Intellectual Property Enterprise Court

Introduction

1.         The Claimant ("WaterRower Ltd") is a company registered in England & Wales (WATERROWER (UK) Limited). Its business is a designer and retailer of exercise equipment, including the water resistance rowing machines sold under the trade mark, WaterRower. The Defendant ("Liking") is a company incorporated under the law of Hong Kong (LIKING LIMITED). It retails water resistance rowing machines in the UK under the name TOPIOM (TOPIOM Models 1 and 2).

2.         WaterRower Ltd asserts various of its water resistance rowing machines are each works of artistic craftsmanship within s.4(1)(c) Copyright Designs and Patents Act 1988 (as amended) ("CDPA"). These are defined by WaterRower Ltd as embodied in the water resistance rowing machines shown in Annex 1 to the Amended Particulars of Claim dated 1 April 2022 ("APOC") and defined as the Works (Annex 1 to the APOC is reproduced as Annex 1 to this judgment and is referred to as Annex 1 throughout this decision).

3.         WaterRower Ltd's case is that Liking has copied the Works, reproduced a substantial part of those Works in its TOPIOM machines and has therefore infringed its copyright in the Works.

4.         Liking alleges no copyright subsists in the Works (as defined in WaterRower Ltd's APOC and additionally has a counterclaim for a declaration that no copyright subsists in the Works as they are not works of artistic craftsmanship. There is also a dispute regarding which articles are pleaded within the Works.

5.         The CMC Order of David Stone sitting as a Deputy High Court Judge dated 8 August 2023 lists the Issues for trial ("the List of Issues"):

Pleading issue

6.         Late in Liking's closing arguments there was discussion of a point regarding the 'first copyright work' of the series of WaterRower rowing machines relevant to this case. Liking argue "There is also no copyright claim for the prototypes of the WaterRower".  It alleges "...Mr Duke's mahogany prototype is not relied upon as a copyrighted work." and that therefore "any copyright in Version 1 could at most be the changes set out in Mr Duke's witness statement". Mr Duke is the asserted creator of the WaterRower design. Version 1 of the WaterRower machines is one of the models in dispute in the case. Liking does not accept the 'first copyright work' is a pleaded work within the case. This issue was first raised in the Liking's skeleton argument.

7.         There is no photographic image of the 'first copyright work'. The unchallenged evidence of Mr Duke  is that the 'first copyright work' ("the Prototype") is reproduced in 2-D drawings in the May 1987 patent application US No. 049616 ("the Patent Application"). Mr Duke's explains that, subsequent to the creation of the Prototype, the "final finished prototype", using mahogany wood was displayed at the Small Boat Show in Newport, Rhode Island - also in May 1987 ("the Boat Show Prototype"). The Boat Show Prototype had some adaptations from the Prototype. There was some mixing of terminology used in the case between the Prototype and the Boat Show Prototype. The Prototype is asserted by WaterRower Ltd as the 'first copyright work'.

8.         WaterRower Ltd's position in opening was that "The task for this court is to assess whether the WaterRower, as first created by Mr Duke, is a work of artistic craftsmanship.". WaterRower Ltd's, counsel, Ms Reid, confirmed she had further rebutted Liking's position on this pleading point during opening. Unfortunately, the transcript did not record that relevant statement as it was inaudible.

9.         There therefore appear to be two related points to consider in the context of whether the issue of any copyright subsisting in the Prototype is appropriately set out in the pleadings: (1) is the Prototype a Work, and (2) if the Prototype is not a Work, do the pleadings nevertheless suitably circumscribe the need for an assessment of whether copyright subsists in the Prototype. Where the case does not involve any assessment of the subsistence of copyright in the Prototype this could have a substantial impact on the claims relating to the later modified models of the WaterRower. Therefore, due to the potential importance of this argument and the lateness of it being expounded, the parties provided post-trial submissions on the issue.

Argument about the Prototype's status in the case

10.        Liking's position is that WaterRower Ltd did not take any issue on this pleading point in opening and its cross-examination at the trial was therefore prepared on that basis. Liking's counsel, Mr Moss, explained that had Liking known the "prototype being a copyright work" was being asserted by WaterRower Ltd the "cross-examination would have been different because I would have cross-examined Mr Duke much more heavily on the prototype that was in the Newport Boat Show.". It is not clear if Mr Moss meant the Boat Show Prototype or the Prototype here - I have assumed, despite his statement, that in the context of Liking's arguments on this point being about the first copyright work, that he likely meant the Prototype. On the evidence, the Prototype and Boat Show Prototype are very similar shapes (Liking acknowledge this - for example see the excerpt from the closing argument of Mr Moss in the following paragraph) and were created close together in time. There seems little relevance in any of the minor differences between the two designs. For the purpose of this case, the Boat Show Prototype and any differences with the Prototype are not asserted as creating a separate copyright work. The Prototype was the "first hand-made version of the Works" as described in paragraph 9 of the APOC and confirmed in its 24 February 2023 response to Liking's Request for Further information ("the RFI Response"). Liking's position is disputed by WaterRower Ltd.

11.        Liking's counsel, cross-examined Mr Duke on the genesis of the original drawings in the Patent Application and the development of the Prototype into later versions of the WaterRower rowing machine. Mr Moss explained in closing, "... we know the prototype, the picture that is in the patent is the one that was on show or very close to the one on show at the Newport boat show. That means that itself must also be a work of artistic craftsmanship, if they are right, in which case version 1 is not actually, version 1 is an iteration.". Liking also argue there were previous iterations of the Prototype, mainly based on earlier partial sketches prepared during its development, and that these have relevance to the question of the 'first copyright work' in the case. I accept WaterRower Ltd's evidence that the design of the Prototype was reproduced in the drawings of the Patent Application. It is not disputed that there was earlier developmental work, years of it, culminating in the Prototype. This point on earlier iterations was not debated with any real force. Based mainly on the explanation of Mr Duke, I accept WaterRower's position that the Prototype was the 'first creative work' in the series.

12.        Liking's position is a formal point that the Prototype is not a pleaded work in the case, is not covered by the issues to be determined as set out in the CMC Order and therefore, under CPR63.23(2), and, lacking any exceptional circumstances, WaterRower Ltd cannot place any reliance on the Prototype at trial. WaterRower Ltd has not made an application to the Court for any amendment to its pleadings on this point. Therefore, the question to be determined is whether the pleadings specify WaterRower Ltd's case with sufficient precision on this issue, such that the arguments did not come as a surprise to Liking at the trial.

13.        Prior to commencement of these proceedings, WaterRower Ltd provided draft Particulars of Claim ("draft POC") to Liking. These refer to Mr Duke's hand-drawn drawings in the Patent Application as the "original design", the Boat Show Prototype and a later version of the WaterRower design. The draft POC identify the earliest WaterRower design as the Prototype.

14.        Liking allege that subsequently the APOC changed such that the Prototype is no longer in issue in the case. A key point is therefore how the relevant products/works in the case are defined in the Statements of Case. WaterRower Ltd defines "Works" in the APOC at paragraph 3 as:

"The Claimant is the owner of UK copyright subsisting in the original artistic works embodied in the series of water resistance machines shown in Annex 1 (the "Works")."

15.        Annex 1 starts with a photograph of a rowing machine referenced as Series 1 Version 1. Annex 3 to the APOC (Annex 3 to the APOC is reproduced as Annex 2 to this judgment and is referenced as Annex 2 throughout this decision) sets out modifications to iterations of WaterRower Ltd's products - starting with Series 1 Version 1. WaterRower Ltd confirmed in the RFI Response that there are no photographs of the first hand-made version of the Works (the Prototype) and that the Boat Show Prototype is not the same as the Prototype.

16.        The APOC describes the Prototype in various ways, including: (1) the "first version of the rowing machine was created in the period 1985-1987 by John H. Duke" (paragraph 4), (2) "The initial design was created solely by Mr Duke and recorded in drawings created from approximately 1985 to 1987." and "The initial design was handmade by Mr Duke. It is a feature of the Works that they continue to be hand-made." (paragraph 7), (iii) "The first version of the Works was created and subsequently modified by Mr Duke .... In late 1987 Mr Duke presented his hand-made version at a public boat show and received his first orders." (paragraph 9).

