Equisafety Limited v Woof Wear Limited

Copyright protection for a product is not established merely because the product is attractive, commercially successful or designed for a specialist market. Each alleged work must be assessed on its own facts.

Under the originality requirement, functional features dictated by technical requirements, the intended use or pre-existing forms are generally practical solutions rather than expressions of free and creative choices. The use of design tools, including CAD, is not itself a bar to protection. A work of artistic craftsmanship requires the statutory and originality requirements to be satisfied. Where the pleaded claim is limited to later modifications, earlier material cannot be relied on to establish the claim.

The claimant alleged copyright infringement in a high-visibility equestrian waistcoat, hat band and horse neck band. The claim originally included registered-design infringement and passing off, but those claims were summarily dismissed. The claimant was permitted to amend the claim to allege copyright in works of artistic craftsmanship under section 4(1)(c) of the Copyright, Designs and Patents Act 1988.

An order limited the products relied upon to specified later versions and excluded earlier versions. The issues were whether copyright subsisted in the products and whether the claimant owned it. The defendant accepted that sales would infringe if copyright subsisted.

1. Scope of the claim. The order prevented reliance on the earlier versions of the products. The claim therefore concerned only the features added to the specified later versions. The court also considered the entire products as an alternative basis.
2. Applicable principles. No general rule could be drawn from Response Clothing Limited v The Edinburgh Woollen Mill Limited that a particular category of product necessarily qualifies as a work of artistic craftsmanship. Each product must be assessed on its own facts. The court applied the originality requirement that the work must express the author’s free and creative choices. Features dictated by technical considerations, rules, constraints or the intended function are practical solutions and lack the necessary originality where they could have been expressed differently.
3. The use of tools, including CAD tools, is not a bar to protection. It does not, however, establish originality or artistic craftsmanship.
4. Application. The added waistcoat features were functional improvements, visibility measures or variations to a pre-existing item. The LED lights, changed material and increased length of the hat band addressed visibility and fit. The neck-band changes improved adjustment, performance or visibility. None amounted to an original work under the approach in Cofemel or to a work of artistic craftsmanship under the Act.
5. The same conclusion applied to the products as a whole. Their shape and features were dictated by horse riding, the shape of a riding hat or the anatomy of a horse. They were practical solutions which did not reflect the author’s personality and were not shown to be the work of both an artist and a craftsman.
6. The claim therefore failed because none of the products qualified as a work of artistic craftsmanship. Ownership was not decided. Alternatively, the claimant had not proved ownership, given uncertainty about the claimant’s continuity of ownership and the factories’ collaborative involvement in creating the products.

The claim was initially brought for registered-design infringement and passing off. Summary judgment was granted to the defendant on 5 April 2023. The claimant was permitted to amend the claim to allege copyright infringement in works of artistic craftsmanship. This judgment determined the amended claim at first instance.