Thursday, 30 January 2020

UK court applies CJEU Cofemel decision for the first time: "complete conformity" with EU law would preclude any requirement of aesthetic appeal

IPKat-approved jacquard fabric
Yesterday, the Intellectual Property Enterprise Court (IPEC, a specialist court which is part of the Business and Property Courts of the High Court of Justice of England and Wales) issued what appears to be the first UK decision tackling the implications of the judgment of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [see hereCofemel was also awarded the prestigious Kat-award 'Copyright Decision of the Year 2019'].


The claimant, Response, is a clothing company; the defendant, EWM, is a major retailer of clothing with about 400 stores in the UK.

Between 2009 and 2012, Response supplied EWM with ladies tops made of a jacquard fabric of a design referred to as a 'wave arrangement'. In 2012, Response attempted to raise the price of the tops, but EWM refused. The latter then provided a sample of Response's top or a swatch of its fabric to other garment suppliers, with an invitation to supply tops made from a similar fabric. A few companies got the order over time, and supplied garments made from jacquard fabric.

Response sued EWM for copyright infringement, claiming that protection would subsist in its wave arrangement as:
  • either a graphic work [see the definition at s4(2) CDPA], or
  • a work of artistic craftmanship [there is no statutory definition of this category]
NOTE: the UK has a closed list of protectable copyright subject-matter. This has traditionally meant that, in order to claim copyright, there should be not just an original work, but also a work of the 'right kind'. In the past, certain types of less conventional subject-matter - including the Star Wars Stormtrooper Helmet and the assembly of a scene - were refused protection, while for works like TV formats uncertainties whether copyright protection would be available have subsisted for a long time.

The fabric as a graphic work?

HHJ Hacon considered whether a fabric could be considered a graphic work, and noted that - whilst the list in s4(2) is not exhaustive - "[i]t does not follow that the definition is endlessly flexible." He found that a fabric would not satisfy the definition of graphic work: the relevant notion cannot be stretched to include a fabric, whether made on a loom or a knitting machine. 

The fabric as a work of artistic craftsmanship?

The judge thus turned to the consideration of whether copyright could subsist in the fabric as a work of artistic craftsmanship. To this end, he began by recalling the history of closed subject-matter categorization and the challenges that EU - or rather: CJEU-driven - harmonization have presented:
The Statute of Anne of 1709 was the world's first copyright statute, although there had been some earlier common law giving rights to authors. The Statute was concerned with literary copyright. Since then, because Parliament has incrementally afforded copyright protection to other types of work, the law has become structured in the form of successive categories of copyright work. In the 300 years since the Statute of Anne a claimant has been required to show that his work falls within at least one of the categories identified for protection in the copyright statute of the day. In recent years, there may have developed a tension between the way this is approached in the 1988 Act and EU copyright directives which have entered into force.
He then noted that, if the fabric at issue could not be considered a work of artistic craftsmanship, then "the design knitted into it is not protected by any other provision of the 1988 Act". This would be so because s1 CDPA is "clear": "a work is only capable of being a copyright work if it falls within one of the three descriptions set out under subsection (1)." 

The judge reviewed case law on works of artistic craftsmanship. He noted that, to determine whether the claimant's fabric qualifies as such, it would be necessary to determine whether the employee who created it "was 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." (Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216). He was of the view that the claimant's work could qualify for protection if this was the test. However, if the test was instead that of the House of Lords in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 (a case decided under the 1956 Copyright Act), the conclusion could be that the claimant's work may not qualify for protection.

At this point, HHJ Hacon turned to EU law and the interpretation given of it by the CJEU.

Applying Cofemel

Before considering Cofemel, the judge recalled the earlier CJEU decision in Levola Hengelo, C-310/17 [here], which clarified that the notion of 'work' is an autonomous concept of EU law. As such, it must receive uniform interpretation and application across the EU.

Turning to Cofemel, the judge recalled that in its decision "[t]he CJEU ruled that national law could not impose a requirement of aesthetic or artistic value." Hence, the judge stated,
I take the view that, subject to my being satisfied that the [claimant's fabric] is original in that its design was its author's own intellectual creation, that design is a work within the meaning of art.2 of Directive 2001/29. If no sufficiently similar design existed before it was created, it must have been the expression of the author's free and creative choices.
He continued noting that:
Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU
Clearly both a craftsman and an artist
The issue, the judge explained, was "not whether Directive 2001/29 has the effect of removing all the gaps there may be in copyright protection available from a court at first instance for 'works' within the meaning of art.2 of the Directive, but 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 [claimant's 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 [claimant's fabric] has aesthetic appeal".

The judge found that he did not have to go that far, since the fabric did in fact have aesthetic appeal. 

