.
 George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd  AC 64
 (Case C-310/17) EU:C:2018:899;  ECDR 2
 LOUIS VUITTON MALLETIER v. MY OTHER BAG INC No. 16-241-cv (2016)
IP Insight: Response Clothing Ltd v The Edinburgh Woollen Mill Ltd was written by guest intern Elizabeth Thornley