A Row Over Nothing? - UK High Court Considers Whether a Rowing Machine Can be a Work of Artistic Craftsmanship

Art can often be very subjective and, quite frankly, baffling as to why a particular piece is seen to be 'good' or not. Nevertheless, the law doesn't see things that way, and even works that are less of 'artistic merit' can, and should be protected under various IP rights, since those rights don't discern based on the artistic value of something. You don't often get novel things argued as being works of artistic craftsmanship, but a recent case in the Intellectual Property Enterprise Court had to look at whether a piece of exercise equipment could be one, and therefore protected by copyright. 

The case of WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) concerned an application for strike out and/or summary judgment of a claim made by WaterRower against Liking for copyright infringement, involving a water resistance rowing machine called the WaterRower (pictured here) developed by the company of the same name. In its application Liking argued that the rowing machine is not a "work of artistic craftsmanship" within the meaning of section 4(1)(c) of the Copyright Designs and Patents Act 1988. The main focus on the application was this, as the Defendant admitted that, if copyright were to subsist in the rowing machine, Liking's copying machines will infringe that right. 

Although the case also discusses aspects of the law relating to applications for strike out/summary judgment, for the purposes of this article we will skip this as it is by no means the most interesting aspect of the case. 

Section 4 provides copyright protection for 'artistic works', which includes 'a work of artistic craftsmanship', however, the legislation doesn't provide any definition for what this would include. The UK courts have grappled with this definition before, most notably in the case of George Hensher Ltd v Restawile Upholstery (Lancs) Ltd (helpfully summarized here), which has been interpreted further in Lucasfilm Ltd v Ainsworth. 

In considering the definition of 'a work of artistic craftsmanship' Deputy High Court Judge Stone considered the five speeches given by the Law Lords in the Hensher case. 

Without delving too deep into the particular considerations raised by all of the Law Lords, Deputy High Court Judge Stone disagreed with the Defendant that the WaterRower is not a work of artistic craftsmanship. 

He noted that, as discussed in the Hensher case, "…the intention of the creator was at least relevant to whether or not a work of craftsmanship is artistic", which was also mentioned as the primary test to define a work of artistic craftsmanship. The Deputy High Court Judge also mentioned that, as shown by witness evidence, the creator of the WaterRower, John Duke, did indeed intend to create a rowing machine in which the user has "a welcoming emotional connection, as they would with a piece of art or furniture", which clearly demonstrated an intention to create a work of artistic craftsmanship. 

Despite the Defendant's assertion that the intention needs to focus on the primary intention of the creator of the work (and Mr Duke's intention was to simply create a water resistance machine and nothing else), the Deputy High Court Judge disagreed that this would be enough, by itself, to strike out the claim. He determined that "…so long as the artistic purpose was one of the creator’s purposes, it does not need to be the primary or dominant one". 

There is also evidence that could be adduced that show that the WaterRower was indeed a work of artistic craftsmanship, and, as noted by the Deputy High Court Judge, this would be a matter for a trial judge to decide on the basis of that evidence in any event. 

The Deputy High Court Judge also discussed a number of tests put forward by the Defendant on deciding what amounted to a work of artistic craftsmanship. He, however, refused to decide on which of them was the 'real' test, but nonetheless found that there were real prospects of success of meeting all of the relevant tests. He concluded that the Claimant has real prospects of success in proving that "…the WaterRower has a real artistic or aesthetic quality, beyond simply being appealing to the eye, and that the WaterRower embodies a sufficient degree of both craftsmanship and artistry, with the combination of these two things leading to the end result".

The Deputy High Court Judge then turned to consider the EU copyright law that relates to the matter. The main cases here are Cofemel — Sociedade de Vestuário SA v G-Star Raw CV and Brompton Bicycle Ltd v Chedech/Get2Get. 

In brief, in Cofemel the CJEU considered the potential preclusion of copyright protection over design works which generate a significant aesthetic effect. In its decision the CJEU set out that copyright protects works that fulfil two requirements: (i) the existence of an original object, and (ii) the expression of intellectual creation. This means that the object in question "…must express the “intellectual creation” of its author, ie, the author has made free and creative choices in creating the work". 

However, as specified in Football Dataco Ltd v Yahoo UK Ltd, if the subject matter "…has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom", it will not possess the requisite originality to be protected by copyright. 

In Brompton, the CJEU had to consider whether copyright applies to a product where its shape is at least in part necessary to obtain a technical result (in the case, a folding bike). In its decision, the CJEU agreed with the position in Football Dataco, but specified that "…in order to establish whether the product concerned falls within the scope of copyright protection… through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality". They also noted that earlier patents, if any apply to have applied to the item in question, will be relevant if they clarify the intentions of creating the shape of that item. In brief, the Court summarized its position as "…that [a] product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".

While the position in the UK and the EU are inconsistent, the Deputy High Court Judge nonetheless found that the Claimant would have real prospects of success even in the European context. He noted that the WaterRower: (i) is an original object; (ii) is an expression of Mr Duke’s intellectual creation; and (iii) whilst there were some technical constraints, they are not such that the idea and its expression become indissociable. 

