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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Response Clothing Ltd v The Edinburgh Woollen Mill Ltd (Rev 1) [2020] EWHC 148 (IPEC) (29 January 2020) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2020/148.html Cite as: [2020] EWHC 148 (IPEC), [2020] WLR(D) 88 |
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BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
____________________
RESPONSE CLOTHING LIMITED |
Claimant |
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- and - |
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THE EDINBURGH WOOLLEN MILL LIMITED |
Defendant |
____________________
Gwilym Harbottle (instructed by Gateley plc) for the Defendant
Hearing dates: 3-4 December 2019
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Crown Copyright ©
Judge Hacon :
Introduction
Witnesses
Identifying the copyright work
"The Claimant understands that the work was created on the loom by the weaver and is therefore a product of craftsmanship. The narrative details of its creation are a matter of evidence and in any event, the Claimant has not been able to obtain further information from GIN Textile at this time for the reasons set out at length above."
"(2) In this Part –
…
'graphic work' includes –
(a) any painting, drawing, diagram, map, chart or plan, and(b) any engraving, etching, lithograph, woodcut or similar work;"
How the Wave Fabric came to be created
Whether copyright could subsist in the Wave Fabric
The law
"1. (1) Copyright is property right which subsists in accordance with this Part in the following descriptions of work –
(a) original literary, dramatic, musical or artistic works,
(b) sound recordings, films or broadcasts, and
(c) the typographical arrangement of published editions.
(2) In this Part, 'copyright work' means a work of any of those descriptions in which copyright subsists.
… "
"4. (1) In this Part 'artistic work' means –
(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality,
(b) a work of architecture being a building or a model for a building, or
(c) a work of artistic craftsmanship."
"[131] In Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216 the New Zealand High Court had to consider 'artistic craftsmanship' in the context of woollen sweaters. Tipping J. considered Hensher and other authorities and concluded that:
'… [F]or 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.'
I find that helpful. Having said that, he was prepared to combine the artistry of the designer and the craftsmanship of the knitters and conclude that the sweaters fell within the description, rejecting authorities which tended to suggest that they had to be the same person. That seems to me to be a sensible approach, at least where there is a proper nexus between the two people."
"I think that by common usage it is proper for a person to say that in his opinion a thing has an artistic character if he gets pleasure or satisfaction or it may be uplift from contemplating it." (at p.78)
"It is I think of importance that the maker or designer of a thing should have intended that it should have an artistic appeal but I would not regard that as either necessary or conclusive." (at p.78)
"In the present case I find no evidence at all that anyone regarded the appellants' furniture as artistic. The appellants' object was to produce something which would sell. It was, as one witness said, 'a winner' and they succeeded in their object. No doubt many customers bought the furniture because they thought it looked nice as well as being comfortable. But looking nice appears to me to fall considerably short of having artistic appeal. I can find no evidence that anyone felt or thought that the furniture was artistic in the sense which I have tried to explain." (at p.79)
"In deciding whether a work is one of artistic craftsmanship I consider that the work must be viewed and judged in a detached and objective way. The aim and purpose of its author may provide a pointer but the thing produced must itself be assessed without giving decisive weight to the author's scheme of things. Artistry may owe something to an inspiration not possessed by the most deft craftsman. But an effort to produce what is artistic may, if forced or conscious, for that very reason fail. Nor should undue emphasis be given to the priorities in the mind of a possible acquirer. A positive need to purchase an object or thing in order to put it to practical use may be the primary reason for its acquisition but this may be reinforced by a full appreciation of its artistic merits if they are possessed.