17.        The List of Issues in the CMC Order of Deputy High Court Judge David Stone uses the language of the Statements of Case and refers to Works under both the headings of Copyright subsistence and infringement.

18.        Liking refers to the partial transcript of the CMC and the fact that Series 1 to 4 of the Works (as set out in Annex 1) were the only versions of the WaterRower discussed at the hearing, and not the Prototype. However, these discussions focused more on infringement than subsistence of copyright. Earlier in that transcript there was also discussion of an issue relating to the pictures in US4846460 ("the US Patent") and in the Patent Application. This related to an ancillary point (which was not progressed) regarding fraud on the US patent office. WaterRower Ltd's position on the drawings in the Patent Application prepared by Mr Duke also appears to have been discussed.

19.        The IPEC Guide (4.6(c)) states:

The issues in dispute. These should clearly emerge from the statements of case. The parties must draw up a list of issues which the court will have to resolve at trial. It is not necessary to list every sub-issue that may arise and this should not be done. The parties will be permitted to argue at trial any point which is both covered by the pleadings and which the opposing side should reasonably contemplate as falling within one or more of the listed issues. The trial judge may refuse to hear argument at trial on a point which does not satisfy those criteria.

20.        The reference in the List of Issues to subsistence of copyright in Version 1 (as defined in Annex 1) does, at first, seem at odds with the position that the Prototype is pleaded within the case. In the case, Version 1 is asserted as a reproduction embodying the copyright (intellectual creation) expressed and subsisting in the Prototype and, separately, attracting separate copyright protection resulting from its iterative changes. In context, it was an understandable choice of terminology for the CMC List of Issues based on the descriptions of the WaterRower products in Annex 1 and 2. I do not believe in the context of the dispute that the reference in the CMC List of Issues to Version 1 (not Series 1 (Version1) as expressed in Annex 1) was somehow intended to be exclusory. Whether the Prototype attracts copyright protection is a core issue contained within the Statements of Case, for example in paragraphs 4, 5, 7, 9, 10 of the APOC. It is quite possible the phrase used in the CMC List of Issues simply meant the first version of the work (rather than the defined term used) - that would be in-line with the other positions. Regardless, in the context, the expression was implicitly including the requirement of an assessment of any copyright subsisting in the Prototype. In order to determine any copyright subsisting in Version 1 or the later versions it is important to understand the nature of any earlier copyright subsisting in the Prototype.

21.        Subsequent to the CMC and the exchange of evidence, Liking's RFI dated 8 February 2023 asked a series of detailed questions about the "first hand-made version of the Works" (APOC paragraph 9) and the "finished prototype" referred to in paragraph 30 of the Statement of Mr Duke dated 25 January 2023. As noted, the RFI Response clarified the distinction between the Prototype and the Boat Show Prototype. Therefore, at this latter stage in the preparation of the case, after the evidence, Liking were asking, in the context of CPR Part 18, detailed questions relating to the earliest versions of the Works - the Prototype.

22.        WaterRower Ltd's position is that the Works are 3-D objects. Annex 1 contains 2-D images of a series of water resistance rowing machines which embody the original artistic works                                  where copyright subsists, not the Works themselves i.e. the images of the various versions set out in Annex 1 are not limiting in that there are earlier relevant versions (such as the Prototype and the Boat Show Prototype) which are not set out in Annex 1.

23.        Liking did not adopt WaterRower Ltd's pleaded definition of Works in its pleadings and instead used the term "WaterRower". Liking's pleadings did not separately define the scope of this term.  Paragraph 3(b) of the Re-Amended Reply and Defence to Counter-Claim dated 22 August 2022 ("RDCC") notes for the purpose of the case that WaterRower Ltd will assume Liking's reference to WaterRower is intended to be to the Works. This was not disputed. The Defence in paragraph 12.6 avers that, "The first designs of the WaterRower are those embodied in US Patent no. 4846460" and that the designs WaterRower Ltd pleads (the Works) differ from that disclosure (the drawings in the US Patent appear to be professional reproductions of the sketches in the Patent Application). In its RDCC WaterRower Ltd's case is that the Works differ from the images in the US Patent and that the images are 2-D compared with 3-D articles embodying the Works. What is relevant about the exchange is the preceding paragraph 12.5 in the Defence where Liking makes clear the WaterRower  could, "only be protectable in the form it was first designed. Any iterations would not amount to being a work of artistic craftsmanship". WaterRower Ltd's Reply dated 2 August 2022 takes the position that a Work that is a work of artistic craftsmanship (and explains the "Works were created as set out in the APOC." i.e. from the Prototype) can be modified (and the Works were modified into a number of iterations over the years) and can still benefit from copyright protection subsisting in the earlier Work.

24.        The scope of the term Works is also referred to in the APOC at paragraph 10; the "...assignments of the copyright in the Works..." was set out in various assignment documents annexed to the pleadings. These documents note in their internal definition of Works that this includes "... the original and all subsequent "WaterRower" rowing machines ... related drawings and related prototypes..." and attaches a non-limiting sets of images of versions of the WaterRower's in dispute (although not the drawings of the Prototype).

25.        Finally, Liking have counterclaimed for a declaration that no copyright subsists in the Works. It would be possible, but unusual, if such a declaration was not intended to cover all the relevant WaterRower designs where copyright may subsist.

Assessment

26.        The question is therefore, bearing in mind these points on the Statements of Case, the CMC, its Order and the clarifications in the Response to the RFI, did the Statements of Case suitably define the issues in dispute to include the Prototype as a Work or suitably circumscribe the need for an assessment of any copyright that subsists in the Prototype and thereby allow Liking access to relevant disclosure and evidence to be examined before the court?

27.        WaterRower Ltd explained there were no photographs of the Prototype. Paragraph 9 of the APOC confirms (rather than extends) that the Prototype (and the Boat Show Prototype) are part of the asserted Works. The Response to the RFI further clarifies this pleaded position. Although not directly relevant to the pleaded case, the Response to the RFI serves to demonstrate the issues of the first created Work were being actively considered by both parties through this detailed exchange of relevant information on the Prototype. However, at no point prior to Liking's skeleton argument was its position on this central issue raised. WaterRower Ltd responded to the point in the opening argument at trial. If Liking had really felt the Prototype was not in the case, that was the time to deal with the point, prior to the evidence being tested.

28.        The purpose of Statements of Case are such that the overriding objective is properly served and the case - and the relevant issues therein - are heard fairly. Liking notes it would have prepared its cross-examination differently if it had appreciated the subsistence of copyright in the Prototype was part of the case. On the basis of the above analysis, I am not convinced by this or that Liking suffered any prejudice in the circumstances.

29.        The issue of the creation of the Prototype and whether copyright subsists in it as a work of artistic craftsmanship (and by extension its reproduction in later versions, such as Series 1 Version 1 in Annex 1) was at the forefront of consideration of both parties during the preparation for this case and during the trial. Drawing these points together and bearing in mind the overarching nature of the claim being brought, the definition of Works in WaterRower Ltd's Statement of Case is not limited by the pictures of embodiments in the referenced APOC Annex 1 or in the List of Issues and includes the Prototype. Alternatively, if I am wrong and the Prototype is not a Work, then the issue of any copyright that may subsist in the Prototype was suitably set out in the Statements of Case.  WaterRower Ltd do not claim any copyright in the Boat Show Prototype and therefore I have not made any finding on whether it may have been included within the definition for Works. The parties could both have ensured the pleadings and the List of Issues were better expressed, but in the overall context of the pleaded exchanges, the meaning was clear enough. The subsequent evidence and further exchanges between the parties re-enforces this position.

30.        If I am wrong that the Statements of Case suitably circumscribe the Prototype as a Work in the case or that they do not satisfactorily set out the issue of any copyright that may subsist in the Prototype, in the alternative, based on the noted extensive contextual information, the evidence, submissions, cross-examination and timing on this central point, then this is an example of a case where it is just to allow such a non-pleaded issue to be determined. The issue was suitably set out in the evidence, disclosure and related RFI exchanges and by way of cross-examination and argument regarding the Prototype and Boat show Prototype at the hearing.

