In a decision likely to attract attention from those interested in the application of copyright law to design-related cases, the IPEC dismissed a copyright infringement claim concerning high-visibility equestrian products. The court ruled that the items did not qualify as works of artistic craftsmanship and that the claimant had also failed to establish ownership. 

The court considered that the products were merely functional improvements, such as new fabrics, logos, and LED lights, rather than artistic features. The court found that these modifications, aimed at enhancing visibility, were practical and did not reflect the author’s personality or meet the criteria for artistic craftsmanship. 

Facts

On 25 September 2024, Mr Ian Karet, sitting as a judge of the Chancery Division, delivered his judgment in Equisafety Limited v Woof Wear Limited. 

The dispute arose after Woof Wear exhibited three allegedly infringing products at the “Beta International 2022” trade fair, resulting in Equisafety bringing an action for infringement of registered designs and passing off. However, as Woof Wear was granted summary judgment in April 2023, Equisafety then amended its claim to focus on copyright infringement, with the products assessed as “works of artistic craftmanship” under s4(1)(c) of the Copyright, Designs and Patent Act (“CDPA”) 1988. 

Which items were in dispute?

The judge stated that only the amendments made to the products in 2019 and 2020 were under consideration (Biotrading and Financing Oy v Biohit Limited [1996] FSR 393 followed). This restriction effectively limited Equisafety’s ability to rely on earlier versions of the designs. However, it became apparent during the trial that the founder and Managing Director of Equisafety, Ms Fletcher, (who appeared in person) may not have fully grasped the significance of this limitation as her submissions at trial related to the items as whole. Consequently, the judge also entertained the possibility that earlier versions of the designs were also in dispute. 

The products comprised a rider’s waistcoat, an elasticated band for a riding hat and a neck band for a horse, all intended to enhance the visibility of both riders and their horses: 

Waistcoat front and back, showing Velcro tabs designed in 2020.

Head band designed in 2019.

Neck band designed in 2019.

Issues

The judge had to determine the following key issues:

• whether copyright subsists in the claimant’s products; and
• whether the claimant owns the copyright in them.

Does copyright subsist in the claimant’s products?

1. The judge first summarised the complex UK case law on the meaning of “a work of artistic craftsmanship” including Response Clothing Limited v The Edinburgh Woollen Mill Limited [2020] EWHC 148. This case in turn referred to the New Zealand decision in Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216, which refined the definition. There the court said that for a work to be regarded as a work of artistic craftsmanship, it must be the product of both a craftsman (someone who makes something skilfully) and an artist (someone who produces something with creative ability and aesthetic appeal). 
2. Turning to the position under of EU law, the judge referred to the line of CJEU case law, including Cofemel – Sociedade de Vestuário SA v G-Star Raw VC (C-683/17). This stated that for work to be eligible for copyright protection, it must be the author’s own intellectual creation and identifiable with sufficient precision and objectivity. Reference was also made to Brompton Bicycle Ltd v Chedech/Get2Get (C-833/18) in which the CJEU ruled that a product’s design, even if influenced by technical factors, may still qualify for copyright protection if it reflects the author’s personality and free creative choices. 
3. The judge then applied both the test for artistic craftsmanship under the CDPA and the test for originality under EU law to the facts. He determined that the amendments to the products were merely functional improvements rather than creative design choices, and therefore did not meet the criteria for copyright protection under either UK or EU law (if was to be applied in a different way). For instance, the addition of the reflective piping and fabric upgrades to the waistcoat were seen as practical solutions dictated by the need for visibility, rather than expressions of skill or creativity. The same reasoning applied to other features, such as the LED lights added to the hat band and adjustments to the neck band.
4. Looking at the items as a whole, the judge concluded that they were not original nor were they works of an artist and craftsman. The design choices were largely driven by practical considerations rather than creative expression and therefore failed to meet the standards required for copyright protection.

Does the claimant own copyright?

The other key issue was whether Equisafety actually owned the rights to the products. The judge considered that, even if the products had qualified for copyright protection, Ms Fletcher’s evidence regarding ownership was ambiguous. She had accepted in evidence that the works had been created prior to her affiliation with Equisafety, and that there had been a reorganisation of her business that did not involve the company.  

The judge also noted that the replacement of design features, such as modification of the neck band, resulted from a collaboration between Ms Fletcher and a factory with which she worked. He found it was unclear whether Ms Fletcher created such works on her own or that any rights that might belong to the factory had been transferred to Equisafety.

Key takeaways

The judge ultimately found that the clothing did not qualify as artistic craftsmanship under current UK and EU law. Equisafety had also not proved ownership of the rights associated with the works, leaving ambiguity around who, if anyone, had the legal claim to copyright in this case. 

The case serves as a reminder of the complexities inherent in asserting copyright infringement and for satisfying the current test for works of artistic craftsmanship. Designers need to show that their products are more than functional and more than a “practical solution” to an issue. 

Postscript

This judgment preceded by a few weeks the keenly awaited decision in the WaterRower case. See our article Muddying the waters of copyright – a rapid reaction to the IPEC decision which sees the sinking of the WaterRower’s claims for copyright protection - Bird & Bird.