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Copyright in Designs – Is Everything Now Protectable?

By Brian Whitehead, Consultant

The distinction drawn in UK law between protection for artistic 3D designs (which receive copyright protection for the author’s life plus 70 years) and for more functional 3D designs (which are protected only for 10 years under UK unregistered design right) was thrown into doubt by the CJEU’s 2019 decision in Cofemel. The IPEC has now provided a partial answer as to the implications of Cofemel, albeit in a case involving a 2D design. It is clear that the approach in UK law of categorising the types of works in which copyright can subsist is incompatible with EU law, but much less clear as to whether anything can, will, or indeed should, be done about it.

Since 1988, UK law has circumscribed the ability of rights owners to protect the appearance of three dimensional articles. The Copyright, Designs and Patents Act (“1988 Act”) lists, in s. 4, the various categories of artistic works in which copyright can subsist. For 3D articles, the only potentially applicable categories are sculptures (s. 4(1)(a)), works of architecture (s. 4(1)(b)) and works of artistic craftsmanship (s. 4(1)(b)). The category of “Work of artistic craftsmanship” was carried over from the Copyright Act 1956 (and its predecessor, the 1911 Act). Its precise meaning has never been made clear either in statute or case law, but it is generally accepted to require at least some artistic merit. That distinguishes it from most other categories of copyright e.g. literary and graphic works, where no literary or artistic merit at all is required, and entirely mundane works such as instruction manuals and functional design drawings can be protected in copyright. If a 3D article does not fall within any of the s. 4 categories, then the design of the article itself is not protectable in copyright. Furthermore, by s. 51 of the 1988 Act, the copyright in the underlying design drawings is not infringed by producing copies of the 3D article. For such articles, UK unregistered design right (which was also introduced under the 1988 Act) and/or unregistered Community design is the only potential protection available. That means that the vast majority of 3D articles will not be protected in copyright under UK law.

In the case of Cofemel-Sociedade de Vesturário SA v G-Star Raw CV (Case C-683/17), handed down in September 2019, the Court of Justice of the European Union cast considerable doubt as to the s. 4 categories. It held that national law could not impose a requirement of aesthetic or artistic value in respect of copyright protection. The only requirement for copyright protection is that a work is original, in that its design was its author’s own intellectual creation. The implication of that is that the approach underlying the 1988 Act – allowing copyright protection for particularly aesthetic/artistic 3D works, but only design right protection (with a much shorter term) for other 3D works – is fundamentally incompatible with EU copyright law.

HHJ Hacon, the IPEC judge, has now provided for the first time (to the author’s knowledge) the English courts’ response to Cofemel. In Response Clothing v The Edinburgh Woollen Mill, the judge was required to consider copyright in a fabric design i.e. a 2D work, called the Wave Fabric. It was contended by the claimant that it was a graphic work and/or a work of artistic craftsmanship. The judge rejected the notion that it was a graphic work. He decided that it was a work of artistic craftsmanship, applying a test laid down by the New Zealand courts (Bonz Group) – was the person who created the design “both (a) a craftsman in that he or she made the fabric in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he or she used their creative ability to produce something which has aesthetic appeal”. The judge acknowledged that the work probably would not have been regarded as a work of artistic craftsmanship under the test laid down in the 1970s House of Lords decision in Hensher. That case, however, is notoriously difficult to understand and apply, as there were five separate judgments, with no common underlying rationale. The judge was satisfied that Bonz Group has now been approved twice at first instance in the English courts, and evidently preferred that approach to the unclear approach in Hensher.

The judge went on to say that the issue was “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. In my view it is, up to a point. Complete conformity with art.2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the Wave Fabric has aesthetic appeal and thus would be inconsistent with the definition of work of artistic craftsmanship stated in Bonz Group. I need not go that far since I have found on the facts that the Wave Fabric does have aesthetic appeal. This part of the definition in Bonz Group is satisfied whether or not, in law, it is required.”

The judge therefore was not required to (and did not) decide whether a non-aesthetic 3D article can qualify for copyright protection under UK law. That will have to wait for a future case. However, it seems clear that he regarded s. 4 of the CDPA 1988 as inconsistent with Cofemel. Indeed, it is difficult to see how it could be otherwise.

In the author’s view, it would be an unfortunate and retrograde step for the English courts to decide that copyright can subsist in functional/non-aesthetic 3D designs. It would give the full term of copyright protection (i.e. author’s life plus 70 years) to mundane articles such as car spare parts, and put the law back in the position it was in the 1980s, which is in fact what prompted the introduction of s. 51 and the UKUDR in the 1988 Act. It would also render design right protection otiose. It is not clear, to this author at least, how s. 4 could be interpreted in accordance with Cofemel in respect of a non-aesthetic 3D article. To do so would involve ignoring the words “artistic craftsmanship”, which would be a re-writing rather than an interpretation of s. 4(1)(c). Instead, a judge might declare that s. 4(1)(c) is incompatible with EU law, and invite Parliament to amend it. Of course, in light of Brexit developments, it is perhaps unlikely that Parliament would agree to do that. It may be the case, therefore, that this area of law will be one of the first (in the field of IP) in which the English courts will choose to diverge from EU law, once they are able to do so.