The Deputy High Court Judge did flag that this should be a matter for Parliament of the higher courts to decide and to specify what will amount to a 'work of artistic craftsmanship' and depending on what the judge dealing with the matter decides, the case could very well be appealed to the Court of Appeal for another look. 

The case is a very interesting one and shows that even novel subject matter that one typically doesn't associate with copyright can be one that comes up in litigation. Although the case didn't provide a great deal of clarity on a definition for a work of artistic craftsmanship, it does provide some more discussion and sets the scene for a potential appeal down the line unless the matter settles (or the parties leave it at that following trial). 

Cadbury's Color Conundrum - UK High Court Considers Registration for the Color Purple for Cadbury's After Settlement with Nestle

Sometimes a specific color is really important. Nothing highlights this more than the seemingly never-ending story of Cadbury's fight to register the color purple (or more specifically, Pantone 2685C) in relation to its iconic chocolate products. The fight over the color started nearly 20 years ago in 2004, so those born in the same year can now legally buy alcohol in the UK - which really puts the time spent in perspective. Nevertheless, color marks have always been difficult to register, however, in a highly anticipated victory Cadbury have done just that, potentially putting this matter to bed once and for all.

The case of Societe des Produits Nestle SA v Cadbury UK Ltd concerned an appeal against a decision by the UKIPO Hearing Officer, in which they rejected the registration of three trademarks (specifically applications 3019362, 3025822 and 3019361). Nestle opposed all three applications on the grounds that: (i) the marks did not fulfil the requirements of a "sign" under section 1(1) of the Trade Marks Act 1994, challenged under section 3(1)(a) of the Act; and (ii) whether the marks had distinctiveness under section 3(1)(b) of the Act. The oppositions against marks '361 and '822 were successful. Cadbury then appealed the decision against those two marks to the High Court, which handed down its decision this Summer.

Justice Meade initially focused on the core cases that were argued to be central to the matter. 

The first case was CJEU decision in Libertel Groep BV v. Benelux-Merkenbureau, which set out that "a colour per se, not spatially delimited, may... have a distinctive character within [the Trade Mark Directive then in force] provided that... it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective". The key here is that a color mark has to be represented graphically clearly for it to be distinctive, and not merely set out as e.g. 'purple' without any distinction as to the hue or use of the color in packaging or otherwise. The case also noted that "...the latter condition could not be satisfied merely by reproducing on paper the colour in question; there had to be a designation using an internationally recognised code" (such as Pantone). 

The second case was the Court of Appeal decision in the Cadbury saga itself in 2013, where the Court of Appeal saw that the mark that was being applied for registration did not meet the requirements for registration, because it was not a "sign".

Justice Meade then discussed the legislative position in the matter, namely Article 2 of the Trade Mark Directive. Article 2 requires that, for a mark to be registered as a trademark, it has to: (i) be a sign; (ii) be capable of graphical representation; (iii) be capable of distinguishing the goods or services of one undertaking from those of other undertakings. 

"I wish I had any idea who owned this color..."

The main issue at hand in the Court of Appeal decision was whether the mark was indeed a 'sign', largely focused on its description as "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods". The latter part of the description left a lot of leeway in the application of the color, so long as it was the "predominant colour" being applied to the packaging. The Court of Appeal rejected the mark as not being a 'sign' as it couldn't be clearly graphically represented and therefore lacks "clarity, precision, self-containment, durability and objectivity".

Justice Meade then moved on to the Hearing Officer's decision. 

The Hearing Officer noted, in relation to mark '361, that although it only referred to the application to packaging of the goods without any limitation to the surface area covered, it still didn't mean the mark would be a single color with no variation and would cover the representation of the trade mark that the Court of Appeal rejected. 

Justice Meade agreed with this position and set out that the formulation of the ‘361 mark is indeed worse than what was rejected by the Court of Appeal, nothing that "[r]emoving the wording held by the Court of Appeal to let in multiple forms and to be objectionably ambiguous is cosmetic at best and does not help".

In relation to mark '822, the Hearing Officer aligned its position to that of the above '361 mark, since it does not explain the use of the color and where it will be in the packaging or advertising materials. Justice Meade, however, disagreed with the Hearing Officer. 

He determined that the mark was for the color, which can include its application on the packaging or otherwise. He also distinguished the wording "predominant" from simply the color, which does not cause the same issues. There is no need to specify a simple color mark in relation to, for example, an area of packaging, since requiring that would limit color marks significantly. 

The appeal therefore succeeded in relation to the '822 mark, but not the '361 mark. 

Justice Meade did give some parting words on the issues around the '361 mark, highlighting that it "…leaves it significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for (and in particular whether they would be identical to ‘361)". How he distinguished the '822 mark from this is through its simplicity; only covering the color purple. 

Although the case is not a huge upheaval of the world of color marks, it does give some clarity as to appropriate wording for similar marks in the future and notes the pitfalls that can befall any application drafter. The key is sufficient specificity so as to not make the mark very difficult or impossible to understand but considering the '822 mark there is clearly room for some degree of generality. If anything Cadbury will be happy that the saga might just be over now, but who knows what the future will bring. 