31.        The Prototype is therefore a work asserted by WaterRower Ltd as a Work defined in its APOC and its Annexes or the issue of any copyright subsisting in the Prototype was one that was suitably circumscribed in the Statements of Case to be determined.

Witnesses

32.        WaterRower Ltd relied on three witnesses of fact. Mr Duke, the original creator of the WaterRower product, came across as a witness trying to assist the Court. He answered promptly and fairly. This was clearly a subject he was passionate about and he provided helpful detail. Mr Caccia was a director/shareholder of WaterRower Ltd for a period of time. His evidence was somewhat distanced from the subject matter at times and was not always factual in nature. In general, his evidence was given in a fair manner, but was of limited assistance. Mr King is currently a director and shareholder of WaterRower Ltd. His views strayed into opinion. In some of his answers he appeared, perhaps unsurprisingly, influenced by his role at WaterRower Ltd. I have considered this in the context of the evidence provided. Otherwise he came across as a reasonable witness.

33.        Liking relied on two witnesses. Ms Pearse is Liking's legal representative in the case. WaterRower Ltd raised an issue relating to Ms Pearse's evidence dated 26 January 2023 and the limited extent to which that evidence was factual in nature. This was mainly resolved with Liking providing a redacted version of that evidence prior to cross-examination. Much of Ms Pearse's evidence was a vehicle for introducing documents into the case. Ms Pearse gave evidence in a fair manner, albeit it was of modest relevance and I have placed little weight on it. Concerns were also raised by WaterRower Ltd's counsel regarding certain exhibits where Ms Pearse was not able to confirm they related to products in the proceedings. There did appear to be a discrepancy, but it does not impact the evidence in any material way. Mr Fu is the Vice President and Research and Development Director of Liking. His role was limited by the fact it was a previous employee who had been involved in the relevant history and had left Liking. Mr Fu's evidence was provided with the benefit of a translator. His evidence was also of modest relevance. It was provided in an open and reasonable manner.

34.        There were a number of other preliminary matters raised at the start of the trial. Upon hearing these, including the Claimant's Application dated 8 March 2023 for relief from sanction under CPR 3.9(1) due to late filing of its witness evidence, the outcomes were that; the requested relief was ordered, Liking could rely on Mr Fu's statement as evidence at trial and Liking would not rely on their Amended Defence and Counterclaim to the extent it was evidence in the case.

The WaterRower rowing machines and their creation

35.        The following history was set out in the evidence and unless otherwise noted was unchallenged. Mr Duke was actively involved in competitive rowing from a young age, starting at secondary school. During that time he enjoyed sculling (a scull is a narrow single person rowing boat with two oars) on a large pond in Long Island, USA. At University he continued rowing at Yale College and in the summer of 1975 was selected for the US lightweight rowing team. Later, attending Massachusetts Institute of Technology ("MIT"), Mr Duke completed a Master's degree in Oceans Systems Management. Although his course was mainly about international shipping, it also had courses in naval architecture.

36.        Soon after graduating from Yale, Mr Duke built his own 'experimental' scull. Working from information provided by a company called Gougeon Brothers, it was built from a "cold moulded system of laminated thin veneer wood" with an epoxy. Mr Duke explains he used this experimental scull but that it had too much longitudinal flex and was abandoned.

37.        After this exercise (and before attending MIT) in 1978 Mr Duke worked for Composite Engineering (also known as Van Dusen Racing Boats). He worked building carbon fibre sculls and learned how these boats were "put together".  After a period of time working in bulk commodity shipping Mr Duke decided to try his "hand at being an inventor" and in 1984 set up a company which later became known as the Providence Design Company ("PDC"). Mr Duke explains he narrowed in on the idea he could "design a rowing machine that was better than the 'original' 'Model A' Concept II" (shown in the evidence as a metal monorail rowing machine with a vertical flywheel).  After some experimentation working on his own in his basement, in 1985 he started work on a rowing machine with a water flywheel, which later became the first WaterRower, the Prototype.

38.        Mr Duke's evidence on his inspiration and design ethos for what became the Prototype and later versions of the WaterRower was also largely unchallenged. It stems from his experience in competitive rowing in "beautiful cedar shells down the Squamscott River under cool blue New Hampshire skies.". His view is that rowing wooden single sculls is different to the larger fours and eights (referring to the number of rowers in the boat), "You are even more connected to the water because they are so narrow - even narrower than your own legs. You don't even see the boat directly below you. So your body feels like it is flying over the water.".

39.        Other aspects stressed by Mr Duke are: (1) the sound of water "rushing under the hull", particularly in cedar boats made by George Pocock, which were "just beautiful", and (2) the feel of the water through the oar or scull. Mr Duke explained the impact of his experience rowing in "graceful and light" wooden shells - including sculls (this feeling was referred to by him as 'kinaesthetics'). This sound and feel of the water led Mr Duke to create the water flywheel used in the WaterRower as a "non-mechanical experience.".

40.        WaterRower Ltd and Liking rely on a number of published articles about WaterRower products in support of their asserted positions in the case, for example regarding Mr Duke's intention as regards the nature of the creation of the Prototype.

41.        WaterRower Ltd relies on articles including in the Wall Street Journal, a number of UK newspapers and specialist health and rowing journals going back to 1995. The excerpts chosen emphasise the relevant publication's views of the WaterRower product. They focus on the WaterRower being "stylish", "a beautiful object", and an "attractive piece of furniture".

42.        In addition, WaterRower Ltd rely on two examples of how they say the WaterRower product has been recognised as an iconic design by institutions/stores whose opinions are held in high regard.

1.       MOMA (Museum of Modern Art) Design Store in New York City, USA where it describes Mr Duke's design process and resulting product as;

"He wanted to make an indoor machine that felt as much like a real rowing as possible, with a focus on aesthetics. It took him two years to get the design right, moving past failed ideas such as a flipper in the tank instead of a clutch. What began as a series of doodles at his desk turned into a sculptural piece of exercise equipment that upends expectations in two ways: by bringing water indoors, and by looking elegant and artful when stored."

2.       The Conran Shop described the WaterRower as:

"Classic WaterRower

Description

The original series Classic WaterRower is exquisitely handcrafted in the United States of America from sustainably sourced solid American black walnut.

As with all natural timbers, there will always be a degree of variation in the colour of the wood, but the eco-friendly premium hardwood frame ensures longevity and quality of performance. In the final stages of construction, the design is hand finished with Danish oil to give it a warm tone and deep lustre.

The WaterRower has been designed to set it apart from other fitness equipment, featuring an attention to design refinement unseen in other exercise apparatus. As a self-regulating piece of apparatus, the harder you stroke, the more resistance is created, and the WaterRower exercises up to 84% of the body's muscle mass. Designed to stimulate both the physiological dynamics of rowing on water, the WaterRower's classic design also enjoys an extremely smooth and gentle glide, when in motion. This motion is silent, with only the soothing sound of moving water to motivate your moves.

The WaterRower perfectly combines high-quality materials, innovative design with a handsome aesthetic, making for a luxurious addition to a home gym or living area as the compact frame stores easily when not in use."

43.        There is no dispute on the accuracy of these excerpts. The WaterRower series has been in the MOMA Design Store for 16 years. Its inclusion is said to be "curator approved". In cross- examination Mr Caccia explained (for the first time) that a WaterRower had been installed in the Design Museum in London, separately to being sold in a Conran shop. The limited information on this fact would not impact my assessment in this case, but in any event, the lack of context or support for this statement means it adds little additional weight to the issues.  

44.        Liking relies on articles closely contemporaneous with the creation of the earliest WaterRower including:

Rowing In Style - New York Times 24 April 1989

"rrSensory (sic) simulation keeps an exerciser motivated and alleviates boredom, according to John Duke, inventor of the WaterRower. The only sound the cherrywood rowing machine makes, Duke said, is "the soothing rush of water keeping time with the natural rhythm of your stroke".

St Louis Post Dispatch - 5 November 1989

"'My main goal was to create a fitness product that is truly a pleasure to use and that gives people the motivation for sticking with their exercise program.' Duke says.".

Boston Phoenix - 26 January-1 February 1990 issue

"Inventor John Duke, a former member of the US Olympic Rowing Team, says that his machine, "a harmonious marriage of elegant and practical engineering," offers an alternative to "aesthetically unappealing metal exercisers."