He concluded that the claimant's fabric was protected in accordance with the Bonz Group test and that copyright in it had been infringed.


The decision, as mentioned, appears to be the first time that a UK court considers the CJEU judgment in Cofemel. What is interesting about it is the acknowledgment that, indeed, full compliance with it would probably require granting protection to an original work, irrespective of its aesthetic appeal (and, as I have said a few times on this blog, irrespective of the category it belongs to).

In this particular instance, the judge felt he did not have to go that far, as the fabric did possess such appeal. However, even if this had not been the case, protection should have been acknowledged insofar as the subject-matter at issue qualified as an 'original' 'work' in the sense clarified by the CJEU.

As I wrote hereCofemel in itself did not arguably made any change to the law: it was merely a step in the consistent approach that CJEU case law has had to the requirements for copyright subsistence,  this being a process which began a little over 10 years ago with Infopaq, C-5/08

Overall, the Response decision employs a rather cautious language and confirms that, to be protected, a 'work' must (still) fall - at least formally - under one of the categories in s1 CDPA which - for the time being - must be interpreted in accordance with EU law.

However, after a decade of CJEU case law, it appears preferable and more correct to adopt a less formalistic approach. It is worth recalling that - as early as 2010 - Arnold J (as he then was), in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010), noted that:
In the light of a number of recent judgments of the CJEU, it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) of the Copyright, Designs and Patents 1988 and defined elsewhere in that Act. Nevertheless, it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention.
[Originally published on The IPKat on 30 January 2020] 

BREAKING: CJEU in Sky v SkyKick rules that a trade mark cannot be declared wholly or partially invalid on grounds of lack of clarity and precision of its specifications

It just a few months ago that this blog reported on the Opinion of Advocate General Tanchev in the important Sky v SkyKick, C-371/18 case.

A referral from the High Court of Justice of England and Wales made by Arnold J (as he then was), the Sky case is probably the most important referral in the EU trade mark field made over the past few years. It asked the Court of Justice of the European Union (CJEU) to clarify:
  • Whether an EU or national trade mark may be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark;
  • In case that answer to the question above is in the affirmative, whether a term like 'computer software' is too general to be considered 'sufficiently clear and precise';
  • Whether it is bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services;
  • If so, whether it is possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services;
  • Whether section 32(3) of the UK Trade Marks Act 1994 is compatible with the EU Trade Mark Directive and its predecessors.
This morning, the CJEU handed down its judgment, ruling as follows:
  • A EU or national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision;
  • A trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or 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
  • When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services
  • EU law does not preclude a provision of national law under which an applicant for registration of a trade mark must state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, in so far as the infringement of such an obligation does not constitute, in itself, a ground for invalidity of a trade mark already registered.
A more detailed analysis will follow shortly.

[Originally published on The IPKat on 29 January 2020]

Wednesday, 1 January 2020

A Kat's 2019 Copyright Awards

The end of 2019 is upon us - a new year (and decade) of IP developments is fast approaching. 

Although the IPKat Team is getting some deserved rest these days (it is well-known that Kats spend most of their time asleep), it is again the time of The IPKat's Copyright Awards!

As it has become tradition, a few (honorary = no cash) prizes are awarded each and every year in a number of categories. For previous editions, see hereherehereherehere, and here.

So, here we go!

Most important copyright decision

Cofemel: not just a judgment 
about jeans and T-shirts
As it has become the norm in the field of copyright, not only have courts become pivotal in defining the scope of protection but, in certain topical instances,  they have also contributed to shaping materially the very foundations of protection. 

In the case of the EU, the latter has been surely the case of the Court of Justice of the European Union (CJEU). Besides being my personal favourite court (and that is no secret), over the past few years the CJEU has become a cornerstone of EU copyright harmonization, and has defined such things as the scope of economic rights, exceptions and limitations, the residual freedom of Member States in areas harmonized at the EU level [see here for an article written a few years ago regarding Member States’ own freedom in the field of copyright]

Recently, the CJEU has been asked by a few national courts questions that are even more basic and – because of this – probably more crucial than the above. They can be summed up as follows: what is needed for copyright protection to arise in the first place?

Whilst a question like this is one that is posed in the first class of any copyright course, answering it has not proved straightforward at all (take note, students!).

Ten years ago, the CJEU issued its seminal decision in Infopaq [Kat-anniversary post here], in which it de fact harmonized the standard of originality beyond what EU legislature had done in relation to software, databases and photographs. 

Since then, the Court has further refined the concept of originality and provided hints that, indeed, the implications of this string of cases would go beyond the key concept of what is ‘original’ [see here for an article that I wrote a few years ago regarding the implications of CJEU case law for subject matter harmonization]. Recently, that this was indeed the case became apparent in Levola Hengelo [Katposts here], in which the CJEU defined the concept of ‘work’. 

