Waterrower (UK) Ltd v Liking Ltd (T/A Topiom)

Hearing dates: 24 and 25 July 2023

Further written submissions on 27 July 2023, 24, 28, 29, 30 October 2024 and 8 November 2024

APPROVED JUDGMENT

This judgment will be handed down remotely by circulation to the parties or their representatives by email and release to The National Archives. A copy of the judgment in final form as handed down should be available on The National Archives website shortly thereafter but can otherwise be obtained on request by email to the Judicial Office ( press.enquiries@judiciary.uk).

Introduction

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).

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).

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.

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.

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”):

Copyright: subsistence

(i) Is Version 1 of the Works a work of artistic craftsmanship in which UK copyright subsists?

(ii) Are each of the subsequent Versions of the Works original copyright works of artistic craftsmanship?

Copyright: infringement

(iii) Did the Defendant:

(a) Copy any Version of the Works (as shown in Annex 1 to the Amended Particulars of Claim) directly or indirectly in the creation of the Topiom Model 1 and/or the Topiom Model 2?

(b) Reproduce a substantial part of each of the above Works in:

i. The Topiom Model 1; and/or

ii. The Topiom Model 2?

(c) Have the relevant knowledge required for the acts of infringement alleged in paragraph 11 of the Amended Particulars of Claim?

Counterclaim

(iv) Is the Court satisfied that it is appropriate and necessary to make each of the declarations sought in relation to UK copyright?

Pleading issue

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.

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’.

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.

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

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.

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...