Cofemel decision applied for the first time by UK court
In Response Clothing v The Edinburgh Woollen Mill the IPEC has issued its first ruling following the CJEU’s decision in Cofemel, finding that “complete conformity” with EU law would preclude any requirement of aesthetic appeal.
Why is Cofemel relevant?
The Cofemel decision indicated that the single requirement for copyright protection to exist is “originality” under the InfoSoc Directive (2001/29/EC) (ISD), and any aesthetic considerations should not be taken into account.
There has been considerable debate about whether the UK’s closed list of categories of works which can benefit from copyright protection and the concepts of “artistic works” and “works of artistic craftsmanship” under section 4 Copyright Designs and Patents Act 1988 (“CDPA”) are incompatible with EU law.
This decision is the first time that this apparent tension has been dealt with by a UK court.
Between 2009 and 2012 Response Clothing (Response) supplied ladies’ tops to Edinburgh Woollen Mill (EWM). The distinctive feature of the tops was a “wave arrangement” design which consisted of multiple lines woven into a jacquard fabric in a wave pattern. Importantly, the pattern was not applied to the surface of the fabric, such as by painting, but was incorporated within the weave.
Following an attempt in 2012 by Response to increase their prices, EWM supplied a sample of Response’s top to other garment suppliers with an invitation to supply tops made from a similar fabric. A few companies supplied garments made from the jacquard fabric.
Response brought a claim for copyright infringement against EWM, alleging that copyright subsisted in its wave arrangement design, on the basis that either it was a graphic work or a work of artistic craftsmanship.
Can copyright subsist in the claimant’s fabric?
HHJ Hacon held that the definition of graphic work under s.4(2) CDPA cannot be stretched to include a fabric, whether made on a loom or a knitting machine. Therefore Response’s case rested on the fabric being a work of artistic craftsmanship.
The judge reviewed case law on works of artistic craftsmanship and noted that for the claimant’s fabric to qualify, the author must have been both a craftsman and an artist (Bonz Group (Pty) Ltd v Cooke  3 N.Z.L.R. 216). HHJ Hacon said that the fabric required skill and creativity to devise, so fell within this Bonz Group definition.
HJH Hacon then turned to EU law and the Cofemel decision.
The judge recalled in that decision that “national law could not impose a requirement of aesthetic or artistic value.” HHJ Hacon took the view that subject to his satisfaction that the claimant’s fabric was original in that it was the “author’s own intellectual creation”, that design is a work within the meaning of Article 2 of the ISD - “if no sufficiently similar design existed before it was created, it must have been the expression of the author’s free and creative choices.”
The issue was “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 Wave 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 Wave Fabric has aesthetic appeal and thus would be inconsistent with the definition of work of artistic craftsmanship stated in Bonz Group.”
HHJ Hacon concluded that the claimant’s fabric was entitled to copyright protection and that copyright in it had been infringed. Since the wave pattern had aesthetic appeal, HHJ Hacon avoided needing to rule on the tension between Cofemel’s exclusion of aesthetic appeal and UK law to date.
This judgment is a clear indication that the practical impact of the Cofemel decision is to exclude any requirement for a work to have aesthetic appeal. It follows that English law, as it has been interpreted to date, is incompatible with EU law in this respect. Given the UK’s obligation to follow EU law for the duration of the transition period, time will tell post-transition how this issue will be tested going forwards.
Case details at a glance
Jurisdiction: England and Wales
Decision level: IPEC
Parties: Response Clothing Limited (claimant) and The Edinburgh Woollen Mill Limited (defendant)
Date: 29 January 2020
Citation:  EWHC 148 (IPEC)
 EWHC 148 (IPEC)
Read the full decision here.