Equisafety Limited v Woof Wear Limited

25 September 2024

[2024] EWHC 2478 (IPEC)

High Court

A company sued another for copying its horse-riding safety gear. The judge decided the gear wasn't creative enough to be protected by copyright because its design was mostly about safety features, not artistic expression. The judge also wasn't sure who actually owned the designs in the first place.

Key Facts

•Equisafety Limited (Claimant) sued Woof Wear Limited (Defendant) for copyright infringement of three equestrian high-visibility products: a waistcoat, hat band, and neck band.
•The claim initially included registered design infringement and passing off, but summary judgment was granted to the Defendant on those claims.
•The claim was amended to focus on copyright infringement of the products as works of artistic craftsmanship under s. 4(1)(c) of the Copyright, Designs and Patents Act 1988.
•The Defendant conceded infringement if copyright subsisted in the products.
•The trial focused on whether copyright subsisted in the Claimant's products and whether the Claimant owned the copyright.
•The court considered only amendments made to the products in 2019 and 2020, excluding earlier versions per a court order.
•Ms. Fletcher, the Claimant's Managing Director, testified, highlighting the design features and creation process.
•Mr. Felton, the Defendant's Managing Director, testified, but his evidence was not crucial due to the Defendant's concession.

Legal Principles

Definition of 'artistic work' under s. 4(1)(c) CDPA and the interpretation of 'work of artistic craftsmanship'.

Case law interpreting 'work of artistic craftsmanship', considering the balance between artistic and craft elements, and the impact of technical constraints.

Response Clothing Limited v The Edinburgh Woollen Mill Limited [2020] EWHC 148, George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64, Lucasfilm Ltd v Ainsworth [2011] UKSC 39, Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216, Vermaat (t/a Cotton Productions) v Boncrest Ltd (No.1) [2001] FSR 5

EU law's influence on copyright protection, specifically the requirement of originality as the author's own intellectual creation and the need for sufficient precision and objectivity in expression.

Retained EU Law (Revocation and Reform) Act 2023, Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569, Case C-683/17 Cofemel — Sociedade de Vestuário SA v G-Star Raw CV [ EU:C:2019:721 ], Case C-310/17 Levola Hengelo BV v Smilde Foods BV (EU:C:2018:899), Brompton Bicycle Brompton Bicycle Ltd v Chedech/Get2Get C-833/18

The principle of originality in copyright, particularly concerning whether additions to pre-existing works are sufficiently original to warrant protection.

Biotrading and Financing Oy v Biohit Limited [1996] FSR 393, Harper v National Coal Board [1974] QB 614

Outcomes

The claim for copyright infringement failed.

The court found that none of the Claimant's products (waistcoat, hat band, neck band) qualified as works of artistic craftsmanship under the CDPA, even considering only the additions made in 2019-2020. The alterations were deemed functional improvements rather than expressions of artistic creativity. The court also considered the entire items and found the designs were dictated by functionality rather than artistic expression.

The court did not determine ownership of copyright.

This question became moot due to the finding that no copyright subsisted in the works. However, even assuming the existence of relevant rights, the Claimant failed to convincingly establish ownership, given the ambiguous circumstances of the design work and collaborations with manufacturers.

Equisafety Limited v Woof Wear Limited

Key Facts

Legal Principles

Outcomes

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