45.        Liking also rely on a video entitled "Inventors  - News Network" Episode 1 1993. This includes an interview with Mr Duke on the development of the WaterRower. It supports much of his evidence on his process arriving at the first WaterRower product, the Prototype. Mr Duke explains he had been working for three years on "all kinds of different rowing machines". He describes the resulting WaterRower as one that had a stainless steel blade that rotated in a sealed unit filled with water, the water was spun acting like a flywheel, an advantage was that water has a "tendency to absorb shock" such that the motion feels smoother to muscles and joints, the balance between the inertial and viscous forces when rowing give a feeling of "gliding between strokes", that this sound, feel and visual gives a sense of connection you do not get in a purely mechanical resistance and creates the "same kind of rhythm you get by accelerating a shell and having it glide between strokes, that's what all of the tweaking was about.".  

Identifying the Works

The Prototype

46.        The process leading to the Prototype was conducted by Mr Duke involving sketches, testing parts and 'learning as he went' - culminating in a finished Prototype. Mr Duke's sketches in the Patent Application are the earliest surviving drawings of the Prototype. Figures 1, 2 and 3 of the Patent Application are reproduced below.

47.        Mr Duke further described the Prototype (the individual elements of the description are generally self-explanatory, the table and annotated diagrams in Annex 2 assist with orientation) explaining aspects of the development of design as one where he strove "... to create an aspect of structural purity in the WaterRower in the "form follows function" approach to design, one thing led to another; The main rowing force was to the Forward Strap Pulley. Firstly, the Pulley Shaft had to be held down to the forward ends of the twin Main Rails. My answer was two parallel vertical boards that I called the Forward Risers, which also enclosed the Pulleys. Secondly, I felt that the Pulley Shaft had to be held forward away from the top of the Footboard. Here my answer was two parallel horizontal boards over the fly wheel Tank. I later called these the "Top Deck" and "Bottom Deck", and they also supported the Paddle Shaft and Guide Rollers - which I regarded as very important. What I developed in this way was a repeating motif of parallel structural elements in different planes and scales: parallel Main Rails, parallel Forward Risers, then parallel Top and Bottom Decks. Lastly, this refrain was repeated again in smaller scale in the parallel Seat Risers. l feel this repeating pattern of parallel structural elements is fundamental to the design identity of the WaterRower as a whole."

48.        Liking takes the position that the court does not know what the early prototypes looked like. However, Mr Duke's evidence that the contemporaneous drawings reproduced in the Patent Application represent the Prototype was not seriously contested. Although the drawings do not come with precise measurements it was clearly designed, as were the later models, for use by a human. This gives some scale to the drawing. I have proceeded on the basis that this was the first completed WaterRower product, that its shape and structure was as described in his witness statement and as drawn in the Patent Application, and that Mr Duke was the sole creator.

Figures 1, 2 and 3 of the Patent Application

49.        The Boat Show Prototype was prepared and displayed at the Small Boat Show in Newport, Rhode Island in May 1987. Mr Duke notes distinctions between the Prototype and Boat Show Prototype were due to manufacturability, for example the thermoform moulds of the 22 inch polycarbonate Tank halves were improved and mahogany was used as the wood due to its stability, but that the frame design was "largely the same" and contained the "repeating motif of parallel structural elements".

50.        Mr Duke explains his design was intended to create an aspect of "structural purity" bearing in mind the "Shaker furniture" style of "well-made objects with sparse elegance that could be used in everyday life". This noted guiding aesthetic led Mr Duke to a "clean design ... with lots of plain edges without fancy ornamentation ... in the structure it follows the "form follows function" school of design". The shape of the frame was also consciously designed bearing in mind the loading forces required in order to "drive" the rower. The flywheel tank needed to be round but the cross section was made largely rectangular, "to reprise the rectangular cross section of the wood parts" and the seat was "stitched as you would find in the seats of a fine sports car."

Other modifications to the different WaterRower versions

52.        Subsequent to the Prototype, the WaterRower rowing machines have gone through a considerable number of iterative changes. Mr Duke explains the "distinctions between the 'boat show' prototype and the present WaterRowers were largely manufacturability changes". The types of changes noted include: eliminating glued joints, creating modular parts with bolted connections for shipping, and devising and moving a pair of trapezoidal 'Key Blocks'. Following the Small Boat Show in 1987, Mr Duke formed a corporation named WaterRower Inc with other partners interested in launching the business. Initially this was Mr Duke and Ralph Beckman (also an engineer /architect) and later Henry Sharpe.

53.        Amongst these various changes to the WaterRower products, WaterRower Ltd's counsel drew attention specifically to the Key Blocks (see below an early technical drawing of a Key Block prepared by Mr Duke) and their re-positioning from Series 2 onwards. The two Key Blocks are said to complete the critical juncture at the top of the Footboard to connect the "Footboard to both the Top Deck and Bottom Deck" eliminating the need for several glued joints and preventing shear between the Top and Bottom Deck. The main visual point is that the positioning of these trapezoidal Key Blocks means the footplate was moved from being flush with the top of the Main Rails which the seat moves along (see this below in a picture of a Series 1 Version 1 model) to being tucked down between the Main Rails - putting the users heels between these Main Rails (see below in a picture of a Series 2 model). Mr Duke's evidence is that this "opened up the volume" as a result, widening the distance between the Main Rails (noted as an increase in width between the rails from 8.5" to 10.25") and that this change "was an important aesthetic improvement that went beyond manufacturability". Mr Duke's view is that regardless of this change between Series 1 and 2, "Both ways it was narrow like the gunnels of a single scull". As a consequence of the change Mr Duke also noted the flared footplate in the Prototype and Series 1 Version 1 was changed to a footplate with parallel edges.

Technical drawing of a Key Block

54.        In cross-examination Mr Duke described his responsibility for the "important movement of the key blocks from the forward end of the top and bottom deck ... back to the rear end under the forward riser. That was my choice, and I think was critical to the identity of the whole machine, because that is what established the repeating motif of the parallel structural elements. Before the key block was moved, the whole front end looked like a solid mass and did not have the beautiful juncture of the top and bottom decks parallel structural elements meeting the parallel elements of the forward risers perpendicular to each other."

55.        Responding to this answer, Mr Moss asked Mr Duke in relation to the Patent Application/US Patent:

"Q.       The top and bottom were parallel in the patent, correct?

 A.        Correct. But the other difference was the bottom deck were parallel in a horizontal plane but the vertical planes were not parallel, because the bottom deck was a V-shape, because the foot board was glued with epoxy directly to the bottom deck in what is called a finger joint. So that the end of the bottom deck was as wide as the top end of the foot board. It was by moving the key blocks back that I was able to narrow the ... bottom deck because it no longer had the same connection to the foot board."

Does copyright subsist in the Works?

65.        WaterRower Ltd claim each of the Works is protected by copyright as work of artistic craftsmanship under section 4(1)(c) of the CDPA. Whether the Works qualify as works of artistic craftsmanship is therefore the key issue in the case. This question is a complex one. I therefore address the issue of the relevant law in more detail than usual.

The Law

66.        The relevant sections of the current CDPA for this case are:

S.1 of the CDPA

"1. Copyright and copyright works.

(1) Copyright is a 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.

(3) Copyright does not subsist in a work unless the requirements of this Part with respect to qualification for copyright protection are met (see section 153 and the provisions referred to there)."

67.        Under the CDPA, only a work listed in section 1(1) is able to attract copyright protection. Artistic works are protected by copyright under subsection 1(a). Section 4(1) of the CDPA sets out different categories of artistic works referenced in section (1)(a).

"4. Artistic works.

(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."

68.        The term "artistic craftsmanship" has no statutory definition. A key question that needs to be grappled with in this case is how to assess what is a work of artistic craftsmanship in accordance with s.4(1)(c) CDPA.

Legislative background

69.        The meaning of "a work of artistic craftsmanship" and the limits of its application involve a particularly difficult tension which the parties say exists between the operation of the CDPA on this issue and EU law. The parties therefore directed me to a number of helpful background documents, including texts setting out the history and development of the law and the application of copyright to "applied art" - such as works used for industrial purposes or ordinary utilitarian objects with artistic elements.