You Gonna Keep That? - EU General Court Considers Trademark Registrations of Dormant Brands and Bad Faith

Many brands from the distant past have fallen by the wayside or haven't been used in years or even decades, despite some still fondly remembering them. These 'dormant' brands do also present an opportunity for revival and use of the potential remaining goodwill in those brands, but what happens when an unrelated third party decides to "revive" one of these dormant brands and register it as a trademark? The answer isn't always crystal clear, but a recent decision by the EU General Court set to look at just that and whether this could amount to a bad faith registration. 

The case of Ladislav Zdút v EUIPO concerned a trademark for a figurative mark for the brand "NEHERA" (EUTM 11794112), which was applied for and registered in 2013-2014, including a number of different types of goods such as clothing and footwear. Some 5 years after registration three interveners, Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity of the trademark, alleging that the registrant, Mr Zdut, had acted in bad faith when he filed the application for registration of the contested mark. This was due to the first two interveners' grandfather, Jan Nehera, having established a business using the same brand in Czechoslovakia in the 1930s and had acquired a trademark in Czechoslovakia for the same. However, the brand has not been used since the 1940s. The application was rejected at first instance by the Cancellation Division, but the decision was reversed by the Second Board of Appeal which declared the trademark invalid. Mr Zdut subsequently appealed that decision, with the matter ending up with the General Court.

Considering the law around the matter, Article 52 of the CTM Regulation sets out that an EU trademark should be declared invalid where the applicant was acting in bad faith when they filed the application for registration of that trademark. 'Bad faith' in this regard "… presupposes the presence of a dishonest state of mind or intention" so it means that the applicant "…has filed the application for registration of that mark, not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark". 

However, the subjective intentions of the applicant must still be assessed objectively considering all the factual circumstances relevant to the particular case. These circumstances can include: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. 

Even Superman had no respect for historical ownership
of things

Even outside of the specific circumstances above, the General Court noted that other factors, such as the origin of the sign at issue and of its use since its creation, the commercial logic underlying the filing of the application for the trademark, the reputation of the sign at the time of the registration, and the chronology of events leading up to that filing might be very relevant. 

The General Court then turned to the actual matter at hand. It initially noted that there is currently no registration for the "NEHERA" brand in the EU, and that the earlier Czechoslovakian trademark had lapsed in the 1940s and hasn't been used since. 

Interestingly Mr Zdut had been fully aware of the existence and reputation of Jan Nehera and of the old trademark in Czechoslovakia, and even had noted that he wanted to launch the brand to ‘pay a tribute’ to the ‘great days of the Czechoslovak textile industry of the 1930s’ and in particular to Mr Jan Nehera. 

Considering the law in light of the matter, the General Court set out that "[f]ree-riding behaviour with regard to the reputation of a sign or of a name… is, in principle, only possible if that sign or that name actually and currently enjoys a certain reputation or a certain celebrity". With that in mind, the EU courts have found an intention to take unfair advantage of the surviving reputation of an earlier mark, including where that mark was no longer used or of the current celebrity of the name of a natural person, where the surviving reputation or fame was established.  

In contrast to this position, there is no usurpation of the reputation of a term claimed by a third party and, therefore, no bad faith, where that term was neither registered, used, nor renowned in the EU. 

With that in mind, the General Court noted that in the absence of surviving reputation in respect of the former Czechoslovak trademark and of current celebrity in respect of Jan Nehera’s name at the time of filing, the use of the mark wouldn't be free-riding behavior indicating bad faith. Even though Mr Zdut knew of the individual and the original trademark, it isn't sufficient to establish the existence of bad faith. 

The interveners also highlighted an intention to create a link between the name and the new brand, but the General Court saw that this wasn't in itself sufficient to support a finding that unfair advantage was taken of the reputation of the sign or of the former name. 

The General Court also focused on the lack of a current reputation in relation to the old trademark or the name. As they noted, currently both have been forgotten by the relevant public, and the applicant had made considerable efforts to build up the brand again. This was far from merely parasitically taking advantage of an existing reputation. 

The General Court also determined that it is possible, in certain specific circumstances, that reuse by a third party of a previously renowned former mark or of the name of a previously famous person may give a false impression of continuity or of inheritance with that former mark or with that person. This can happen where the applicant presents itself to the relevant public as the legal or economic successor of the holder of the former mark, when there is no continuity or inheritance relationship. That could then be considered in establishing bad faith. However, no such intention was found in relation to Mr Zdut. 

In summary, the General Court found that the concept of bad faith presupposes the presence of a dishonest state of mind or intention, which they were unable to find in the present matter, and overturned the Board of Appeal's decision. 

The case is an important reminder for any brand owners (even historical ones), or their potential legatees, to make sure that those brands are properly registered if any use of the brand is ever even contemplated. If this isn't done it may present an opportunity for a third party to jump in and take over the brand, which could very well be fully legal and without much recourse down the line. It is possible that this matter will be appealed to the Court of Justice for an ultimate decision, but in the absence of that any dormant brands could very well be up for grabs.