By Andrew Clay and Matt Sammon
Historically, securing long lasting copyright protection for three dimensional industrially produced items has often proved challenging for manufacturers.
Manufacturers of three dimensional products (such as steam irons, mobile phones, laptops, bottles and lampshades) could generally be forgiven for looking on with great envy at Microsoft, Sage (the company behind the well-known accounting software), JK Rowling and Banksy.
And it’s not just the latter’s commercial success which should turn the manufacturers green. Whereas the copyrights in the latter’s world leading software, Harry Potter novels and street art will continue to protect their works for generations to come[1], the poor old manufacturers have generally had to do with at most the twenty five years’ protection provided by registered designs.
It isn’t surprising therefore that manufacturers have over the years tried to protect their products by asserting the much longer lasting copyright over them.
Parliament’s Attempts To Restrict Copyright For Industrially Produced Items
Legislators have generally taken a dim view of such attempts, wanting to ensure competition in the supply of manufactured items.
The 1911 Copyright Act contained a broad exclusion[2] of copyright protection for items that were intended to be industrially manufactured.
Section 10 of the 1956 Copyright Act[3] provided that third party industrial reproduction of a product design would not amount to copyright infringement if carried out more than 15 years after the copyright owner (or someone with its consent) had themselves first started to industrially produce copies of the product. However following a regrettable 1965 court of appeal decision[4], it was held that section 10 only applied to designs which were registerable (those that had “eye appeal”) and did not apply to designs that were purely functional. That had the entirely predictable and utterly bizarre consequence that purely functional items, such as the exhaust systems of cars, enjoyed the full term of artistic copyright protection (which was then life of the designer plus 50 years) whereas registerable designs only had in effect 15 years’ copyright protection. This created much abuse by companies such as British Leyland[5].
The 1988 changes
In 1988 parliament attempted to put an end to that farcical situation by providing that it would not be an infringement of copyright in a design for anything (which was not an artistic work) to make articles to that design[6]. Functional items were thereafter to be protected by an entirely new right, UK unregistered design right, which broadly protected even functional product designs for a period of up to ten years from the end of the year of first commercial exploitation.
The 1988 changes meant that those seeking longer than ten year protection for their winning product designs either had to rely on design registration (which would give them up to 25 years) or argue that their product was an “artistic work”, which would potentially give them very much longer protection.
Artistic works and artistic craftmanship
However “artistic work” has a narrow statutory definition and the only practical option for most manufacturers has, until recently, therefore been to argue that their product is a work of artistic craftsmanship, which is one of the things that can qualify as an artistic work[7]. That path has historically been a difficult one for would be copyright owners because the UK test for what amounts to a work of artistic craftsmanship is very uncertain[8]: it is likely that something more than mere “eye appeal” is required but it is unclear what that extra element is. It is also unclear whether or not the intention of the creator (what he or she set out to create) is a relevant factor or not and if so how much weight should be given to that factor.
Into this uncertain mix (and importantly before the UK left the EU), came two European Court of Justice decisions which in essence held that copyright could exist (indeed had to exist) in functional items (such as folding bicycles) provided only that two conditions were met (a) the item was original and (b) was the expression of the author’s intellectual creation/personality. These cases are inconsistent with the English law on subsistence of copyright in works of artistic craftsmanship as English law clearly requires some other criteria to be satisfied, even if it is unclear what those other criteria are.
Two recent copyright cases involving three dimensional products
Two recent cases have looked at these issues.
WaterRower[9]
At the heart of this case was the issue of whether or not the rowing machine shown below was protected by copyright under UK law as a work of artistic craftsmanship.
The trial judge held that it was not protected under UK law because even though it had clear aesthetic appeal, its creator did not intend to a sufficient degree to “produce something of beauty which would have an artistic justification for its own existence”.
It is fair to say that the elevation of this intention requirement to a necessary condition for copyright protection for works of artistic craftsmanship is somewhat controversial, not least because in the leading UK case only three of the five judges even thought that intention should be a relevant factor. It is also a problematic evidential criteria as often only the designer can give credible evidence as to their own intention or state of mind, which is a recipe for the unscrupulous to game the system. Objective criteria are generally preferred when setting the qualification conditions for something as commercially important as copyright.
Equisafety[10]
One of the key issues in this case was whether or not, inter alia, the waistcoat shown below was protected by copyright as a work of artistic craftsmanship.
The judge in this case found that the additions to the waistcoat over pre-existing designs were functional in nature and were not the expression of the author’s intellectual creation/personality so didn’t qualify for copyright protection under the EU line of cases. Under the English law test, the judge reached the same conclusion: none of the modifications were the work of a craftsman and were functional in nature so did not qualify as works of artistic craftsmanship.
Practical Design and Copyright Implications for Manufacturers
The current state of UK law on the protection of functional three dimensional products by copyright is a mess.
There is a clear conflict between (a) the 1988 desire of parliament (given the history referred to above) to strictly restrict the extent to which copyright should apply to three dimensional functional items and (b) the EU case law, which appears to have set a rather low (and mandatory) bar for the existence of artistic copyright for functional three dimensional items.
Given the current state of English law, manufacturers should think very carefully about deploying artistic copyright in their products against their competitors on the basis that their products are works of artistic craftsmanship.
Registered designs can provide good protection for industrially produced items but care must be taken to protect those elements of the product which are likely to be copied, rather than just filing numerous images of the whole of the product, which will often result in very narrow (often commercially worthless) protection being obtained.
We Specialise in Protecting Industrially Produced Items
Protecting the design of new products is complex and it is easy to end up with a sub-optimal result. At Sonder and Clay, our accomplished IP solicitors and attorneys provide a comprehensive range of intellectual property protection services covering all areas of trade mark, design, copyright, and patent law worldwide. We will help you to identify your IP assets, proactively protect them against infringement and add real IP value to your business by maximising their immediate and long-term value within your business.
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[1] Copyright in such works subsists for 70 years after the end of the year the author died in: section 12(2), Copyright Designs and Patents Act 1988, (“CDPA 1988”).
[2] Section 22.
[3] As amended by the Design Copyright Act 1968.
[4] Dorling v Honnor Marine [1965] Ch 1.
[5] British Leyland v Armstrong [1986] RPC 279.
[6] Section 51 CDPA 1988.
[7] See section 4(1)(c) of the CDPA 1988.
[8] Following the House of Lords decision in Geoge Hensher Ltd v Restawhile Upholstery (Lancs) Limited [1976] AC 64.
[9] WaterRower v Liking 2024 EWHC 2806 (IPEC).
[10] Equisafety Ltd v Woof Wear Ltd [2024] EWHC 2478 (IPEC).