70.        The following excerpt from International Copyright and Neighbouring Rights, The Berne Convention and Beyond (Third Edition) Ricketson and Ginsburg pp457-458 ("Ricketson and Ginsburg") serves as a useful starting point which encapsulates the relevant history relating to the underlying issues:

"However, it seemed anomalous that many applications of artistic works in the industrial sphere should be denied copyright protection, where they quite obviously displayed artistic elements. If the painter of an indifferent landscape or portrait received copyright protection, why should not the artist-craftsman who designed and made ornate and aesthetically pleasing table or dinner service? In France, the view came increasingly to be held during the course of the nineteenth century that the makers of such objects were entitled to copyright protection under the Law of 1793, and likewise that artists did not lose the protection which they enjoyed in relation to their 'pure' works by reason of the fact that they turned these to an industrial use, for instance, by using them as designs for utilitarian objects. In other words, there occurred a total assimilation of all works of art, however they were manifested or applied, to full copyright protection. So far as the separate designs laws were concerned, these continue to exist, but the possibility of cumulative protection under these as well as the copyright law was accepted (the former, of course, was of far less duration). This development did not take place immediately. Indeed, it took nearly a century before French law fully recognised the doctrine that has become known as 'unity of art'. In the course of this development, French courts and legislators experimented with a range of different criteria that would serve to distinguish artistic works from subject matter which was industrial and 'non—artistic' in character. These included the method of reproduction of the work, the purpose behind its creation, the predominant purpose of the work, the status of the creator, and its artistic value. Each was found unsatisfactory, because exceptions could always be envisaged which made the criterion in question unworkable or uncertain. They depend too much on the making of subjective and often arbitrary judgements. For example, utilitarian purposes may exist equally with artistic purposes, or maybe mixed together in differing degrees. How are such matters to be ascertained and weighed against each other? On the other hand, work may be intended to have a purely utilitarian purpose but still have clear artistic value, and vice versa. Again, 'pure' artistic works may still be made by processes that are 'industrial', while manufacturers of commonplace articles may still be artists, and vice versa. It was against this background of uncertainty that French law moved towards the adoption of the doctrine of 'unity of art', which has been explained by one distinguished commentator as follows:

The theory of 'unity of art' has its basis in the refusal to make any distinction between 'pure art' and 'industrial art'. It extends protection insured by copyright law to all creations of form, even the most modest, those which, on the 'lower' frontier of applied art, depend on what is called 'industrial aesthetics'. It finds its explanation - and, we think, its justification - in the idea that an adequate distinction is impossible between 'major art' and 'minor art', all criteria to which one may have recourse to this effect being subject to the accusation of subjectivity or being powerless, in other ways, to solve the borderline cases.

In adopting this view, the French were taking the most extreme position. Although its all embracing nature may be criticized, it is logical and avoids the manifold difficulties that arise when an attempt is made to fix a boundary beyond which works of industrial art will not be protected. This was the case in many other European countries, including Italy and Germany, where their respective laws sought to exclude the more 'industrial' kinds of work from protection. Even more reluctant to protect such works was the UK which maintained a far more rigid separation, and after 1911 denied copyright protection altogether in the case of an artistic work, which was 'industrially applied' (defined to mean the multiplication of more than fifty objects to which the work was applied). On the other hand, the UK law after that date did accord protection to three-dimensional objects which were entitled 'works of artistic craftsmanship'. The origins of this new subcategory of artistic work were to be found in the Arts and Crafts movement of the late nineteenth century and the influence of such figures as William Morris and John Ruskin. The scope of the protection conferred, however, was uncertain, and give rise to considerable judicial difficulty in determining the degree of artistic merit that was required for protection to be accorded to such works, particularly in light of the fact that, as regards other kinds of artistic work, British law expressly excluded any requirement of artistic merit. ... In consequence, it is unsurprising that no reference to 'works of applied art' or 'works of decorative art' was to be found in the definition of 'literary and artistic work' adopted in article 4(1) of the Berne Act 1886."

71.        The International Convention for the Protection of Literary and Artistic works signed at Berne on 9 September 1886 ("the Berne Convention") first introduced the term "applied art" in 1908, under its Berlin Revision. The words "[w]orks of art applied to industrial purposes, shall be protected so far as the domestic legislation of each country allows" were inserted into Article 2(4).

72.        The Brussels Revision of the Berne Convention in 1948 incorporated the words "works of applied art" into Article 2(1) of protected works - dropping the reference to industry due to an objection by the UK that this was too restrictive as it was possible to envisage the application of artistic works in domains other than industry. Article 2(4) became Article 2(5):

"It shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. ..."

73.        The UK and the EU are signatories to the agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS") through their agreement establishing the World Trade Organisation signed in 1994.

74.        Article 9(1) of TRIPS provides that signatories to that agreement must "comply with articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto.". The UK and other EU Member States are also directly signatories of the Berne Convention.

75.        Article 2(1) of the Berne Convention as amended on 28 September 1979 provides that:

"(1) The expression "literary and artistic works" shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as ... works of applied art ..."

76.        The wording of Article 2(7) of the Stockholm Convention on 14 July 1967 (which remains in the latest version of the Berne Convention) sets out the discretion available to the UK to determine the extent of the application of its laws to works of applied art:

"2(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works."

77.        Liking's position is that Article 2(7) of the Berne Convention means it has been left to Convention countries, including the UK, to determine at a national level how they protect works of applied art at the interface of copyright and design protection. Therefore, this court has a discretion whether to follow the relevant EU legislation and CJEU case law. WaterRower Ltd's position is that the relevant EU legislation and case law is binding. I therefore first consider whether this discretion exists and can be applied by this court.

The Law

Is the UK bound by EU legislation such that it no longer has discretion to apply Article 2(7) of the Berne Convention?

UK Law

89.        The term "work of artistic craftsmanship" was first introduced in the 1911 Copyright Act, prior to the general use of gender neutral drafting. I have therefore used this expression as set out in the CDPA.

90.        In October 1952 the Report of the Copyright Committee ("the Gregory Report") considered the interaction of artistic copyright and industrial designs. "With a view to minimising the overlap between artistic and industrial copyright caused by the widening extent of protection given to artistic copyright" the 1911 Copyright Act excluded protection of copyright for works capable of being registered as a design and mass production of that design. The Gregory Report also considered the definition  of 'artistic works' in the context of 'works of artistic craftsmanship'. It did so in the context of the existing law where copyright protection was not available for works capable of being protected by industrial designs. Its focus was on "works of craftsmen working in many media (silversmiths, potters, woodworkers, hand-embroiderers and many others)" and that these works should attract copyright protection. Its conclusion at [260] was that it was not "practicable to draft a statutory definition equally applicable to each of the whole range of activities and of the varieties of materials used. Faced with these almost endless possibilities we feel that, as now, the decision in doubtful cases must be left to the Courts to decide on the facts before them, and we recommend that while the protection given to "works of artistic craftsmanship" should remain, the term should not be defined in the Act.".

91.        The 1956 Copyright Act ("the 1956 Act") maintained the wording of the 1911 Copyright Act at section 3(1) protecting works of artistic craftsmanship:

"Copyright in artistic works

3(1) In this Act "artistic work " means a work of any of the following descriptions, that is to say,—

(a) the following, irrespective of artistic quality, namely paintings, sculptures, drawings, engravings and photographs;

(b) works of architecture, being either buildings or models for buildings;

(c) works of artistic craftsmanship, not falling within either of the preceding paragraphs."

It also reduced the limitations of the 1911 Act on overlapping rights in design and copyright.

92.      The leading case on the meaning of section 4(1)(c) of the CDPA is the House of Lords case George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 ("Hensher"). Their Lordships consideration of the meaning of works of artistic craftsmanship in this case comes with an important caveat. The case was decided on the basis of a concession that the works in question were ones of craftsmanship - it was only the artistic element of the statutory phrase which was disputed.