This year, the overall process which began with Infopaq has culminated in the judgment in Cofemel [Katpost here]. The CJEU clarified that, indeed, for copyright protection to arise what is only required is (1) a work which (2) is sufficiently original. The judgment, which is not surprising, has immediate implications for copyright protection of designs, but goes well beyond that. 

It is the IPKat copyright decision of the year because, indeed, it makes it apparent once and - hopefully - for all how profound the harmonization carried by the CJEU has been.

Most important piece of legislation

There is no doubt here: it is the Directive 2017/790 on copyright in the Digital Single Market (DSM Directive) [Katposts here], which became law in mid-2019. Now, EU Member States have time until June 2021 to transpose it into their own legal systems. 

As far as the UK is concerned, the big question mark is not whether this soon to be former EU Member State will have to transpose it (under the current Brexit timeframe, it appears that such obligation will not exist), but whether it would wish to do so or, in any case, adopt domestic legislation that mirrors the content of the EU directive.

The Directive is important in that it shows: first, how controversial copyright policy- and law-making can be; second, how difficult it is to reconcile conflicting interests (including, of course business interests); and, finally, how copyright legislation can have an impact on very different fields and sectors.

The text of the directive is not always crystal-clear and this means that the story around it is far from over. It seems unavoidable that uncertainties will arise, in the first place, at the national transposition level (some EU Member States have already begun this process) and then at the application phase. Courts, including the CJEU, will likely be busy for years to come. 

Copyright person of the year

Lord Justice Arnold
This year’s copyright person is someone who: (1) has been pivotal to shaping – inter alia - domestic copyright law; (2) has had a profound and fruitful dialogue with the CJEU on a range of different IP issues over the years; and (3) has influenced other countries’ courts and approaches, particularly with regard to online enforcement.

It is Sir Richard Arnold, who – this year – has been elevated from the High Court to the Court of Appeal of England and Wales, thus becoming Lord Justice Arnold [Katpost here].

Since Newzbin 2 [the first copyright blocking injunction in the UK: Katpost herein 2011, Lord Justice Arnold has shaped the UK IP enforcement landscape. He probably holds the personal record as the individual judge who has referred the highest number of cases to the CJEU (not just in the field of copyright), and his decisions have been studied and have had a profound impact in other jurisdictions, both EU and non-EU ones.

The IPKat wishes to celebrate his much-deserved elevation and looks forward to reading and commenting on future judgments. 

Most important unresolved issue

The B-word is of course something that will continue shaping the IP debate in 2020. Whilst copyright is likely to be less affected - at least immediately - than registered rights, the departure of the UK from the EU and the future relationship between them will have fundamental implications also for this IP right.

Seen from an EU IP perspective, one of the biggest and yet least discussed issues will be the fact that UK courts will likely lose their power to refer cases to the CJEU (see currently s6 of the Withdrawal Act 2018). This will be a loss for all of the EU IP community, considering how attentive, active and engaged the courts of this country have been. 

Most important policy issue for 2020

At the EU level, it seems a fact that a discussion of intermediaries’ safe harbours is coming in 2020, under the umbrella of the Digital Services Act.

Although Article 17 of the DSM Directive already clarifies that online content sharing service providers that communicate to the public are ineligible for the hosting safe harbour in Article 14 of the E-commerce Directive in relation to copyright content, a broader discussion about safe harbours is now part of the conversation, at both the policy and judicial levels [in trade mark law, see the recent and very interesting Opinion of Advocate General Campos in Coty]

Something, ie safe harbours for online intermediaries, that appeared like an untouchable cornerstone of internet law is now increasingly being questioned and, clearly, the outcome of the debate will have profound implications also for copyright.

Most important copyright-protected work

Like last year, also this year we choose something in the artistic field: it is Maurizio Cattelan’s Comedian. A banana duct-taped to a wall, it was on sale in Miami for $120,000.

‘Hungry Artist’ even ate the original banana, but Cattelan’s representatives at the Galerie Perrotin explained that the artwork had not been destroyed since owners are actually allowed to replace the original banana. 

This put an end to discussions that some copyright lawyers had already started regarding potential violation of Cattelan’s VARA rights, Italian moral rights, etc, but did not conclude those concerning whether his Comedian is expressive enough to be a protectable work (is it just a great idea or is it an actual work?) ….

Cattelan is a volcanic artist, and his latest creation reminds us once and for all why we love copyright: brilliant material to work with, endless discussions, provocative stunts, and ... lots of fun.

Happy 2020 and, now, to the next decade of all-things-copyright!

[Originally published on The IPKat on 31 December 2019]