Shazam -v- Only Fools The Dining Experience – the far-reaching decision that impacts 3D original product and garment designs
In June 2022 a decision of the specialist Intellectual Property Enterprise Court was handed down which could potentially result in a material impact on those operating in the retail and wholesale markets.
The extended protection by the court afforded by copyright to 3D original designs
This recent decision amounts to a significant development under English law as regards the protection which might be afforded to product designs.
In the past, the designs of 3D products or garments have typically been protected by design right. Since 2019, and the case of Cofemel -v- G-Star Raw (Case C-683/17), there was a material development in this position following the most senior European court (the Court of Justice of the European Union or the CJEU) clarifying the basis for the assessment of whether a design can also be protected as a copyright work.
Image credits: www.sgcr.pt and www.aippi.org
Under UK law, a 3D design can be protected as a ’work of artistic craftsmanship’ (or a WOAC) – a category of copyright work identified in the Copyright, Designs and Patents Act (the CDPA). The term ‘work of artistic craftsmanship’ is not defined in the CDPA. However, before Cofemel, UK case law held that it is not sufficient that a work is just a work of craftsmanship; it must also have some aesthetic appeal (i.e. something of beauty).
Examples of work not qualifying for protection as WOACs in the UK included mass-produced furniture and the Star Wars helmet and armour – held to be works of craftsmanship, but not artistic craftsmanship.
The decision in Cofemel conflicted with UK law in that the CJEU held that aesthetic appeal is not relevant for assessing whether a design can be protected as a copyright work. Cofemel was a case involving designs for jeans, sweatshirts and t-shirts. The articles (especially the tops) were very ordinary looking and would not intuitively amount to WOACs under UK law.
However, the CJEU held that they could in principle attract copyright protection. It reiterated that under EU law, a work will attract copyright protection if:
- the work is identifiable with sufficient precision and clarity; and/or
- the work is the author’s own intellectual creation.
This means that the author is able to express their creative abilities by making creative choices in the creation of a work. The CJEU held that if a work satisfies these requirements, it can be protected by copyright under EU law.
Why does it matter if a work is a WOAC or not?
Whether a work is a WOAC can be very helpful, because it means a design may attract copyright protection for the life of its author (who could live to 100) plus 70 years (even if the article is mass produced). This is a very long time in the retail industry, where drawing inspiration from trends or competitor products on the market is a key part of healthy competition and consumer choice.
As a consequence of Cofemel, there is now in principle a relatively low threshold for a creative work to attract copyright protection, meaning that more basic and less exciting designs can potentially be protected by copyright.
This is great news for designers. Functional items which are utilitarian and not necessarily ‘beautiful’ looking, may well be protected by copyright. Previously, a design might only be considered to attract design right protection, but now it may attract both copyright and design right protection.
Under EU law following Cofemel, there is no need to force designs into a specific category of copyright work (such as a WOAC) as is still necessary under English law. What was not known to designers in the UK was the extent to which Cofemel would inform the decisions of the court post-Brexit.
The application of Cofemel by the UK court in June 2020
Against this background, in June 2022 in the Intellectual Property Enterprise Court, the case of Shazam Productions Limited -v- Only Fools The Dining Experience [2022] EWHC 1379 (IPEC) has been decided.
Only Fools and Horses is an iconic British TV series featuring a number of classic characters, including Del Boy and Rodney, the Trotter brothers. In 2018, the defendants launched an interactive dining show in which actors would play various of the TV characters. The Claimant, Shazam, is owned and controlled by the estate of the late author of the TV scripts for the TV series. Shazam argued that copyrights subsist in the Only Fools and Horses scripts, the lyrics and opening theme song and in the characters of the TV series (and that the defendants’ activities infringed this copyright). Certain features were argued to make up the persona of Derek ‘Del Boy’ Trotter, including his use of French to try to convey an air of sophistication, his internal optimism and his involvement in dodgy schemes.
Because the UK (unlike the EU) has a closed list of protectable copyright works set out in the CDPA, the judge in the case had to decide whether the character of Del Boy could be protected as a literary or dramatic work, being the two categories of copyright work in the CDPA a character could fall within.
In accordance with Cofemel,the judge considered whether the Del Boy character is (a) original in the sense that it is the author’s own intellectual creation and (b) it is identifiable with sufficient precision and clarity. The judge found that the Del Boy character is original and was the author’s own individual creation, and that the features of the character are precisely and objectively discernible in the TV series scripts. The character was therefore protectable by copyright (and the unauthorised use of the character by the defendants amounted to an infringement of that copyright).
This is potentially a far-reaching decision. Judges in the UK anticipated having to grapple with the tension between UK and EU law following Cofemel, and, in this particular case, the court has applied Cofemel to push the category of a literary copyright work under the CDPA to include something which has not previously been considered capable of being protected as such.
This is again a very encouraging decision for designers and design right owners. A number of legal commentators believe, however, that the case has been wrongly decided. It may be appealed. This means it may still be a brave designer/brand owner who is going to take an opponent to court claiming copyright protection and relying on Cofemel to seek copyright protection for more ordinary looking designs or designs that may not fall squarely within the categories of protectable copyright work in the CDPA.
Left: Longchamp handbag; Right: Plant pot design
To put the recent English decision into context, in Europe the Longchamp handbag design was recently held by the Italian court not to attract copyright protection – a decision that does not appear to be consistent with Cofemel (notwithstanding that EU case law is binding on the EU national courts).
In contrast, a Danish court has recently held that a quite ordinary looking design for a plant pot does attract copyright protection.
Concluding comments
We have over the last 12 months seen more and more parties advancing claims of copyright infringement based on claims that copyright subsists in designs in accordance with Cofemel or in disputes in respect of which we have advised. Following the decision in Shazam, the position for designers has been further bolstered.
If you are designing goods, your design may well very credibly be contended to attract copyright protection even if it is a 3D design which is quite utilitarian looking or has a functional appearance, so long as the design has not been copied and arises because of the author’s free and creative choices. As such, the decision is a potential strengthening of position for brand owners and designers and will be welcomed by them.
If you’d like to discuss any of these issues or have questions about the article, please contact Melanie McGuirk in the Dispute Resolution team.
Melanie McGuirk
Partner, Dispute Resolution
T: +44 (0) 161 393 9040 M: +44 (0) 7790 882567
Melanie specialises in the resolution of disputes relating to intellectual property, reputation management and trade libel. Her focus is on the enforcement and protection of intellectual property and reputations, brand strategy and management, with particular experience in the retail, fashion and manufacturing industries. She is a named leader in the field of IP in the North West by both Chambers & Partners and the Legal 500.
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