EU law

137.      In addition to being bound by the House of Lords in Hensher, this court is bound by the retained EU case law, including relevant CJEU decisions which interpret the InfoSoc Directive as implemented by the CDPA in the UK.  Liking argue the CJEU's decision in Cofemel does not require any consideration of aesthetic visual effect and therefore of artistic merit, while Hensher requires more than eye appeal (more than visual appeal, that it must be artistic). Its position is there is a conflict of the laws of the UK and EU in the application of such protection.

Conformity between EU and UK law

Are any of the Works original within the meaning of the InfoSoc Directive?

The Prototype

160.      Although the evidence shows there were a number of early partially completed prototypes, I have accepted the evidence that the Prototype is the first relevant completed article.

161.      A rowing machine used by a human will to some extent require a shape that allows for the biomechanical movement of the human body to operate the machine. The precise ergonomics of the interaction of the human with the rowing machine is what can dictate the shape or part of it - for example the need for a rolling seat in a system where the human pulls on the handle and the line connected to the handle and thereby transfers forces to the footplate to allow the body to transfer energy from the leg movement. Mr Duke accepts these aspects of the WaterRower were 'copied' from the design of a scull.

162.      The Prototype is technically restricted in certain aspects of its design to allow for the rowing machine to function mechanically. In other words, those aspects of its shape help achieve the technical result and were taken into account in choosing the shape of the product.

163.      In this context I also considered the impact Mr Duke's US patent on these technical design choices, the Prototype shape and any remaining freedom of expression. Liking argued the US Patent teaches technical requirements that show how Mr Duke arrived at the shape and features of the Prototype i.e. in order to help him come up with the solution to the technical problem presented in the US Patent. There was no expert evidence on the US Patent (and in this case such evidence would have been unlikely to assist). To the extent the evidence on what the US Patent taught went to any relevant issues it deals primarily with how the water in the sealed container (tank) is turned around by the paddle/blade to simulate in-water rowing. This does present some restrictions on how that invention may be adopted, but even those are not entirely without flexibility. The US Patent also describes other aspects of a rowing machine. As noted, the diagrams in the Patent Application are those representing the Prototype. The argument goes that the other aspects shown in the US Patent demonstrate the elements needed to design the WaterRower rowing machine. For example, the sliding seat and the footrest - you cannot use the tank to simulate in-water rowing unless you have the seat, wheels on the seat, rails to move along and footrest to push against that allow you to simulate rowing. I do not agree that the teaching of a particular shape in the US Patent  dictated the form of the claimed shape in the Prototype. For example, it did not explain the need for any required materials and how these should be constructed. The technical constraints dictated by the US Patent mainly relate to the sealed tank and the motion of the rotating paddle/blade.

164.      Regarding the other technical constraints on the shape of the Prototype based on its functional requirements, Liking's counsel complained WaterRower Ltd have not set out precisely what intellectual creation in the shape of the Prototype is being claimed to attract copyright (and the other iterations). If, for example, it was just the seat, then the argument on functional restrictions is clearly more relevant. WaterRower Ltd's position is that copyright subsists in the intellectual creation of the overall shape of the Prototype. I agree that, in the circumstances, trying to break down the assessment into component elements making up the Prototype would be an impermissible dissection of parts of the claimed overall expression.

165.      The evidence supports the position that Mr Duke is the sole author of the Prototype. Liking does not dispute this position. Mr Duke is open about his inspiration in creating the Prototype, including the 'beautiful' sculling boats and the end goal of developing a rowing machine that is 'better' than the noted Concept II Model A. Mr Duke did not copy the design for the Prototype. Any discussion that he copied the design from, for example, the overall shape of wooden shell sculls was necessarily a matter of interpretation not laborious replication.

166.      Mr Duke has provided extensive evidence of the reasons he made the various creative and functional choices in his design of the Prototype back in 1987. These reasons included the experience Mr Duke was trying to re-create, like the sound and feel of rowing. These subjective experiences are not protectable. It is only the expression of the layout of the design that is relevant. His objectives in that expression are largely supported by the evidence from both parties, that the Prototype (or the genus of the WaterRower - as the articles discussing the various WaterRower's are dealing with a variety of models) is accepted by both consumers of the WaterRower, specialist and general news publications and design focused retail as being aesthetically pleasing. Also, Liking "doesn't deny that the WaterRower looks nice.".

167.      In creating the Prototype, Mr Duke made choices in the layout of the Upper Deck and Lower Deck, the (relatively narrow) width of the Main Rails, the materials used (wood), the shape and finish of those materials (hand sanding/rounded edges/oiling), the carefully thought through relationships of the angles, spacings and joins relating the various component parts of the shape - including the Upper and Lower Decks to create "a repeating motif of parallel structural elements in different planes and scales".

168.      Some of these choices made in creating the Prototype were functional constraints needed for the end use. There are a number of alternate ways the Prototype rowing machine could have been designed; each would have been subject to the noted functional constraints. The shape of the Prototype is primarily influenced by its requirement to operate as a rowing machine but its shape is not "solely" dictated by its technical function. There is  room for Mr Duke to reflect his personality in the subject matter combining these striking visual elements as an expression of his free and creative choices. Mr Duke's Prototype is therefore original in that the design is his own intellectual creation as a work within the meaning of the InfoSoc Directive.

169.      Although Liking accept that separate IP rights can be cumulative they make a policy point that in assessing any subsistence of copyright in this context the impact on the carefully calibrated levels of protection between IP rights should be considered. In this case, no design right was registered by WaterRower Ltd, although another company in its group, WaterRower Swiss GmbH did register a design in the UK which looks like a version of the WaterRower. The appropriate assessment for assessing the originality of a work is explained in Cofemel and Brompton. There is nothing in Liking's arguments that impacts this position.

Other modifications to the different WaterRower versions

170.      The various modifications to the different Works claimed from Series 1 to Series 4 (Versions 1-8) are set out in Annex 2 to this judgment. WaterRower Ltd claim that each of these iterative Works from Series 1 to 4 reproduce the intellectual creation of the Prototype. Separately, it is claimed the combination of changes in each of these separate Versions 1-8 attracts its own copyright protection. I have therefore considered the evidence in relation to each of these iterations and set out below some of the salient features.

171.      In Mr King's view the WaterRower "hasn't really altered that much Series 1 Version 1 and Series 4 Versions 8. Of the changes which were made, the main visible changes (i.e. not the internal parts or electronics or gears) were actually made between Series 1 Version 1 and the Series 2 (Versions 2, 3 and 4). ... I do not regard the overall visual design of the Series 2 machines and what is now sold (Series 4 Version 8) as having changed very much).".

172.      Mr Duke's evidence largely concurs: "The distinctions between the 'boat show' prototype and present WaterRowers were largely the manufacturability changes described ..." and that some of the changes actually moved away from that aesthetic - such as the move from the stitching of the seat that "you would find in the seats of a fine sports car" to an artificial leather design "but I understood the change was necessary for manufacturability".  

173.      Other than the changes resulting from the movement of the Key Blocks which I deal with below, the iterative adaptations of the different versions of the Works appear designed to improve manufacturability, efficient assembly and supply issues. The details of these are best understood from the table related tabulated diagram in Annex 2, and also the explanation set out above under the section "Identifying the Works/Other modifications to the different WaterRower versions" [52]-[64]. I accept some of these changes could have been expressed in other, equally workmanlike, practical alternative designs. For example, even with the fine tolerances required in the product, the width of the seat wheels can be altered, the radius of the water tank corner can be increased from 1 inch to 2 inches and the material and fixings of the heal rests can be changed. However, these changes are all firmly in the camp of functional constraints or practical alternatives. Taken as a whole, the set of changes for each iterative version are technically constrained and mundane in nature, arising from the workmanlike, practical decisions behind the development of these adaptations. They do not reflect the personality of its author as an expression of their free and creative choices.

174.      I accept the design choices for the Prototype and the design choices and changes arising out of the movement of the Key Blocks in Series 2 were solely down to Mr Duke. However, there were other contributors to the various iterative changes in the Works set out in Annex 2 including; Ralph Beckman, Henry Sharpe, Alex Caccia, and Peter King. On the basis of my conclusion that each of the Works in Series 1 to 4 / Versions 1 to 8 are not original works as set out in Cofemel and Brompton and in accordance with the InfoSoc Directive, it is not necessary to go on and consider any impact of the situation where there were multiple authors of some of the noted changes. If my decision had included these further adaptations in these models as being original, on the evidence it appears there would have been sufficient nexus between these other contributors.