So I would say that the object under consideration must be judged as a thing in itself. Does it have the character or virtue of being artistic?" (at p.81)
"I consider that as in all situations where a decision is required upon a question of fact the court must pay heed to the evidence that is adduced. Though it is a matter of individual opinion whether a work is or is not artistic there are many people who have special capabilities and qualifications for forming an opinion and whose testimony will command respect. In practice a court will not have difficulty in weighing their evidence and in deciding whether it clearly points to some conclusion. In cases where the court is able to see the work which is in question that will not warrant a decision on the basis of a spot opinion formed by the court itself but it will be a valuable aid to an appreciation of the evidence." (at p.82)
"The phrase 'works of artistic craftsmanship' is made up of words in ordinary use in the English language. Unless the context otherwise requires, they must be given their ordinary and natural meaning. I can find nothing in the context to require that they should be given a different meaning from that." (at pp.86-87)
"So, in my view, it is simply a question of fact whether a work is one of artistic craftsmanship. …
This question of fact in relation to copyright is decided not by a jury but by a judge sitting alone. Evidence may be called with regard to it. Expert witnesses may testify. At the end of the day, it will be for the judge to decide whether it is established that the work is one of artistic craftsmanship. If that is not established, the claim to copyright on that ground will fail. I do not think that it suffices to show that some section of the public considers the work to be artistic, though that fact will be one for the judge to take into account, for the decision has to be made by the judge and cannot be delegated." (at p.87)
" … whether the subject matter is or is not a work of artistic craftsmanship is a matter of evidence; and the most cogent evidence is likely to be from those who are either themselves acknowledged artist-craftsmen or concerned with the training of artist-craftsmen – in other words, expert evidence. In evaluating the evidence, the court will endeavour not to be tied to a particular metaphysics of art, partly because courts are not naturally fitted to weigh such matters, partly because Parliament can hardly have intended that the construction of its statutory phrase should turn on some recondite theory of aesthetics – though the court must, of course, in its task of statutory interpretation, take cognisance of the social-aesthetic situation which lies behind the enactment, nor can counsel be prevented from probing the reasons why a witness considers the subject matter to be or not to be a work of artistic craftsmanship. It is probably enough that common experience tells us that artists have vocationally an aim and impact which differ from those of the ordinary run of humankind. Given the craftsmanship, it is the presence of such aim and impact – what Stewart J. called 'the intent of the creator and its result' – which will determine that the work is one of artistic craftsmanship."
"The conscious intention of the craftsman will be the primary test of whether his product is artistic or not; the fact that many of us like looking at a piece of honest work, especially in the traditional trades, is not enough to make it a work of art." (at p.97)
"You will get no assistance, until you have exercised that judicial function, by asking the opinion of an expert; if he says 'I regard that object as artistic' the next question which must be asked in order to make his last answer intelligible is 'What do you mean by artistic?' That question is incompetent, because the answer would be irrelevant. Since the word is a word of common speech, it requires, and permits of, no interpretation by experts. It is for the judge to determine whether the object falls within the scope of the common meaning of the word." (at p.97)
"Article 2
Reproduction right
Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part:
(a) for authors, of their works;"
"[33] … arts 2–4 of Directive 2001/29 state that the Member States are to provide for a set of exclusive rights relating, in the case of authors, to their 'works', while art.5 sets out a series of exceptions and limitations to those rights. The directive makes no express reference to the laws of the Member States for the purpose of determining the meaning and scope of the concept of a 'work'. Accordingly, in view of the need for a uniform application of EU law and the principle of equality, that concept must normally be given an autonomous and uniform interpretation throughout the EU (see, to that effect, judgments of 16 July 2009, Infopaq International A/S v Danske Dagblades Forening (C-5/08) EU:C:2009:465; [27] and [28], and of 3 September 2014, Deckmyn v Vandersteen (C-201/13) EU:C:2014:2132, [14] and [15]).
…
[35] In that regard, two cumulative conditions must be satisfied for subject matter to be classified as a 'work' within the meaning of Directive 2001/29.
[36] First, the subject matter concerned must be original in the sense that it is the author's own intellectual creation (judgment of 4 October 2011, Football Association Premier League Ltd v QC Leisure (C-403/08 and C-429/08) EU:C:2011:631, [97] and the case-law cited).
[37] Secondly, 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 (see, to that effect, judgments of 16 July 2009, Infopaq International (C-5/08) EU:C:2009:465, [39], and of 4 October 2011, Football Association Premier League, [159]).
[38] It should be recalled in that regard that although the EU is not a party to the Berne Convention , it is nevertheless obliged, under art.1(4) of the WIPO Copyright Treaty, to which it is a party and which Directive 2001/29 is intended to implement, to comply with arts 1–21 of the Berne Convention (see, to that effect, judgments of 9 February 2012, Luksan v van der Let (C-277/10) EU:C:2012:65, [59] and the case-law cited, and of 26 April 2012, DR v NCB - Nordisk Copyright Bureau (C-510/10) EU:C:2012:244, [29]).
[39] Under art.2(1) of the Berne Convention, literary and artistic works include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression may be. Moreover, in accordance with art.2 of the WIPO Copyright Treaty and art.9(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which is mentioned in [6] of this judgment and which also forms part of the EU legal order (see, to that effect, judgment of 15 March 2012, Societa Consortile Fonografici (SCF) v Del Corso (C-135/10) EU:C:2012:140, [39] and [40]), copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such (see, to that effect, judgment of 2 May 2012, SAS Institute Inc v World Programming Ltd (C-406/10) EU:C:2012:259, [33])."
