15th November 2022

Ripples in the market: how copycats can threaten inadequate intellectual property rights

By Matthew Pryke & Conner Mackenzie

The Covid-19 pandemic saw an exponential growth in the popularity of home gyms and fitness apparatus designed specifically for residential use. Many existing businesses operating in this previously smaller market did not ensure their intellectual property rights were adequately protected. The sudden growth brought investment and new players to the market, with many seeking to replicate existing products, which saw some businesses exposed without adequate legal protections and recourse.

The case of WaterRower (UK) Ltd v Liking Ltd (t/a Topiom) is illustrative of this scenario. Despite being a well-established brand in the marketplace, when a copycat entered the market, WaterRower found it challenging to protect its commercial interest with the limited IP protection it had in place.

This case also examines the scope of what can be protected as an ‘artistic work’ under English copyright law. It suggests fitness products can constitute ‘artistic craftsmanship’ and, therefore, be eligible for copyright protection.

Background

WaterRower UK Ltd (“WaterRower”) and Liking Ltd (t/a Topiom) (“Liking”) both produce distinctive water-resistance training apparatus, primarily manufactured from wood.

The subject of this case (the “Product”) was the eighth version of WaterRower’s original model. WaterRower had previously held a US patent which expired, the original model having been developed in the 1980s.

Liking began producing its model in 2019. WaterRower sued Liking for infringement of WaterRower’s copyright in the Product, alleging Liking’s model had been copied from its Product.

Liking admitted copying the Product but denied it could be protected by copyright. It applied for a strike out or summary judgement of WaterRower’s claim, arguing the Product could not be protected in copyright and, therefore, the claim had no prospect of success.

The legal framework for English copyright

English copyright legislation has a closed-list approach towards which kinds of products can be protected by copyright. These are ‘artistic works’, as listed in s.4(1) Copyright Designs and Patents Act 1988 which contains several clear types of works and a broader category of ‘artistic craftsmanship’.

English case law requires: (i) a conscious intention to produce art; (ii) real artistic or aesthetic quality; and (iii) a sufficient combination of craftsmanship and artistry. There has been difficulty determining what constitutes artistic craftsmanship rather than just craftsmanship. Eye appeal is probably required, along with something potentially beyond eye appeal, but it is not yet exactly clear what that means. The creator of the item’s artistic intentions or lack thereof is also a factor.

A broader pre-Brexit EU framework still applies in the UK. It requires two main elements: an original object and the expression of intellectual creation. The differing EU and English legal positions have not yet been reconciled.

The case and its relevance

The court rejected Liking’s application for a strike out or summary judgment of WaterRower’s claim. There was, at least, a prospect of the Product successfully being argued to be artistic craftsmanship and, therefore, eligible for English copyright protection.

An argument that the Product could not constitute artistic craftsmanship because of the technical constraints of resistance-training apparatus was rejected; within technical restrictions, there can still be scope for creative, artistic expression.

It is worth noting a product’s distinctive shape can be eligible to be registered as a UK trade mark. With trademark protection indefinite, provided it is renewed every 10 years, it can provide a powerful layer of additional protection rather than relying solely on copyright protection, as is the case with WaterRower in this situation.

It remains to be seen how the case will ultimately be decided. It is, however, important at this stage to consider what intellectual property protections you have in place for your own products and whether there is more to do now to protect them.

Key takeaways: copyright law in England and the ongoing EU legacy

  • Broad Understanding: Although English law has a closed-list approach regarding what can be protected by copyright, the impact of this case as well as existing English and EU case law means many items could be argued to be artistic craftsmanship and eligible for copyright protection.
  • Eye Appeal: If your product is striking to the eye, particularly if it differs from similar products, it is easier to argue that it is ‘artistic craftsmanship’ and, therefore, eligible for copyright protection.
  • Can you seek a Trade Mark?: Consider whether the 3D design of your product can be registered as a UK trade mark in addition to copyright protection.

Hamlins can help determine whether your product is likely to qualify for copyright and/or trade mark protection. We can also assist with UK, EU and international trade mark applications to adopt a global perspective for your brand protection strategy.

If you would like to find out how we might be able to help you, please contact Matthew Pryke.

Ripples in the market: how copycats can threaten inadequate intellectual property rights

Have a question? Contact Matthew

Have a question? Contact Matthew

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