175.      The movement of the Key Blocks in Series 2 was an alternate practical solution to the positioning of the feet for the rower from above the Main Rails to between the Main Rails. The explanation from Mr Duke is that this change resulted in the creation of the memorable shape of a WaterRower "because that is what established the repeating motif of the parallel structural elements". However, as set out earlier in this judgment, the resultant change of the vertically parallel planes of the Top and Bottom Decks was present in Series 1. WaterRower Ltd only claims the iterative changes to the Series 2 model where the Key Blocks were moved to the new position. The assessment here excludes those elements claimed in the shapes from the earlier versions. Where the resulting changes improved the feeling of the user of being in a scull rowing on water, these changes are subjective, are not expressed in the article and cannot therefore be protected. A consequence of moving "the Key Blocks system was the new bolted on Footboard had to extend further up, all the way to the Top Deck, so this required a new shape for the Footboard.". Although not determinative, the 'consequential' and 'required' technically constraining nature of these noted changes reduces the ability of the author to reflect his personality in that subject matter.

176.      The functional constraints in the adaptations in the Series 2 Model, including the movement of the Key Blocks, limited the creative decision making available to Mr Duke. It did leave some elements of choice and design for Mr Duke. For example, due to the new position, the footboard went from 'v-shaped' to having parallel edges. However, in part this was dictated by the location of the footboard being partly between the parallel Main Rails. Overall, the remaining freedom of the author to express his creative choices was modest. Taking all of these points into account, overall these changes do not reflect the personality of its author, as an expression of his free and creative choices and are not original within the meaning set out in Cofemel and Brompton and the InfoSoc Directive.

Are any of the Works works of artistic craftsmanship within the meaning of s.4(1)(c) CDPA?

177.      On the basis of my assessment that only the Prototype is an original work within the meaning of the InfoSoc Directive, I need to consider whether it would also qualify as a work of artistic craftsmanship. As the other Works are not original there is no need to consider whether they would qualify as works of artistic craftsmanship but, in the context of the developing nature of this area of law, I have briefly also set out my assessment on their positions.

The Prototype

178.      Mr Duke's evidence evokes an idyllic impression of a graceful wooden scull being rowed. He compares the feeling of the slightly unstable, narrow scull shell, the noise of the rushing water and the graceful movements of the rower in sync with the boat with the feeling he wanted a user of the Prototype, and later model WaterRower's, to experience. I have no doubt that Mr Duke has a history and connection with this type of rowing or that he decided to develop a better rowing machine and that he did this mainly by hand, on his own, as the creator of the Prototype.

179.      Mr Duke does not have a particular background in any trade associated with craftsmanship. His evidence demonstrated significant effort and skill in the creation of the early development of Prototype. This included the choice of materials, the wooden frame, the nature of the joints, the shapes chosen for the different parts of the Prototype frame and the hand finish - for example sanding edges to create a "smooth and blended" corner.  In the circumstances, this demonstrates "a manifestation of pride in sound workmanship- a rejection of the shoddy, the meretricious, the facile.".

180.      Liking correctly point out the design of the WaterRower products, including the Prototype, have considerable technical functional constraints in the choice of shape - such as the rolling seat, the need for some form of footboard for the human user to exert force against and the distances involved in the dimensions of the device to fit with the biomechanics of a human using the machine. However, there remains considerable room for Mr Duke to make choices in the design. For example, the narrow proximity of the Main Rails and the choice of a repeating horizontal and vertical parallel motif in different planes and scales. I also accept that the Prototype was created in a careful manner to preserve and enhance the beauty of the natural wood used in the design.

181.      The evidence supports the argument - including from the articles in general newspapers and commercial journals - that a significant section of the public found the WaterRower design aesthetically pleasing. The presence of the WaterRower models in commercial design store's - including MOMA - indicates the high regard for the quality of the design.

182.      However, in my view, these useful contemporaneous documents do not give the impression the subject matter was the result of a mind with a desire "to produce something of beauty which would have an artistic justification for its own existence" (Hensher Lord Kilbrandon p98C)  or "was an artist in that he used their creative ability to produce something which has aesthetic appeal." (Bonz). The early video interview of Mr Duke on the "Inventor - News Network" supports the view that WaterRower was a commercial development, chosen from a number of rowing machine ideas, as the design most likely to achieve Mr Duke's business goals of creating a commercially successful rowing machine with a design of aspirational sensory impact. I do not accept Mr Duke's evidence that his intention (there could of course have been more than one intention) was to create a work that went further, one where the craftsmanship in its creation was artistic.

183.      The carefully hand-crafted, visually striking Prototype appears to have achieved Mr Duke's goals of creating a rowing machine with a sensory and visual experience that was different to other rowing machines at that time. These, along with the other factors that have been discussed are relevant, but none are determinative in this assessment.

184.      I have not been addressed on any binding ratio in Hensher or other English authority that prevents me from assessing all these factors in my assessment when construing the statutory phrase.

185.      In the circumstances, construing the statutory phrase, given its "ordinary and natural meaning" as a composite question, and considering the multi-factorial nature of the evidence, I have decided the Prototype is not a work of artistic craftsmanship within the meaning of s.4(1)(c) CDPA.

186.      The cited authority relied upon in Response and other authorities noted was Bonz. In the circumstances, with due respect for the noted line of authorities, I have also considered in the alternative whether the Prototype would satisfy the Bonz summary of what constitutes a work of artistic craftsmanship.

187.      With some noted clarifications (each of which I have dealt with in this judgment) HHJ Hacon adopted Tipping J's summary of what constitutes a work of artistic craftsmanship. As set out in Response at [36] it is necessary to consider if Mr Duke was both: "(a) a craftsman in that he made the Prototype in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he used their creative ability to produce something which has aesthetic appeal.". In Hensher Lord Morris explained,  "... proper interpretation of the words of the statute does not involve the formulation of any test or the application of any particular formula. Indeed, to lay down any such test or formula is to add to what is contained in the Act and I can see no justification for doing that for doing so.". The challenges which come with approaching s.4(1)(c) CDPA do not improve by deriving a further framework for that approach. In the Bonz Test craftsmanship and artistry are stated as separate requirements, albeit as conjunctive requirements. The rephrased test requires the artist to "produce something which has aesthetic appeal". In this context I understand that such aesthetic appeal is not to be limited to "eye appeal". Although formulated differently in the context of the facts in Hensher, Lord Simon indicated, "It is therefore misleading to ask, first, is this a work produced by a craftsman, and secondly, is it a work of art? It is more pertinent to ask, is this the work of one who was in this respect an artist-craftsman?".

188.      Mr Duke can be considered a craftsman in the context of his creation of the Prototype for the reasons explained. I have found that Mr Duke used his skills to create the Prototype and that it has aesthetic appeal. However, Tipping J explained, in coming to his summary view, that "for a work to be one of artistic craftsmanship it must, in my judgment, have some artistic quality.". I have determined that in his creation of the Prototype, Mr Duke did not have the character of an artist craftsman. I accept the arguments are somewhat circular. This reflects the difficulty in formulating any additional test beyond the application of the statutory phrase. Therefore, in my view,  the work would also not have been one of artistic craftsmanship following Bonz.

189.      I was addressed on other authorities, including Burge, but, although useful context, in my view these do not take the approach any further forwards. The correct approach is to address the evidence with an objective assessment and apply the statutory wording, as set out above.

Other modifications to the different WaterRower versions

190.      On the basis the Works claimed by WaterRower Ltd, other than the Prototype, were not original, there should be no need to separately consider whether they are works of artistic craftsmanship under s.4(1)(c) CDPA. As HHJ Hacon noted in Response, "if [the article] was not original, copyright does not subsist anyway and the meaning of 'artistic craftsmanship' is academic.". However, in the context of the issues in this case it is  prudent to provide my views on the alternative, where I am not right on my primary view.