[30] As regards the first of those conditions, it follows from the Court's settled case-law that, if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices (see, to that effect, judgments of 1 December 2011, Painer, C-145/10, EU:C:2011:798, paragraphs 88, 89 and 94, and of 7 August 2018, Renckhoff, C-161/17, EU:C:2018:634, paragraph 14).
[31] On the other hand, when the realisation of a subject matter has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work (see, to that effect, judgment of 1 March 2012, Football Dataco and Others, C-604/10, EU:C:2012:115, paragraph 39 and the case-law cited)."
Originality
Ownership
Copying
Copying in substantial part
Primary infringement
"16. The acts restricted by copyright in a work
(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom —
…
(b) to issue copies of the work to the public (see section 18);
…
18. Infringement by issue of copies to the public.
(1) The issue to the public of copies of the work is an act restricted by the copyright in every description of copyright work.
(2) References in this Part to the issue to the public of copies of a work are to the act of putting into circulation in the United Kingdom copies not previously put into circulation in the EEA by or with the consent of the copyright owner.
(3) References in this Part to the issue to the public of copies of a work do not include —
(a) any subsequent distribution, sale, hiring or loan of copies previously put into circulation (but see section 18A: infringement by rental or lending);
[subsection (b) now deleted]
(4) References in this Part to the issue of copies of a work include the issue of the original."
"Article 4
(1) Members States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.
(2) The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent."
"[123] Mr Turner submitted that it was clear that s.18 was not intended to be narrower than the concept of putting on the market in European trade law and he submitted that in Peak Holding v Axolin (C-16/03) had held that goods are placed on the market for the purposes of the EU's law of exhaustion when they are sold to an independent undertaking. Thus the sale from NB Fabrics to Metropolis was the act of putting on the market.
[124] Ms Edwards-Stuart submitted that on the facts of this case, the entity which makes the copy available to the public is Art of the Loom and not either NB Fabrics or Metropolis. If NB Fabrics (or Metropolis) were themselves selling to the public then the matter would be different. Art of the Loom would be nothing more than another normal customer and their resale would not be caught by s.18 .
[125] I accept Ms Edwards-Stuart's submission. It seems to me that the CJEU in Peak Holding were not considering a factual situation like this one. In this case, as a matter of reality, it is Art of the Loom which puts the Spring Meadow fabric on the market. Neither NB Fabrics nor Metropolis sell to anyone other than Art of the Loom (or another Thornber company). I do not know whether this is pursuant to a formal supply agreement or simply based on the tacit understanding of the parties to this arrangement but it is clear in my judgment that NB Fabrics and Metropolis are making and finishing this fabric for supply on to Art of the Loom and no one else. If the supply chain includes other entities related to the Thornber family as well, that makes no difference. The purpose of these arrangements with NB Fabrics and Metropolis is in order for Art of the Loom to sell the finished product on the open market. In my judgment Art of the Loom are putting into circulation on the market copies not previously put into circulation and are infringing under s.18."
"[40] A sale which allows the proprietor to realise the economic value of his trade mark exhausts the exclusive rights conferred by the Directive, more particularly the right to prohibit the acquiring third party from reselling the goods.
[41] On the other hand, where the proprietor imports his goods with a view to selling them in the EEA or offers them for sale in the EEA, he does not put them on the market within the meaning of article 7(1) of the Directive.
[42] Such acts do not transfer to third parties the right to dispose of the goods bearing the trade mark. They do not allow the proprietor to realise the economic value of the trade mark. Even after such acts, the proprietor retains his interest in maintaining complete control over the goods bearing his trade mark, in order in particular to ensure their quality."
Secondary Infringement
"23. The copyright in a work is infringed by a person who, without the licence of the copyright owner –
(a) possesses in the course of business,
(b) sells or lets for hire, or offers or exposes for sale or hire,
(c) in the course of a business exhibits in public, or distributes, or
(d) distributes otherwise than in the course of business to such an extent as to affect prejudicially the owner of the copyright,
an article which is, and which he knows or has reason to believe is, an infringing copy of the work."
"…it seems to me that 'reason to believe' must involve the concept of knowledge of facts from which a reasonable man would arrive at the relevant belief. Facts from which a reasonable man might suspect the relevant conclusion cannot be enough. Moreover, as it seems to me, the phrase does connote the allowance of a period of time to enable the reasonable man to evaluate those facts so as to convert the facts into a reasonable belief."
"I did not regard the replacement of a garment in our range with another one which uses a fabric which is generally available on the market and is similar to but materially different from the original as wrong or inappropriate. It is standard or commercial practice."
Conclusion