191.      The evidence and analysis above at [173] supports Liking's position that the amendments made to the Works set out in Annex 2 to this judgment were undertaken for the purpose of improvements to manufacturing and the commerciality of the WaterRower products. For example, the change in number (from 3 to 4) of the Rail bumper feet and their spacings, the width of the Seat wheels or the Handle rest becoming injection moulded. These are just examples. It is important not to perform an over-meticulous dissection of the individual features rather than considering the overall changes for each claimed model. The nature of the changes are workmanlike, practical alternative adaptations. The purpose of the changes is also predominantly of a practical nature improving the manufacturability and commerciality of the WaterRower. Many of the changes are based on cost and efficiency. I accept Liking's position. The changes in each of the different models claimed as Works in Versions 1-8/Series 1-4 (and subject to the comments on the Key Blocks change below) are not works of artistic craftsmanship. This view would be the same whether assessed on an objective multi-factorial assessment construing the composite statutory phrase or on the basis of the  Bonz Test.

192.      The movement of the Key Blocks and the resulting changes to the expression of the Series 2 model allow for more creative freedom in the choices. However, for the same reasons discussed in [175] - [176], including the points noted in the evidence regarding the change in emphasis to manufacturing and construction efficiency and cost from the creation of the Prototype, the movement of the Key Block in Series 2 (and the other associated modifications noted in Annex 2) is not a work of artistic craftsmanship. My view is the same applying Bonz.

193.      Therefore regarding Issues 1 & 2 - copyright subsistence - none of the Works are works of artistic craftsmanship.

Ownership

194.      WaterRower Ltd's claim to ownership in the copyright is based on a number of assignments set out in Annex 4 to the APOC and is unchallenged. WaterRower Ltd is the owner of any copyright subsisting in the Works (including the Prototype) in this case.

Infringement

195.      Although I have determined no copyright subsists in the Works as works of artistic craftsmanship, for the same reasons noted previously, I have provided some views on the issue of infringement. On the basis I did not accept any of the Works other than the Prototype was original I have restricted these comments to the issue of indirect infringement based on the Prototype.

Copying

196.      Liking accept that the TOPIOM models 1 and 2 are copies of Series 4 Version 8 model of the WaterRower. This is subject to there being copyright subsisting. It also accepts the models have been sold and/or offered for sale in the United Kingdom.

If the Series 4 Version 8 model reproduces the Prototype is there indirect copying?

197.      As well as copying, the partial transcript of the CMC in this trial bundle indicates that Liking may accept infringement if the Series 4 WaterRower is a work of artistic craftsmanship and copyright subsists. However, the issue still appeared to be in dispute at trial. I have therefore made the following comments.

198.      The changes made between the Prototype and the Series 4 Version 8 model are mainly detailed in Annex 2. There were also some referenced changes between the Prototype and the Boat Show Prototype, see [49] where Mr Duke confirms they were "largely the same". Over the different series there are a considerable in number of changes but they have a limited impact on the overall visual appearance. The most significant change is in Series 2 with the movement of the Key Blocks. The main visual changes of note are the lowering of the footplate with the movement of the Key Blocks and the introduction of the vertically parallel Top and Bottom Decks.

199.      The same evidence relating to the contemporaneous review articles and, for example, the placement of a WaterRower in the MOMA Design shop over the last 16 years is relevant to the Series 4 Version 8. The manufacturing and commercially motivated changes through the various models does not appear to have impacted on the views that the WaterRower remains aesthetically pleasing. The Series 4 Version 8 model has not become dictated by technical function in a way the Prototype was not. It effectively has the same overall shape and expression as the Prototype: the layout of the Upper Deck and Lower Deck, the (relatively narrow) width of the Main Rails, the materials used (wood), the look of the finish of those materials, the carefully thought through relationships of the angles, spacings and joins relating the various component parts of the shape - including the Upper and Lower Decks to create "a repeating motif of parallel structural elements in different planes and scales". The increased distance between the Main Rails does not detract from this overall image. Considering the overall shape of the entire work, the expression of the Series 4 Version 8 WaterRower model is original as a reproduction of intellectual creation of the Prototype. Annexes 4 and 5 to the APOC provide a detailed comparison between the WaterRower Series 4 Version 8 model and each of the TOPIOM models 1 and 2. The TOPIOM Models 1 and 2 and the WaterRower Series 4 Version 8 are virtually identical. There are some minor differences but there is no question they reproduce a substantial part of the Series 4 Version 8 model, retaining Mr Duke's intellectual creation of the Prototype.

200.      As regards knowledge for indirect infringement, HHJ Hacon sets out the relevant law in Response at [89]-[93] and [102]. Liking appear to take the point that, as it did not appreciate the Works attracted copyright (for which, on my view, they were right), if copyright had subsisted, this would have been a defence even where they were aware of other relevant facts (including, as the disclosure and evidence of Mr Fu shows, assessing the other intellectual property rights in the WaterRower products - such as trade mark and patent rights). If it was taking that point, it would not succeed.

201.      The evidence of Mr Fu and related disclosure establishes that Liking was "involved in the specification of the design and the packaging of the product" and was well aware of the WaterRower products in the context of the development and marketing of its TOPIOM models. In cross-examination it was confirmed that the disclosure documents recorded one of the manufacturers Liking worked with acknowledging it was adopting a counterfeit of the WaterRower - not via any independent creation. Mr Fu also accepted the product (the TOPIOM models) made by another manufacturer, chosen later, was different to the WaterRower counterfeit proposed by the other manufacturer but that it was "not a huge difference". Considering the evidence and the facts known to Liking, the similarity of the TOPIOM models 1 and 2 would have been obvious. Viewed objectively, Liking would have arrived at the belief the TOPIOM Models 1 and 2 were infringing copies (or a reasonable person would believe that dealing in the copies would be in breach of the copyright held by another party). In any event, if there was any question over this knowledge, it would have been dealt with by the letter before action from WaterRower Ltd on 29 November 2019.

202.      On the basis of my decision that the Works do not attract copyright the answers to Issue 3 are not relevant. However, if I am wrong and the Prototype was a work of artistic craftsmanship the answers to Issue 3 are: (a) Yes, Series 4 Version 8 was copied, (b) Yes, a substantial part of the Prototype was reproduced in TOPIOM models 1 and 2, and (c) Yes, Liking had the relevant knowledge.

Counterclaim

203.      Liking has a counterclaim for a declaration of non-infringement on the basis that no copyright subsists in the Works. The requested declaration is in the form "That the WaterRower is not a work of artistic craftsmanship.". As explained, the parties' pleadings use different definitions for the Works in dispute. Here 'WaterRower' means the Works. On the basis of my assessment that the Prototype is part of the Works, it would be included in any declaration. My decision is that the Works are not works of artistic craftsmanship. I can therefore make the requested declaration.

Intervening decisions

208.      Subsequent to the preparation of this judgment there have been two interposing decisions in quick succession which relate to aspects of this case. The parties have provided brief post-trial submissions.

Conclusion

215.      Addressing the Issues before this court;

Issues 1 and 2 - no copyright subsists in the Works (including the Prototype) as works of artistic craftsmanship.

Issue 3 - As a consequence of the outcome of Issues 1 and 2 Liking did not infringe the Works.  The claim is dismissed.

Issue 4 - The counterclaim is dismissed.

216.      Finally, in this legally complex case, I would like to thank the parties and their representatives for their assistance, in particular with additional submissions on the above noted recent cases. I also apologise to the parties for the delay in providing this judgment which has been due to various circumstances. I do not propose to allow such delay to occur again.

217.      I direct that time for seeking permission to appeal shall not run until after the hearing on the form of Order (or the making of such Order if it is agreed).

Annex 1

WaterRower Series I (Version 1)

1987-1992

WaterRower Series 2 USA 1992 - 1996 (Version 2)

WaterRower Series 2 UK 1992 - 1995 (Version 4)

WaterRower Series 2, E3 (Version 3)

Circa 1994 - 1996

WaterRower Series 2 UK (Version 4) 

1995 - 1998

WaterRower Series 3 (Version 5)

1996 - 2000

WaterRower Series 3 UK (Version 6)

1998 - 2000

WaterRower Series 3 Worldwide (Version 7)

2000 - 2004

WaterRower Series 4 (Version 8)

Circa 2004 - present

Annex 2

WaterRower Series 1 - (Version 1)

WaterRower Series 4 (Version 8)