Waterrower (UK) Ltd v Liking Ltd (T/A Topiom)
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 05 August 2022 |
| Neutral Citation | [2022] EWHC 2084 (IPEC) |
| Docket Number | Case No: IP-2022-000001 |
| Court | Intellectual Property Enterprise Court |
| Year | 2022 |
[2022] EWHC 2084 (IPEC)
David Stone
(sitting as a Deputy High Court Judge)
Case No: IP-2022-000001
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURTS OF ENGLAND & WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London, EC4A 1NL
Ms Jacqueline Reid (instructed by Moore Commercial Law Limited) for the Claimant
Mr Jonathan Moss and Ms Kendal Watkinson (instructed by Gunnercooke LLP) for the Defendant
Hearing date: 28 July 2022
APPROVED JUDGMENT
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.
COVID-19 Protocol: This judgment is to be handed down by the deputy judge remotely by circulation to the parties' representatives by email and release to Bailii. The date for hand-down is deemed to be 5 August 2022.
David Stone (sitting as Deputy High Court Judge):
By application notice dated 1 July 2022 the Defendant sought to strike out (or alternatively to obtain summary judgment of) the Claimant's claim for infringement of copyright in its WaterRower water resistance rowing machine on the basis that the machine is not a “work of artistic craftsmanship” within the meaning of section 4(1)(c) of the Copyright Designs and Patents Act 1988 (as amended) (the CDPA).
The Defendant has admitted that, if the Claimant's machine is a “work of artistic craftsmanship”, then copyright subsists, and the Defendant's machines infringe (at least in relation to the eighth iteration of the Claimant's machine). Therefore, the sole issue before the Court is whether the Claimant's WaterRower rowing machine is a work of artistic craftsmanship.
Ms Jacqueline Reid appeared for the Claimant. Mr Jonathan Moss appeared for the Defendant (and Ms Kendal Watkinson contributed to the Defendant's skeleton argument). Both counsel argued persuasively: I am also grateful for the efficiency with which they presented their clients' arguments.
The Application
Technically, the Defendant's application is for strike out of the Claim Form and Amended Particulars of Claim ( APoC) under CPR 3.4(2)(a) and/or summary judgment under CPR 24.2(a)(i). However, counsel for the Defendant conceded that the strike out application and the summary judgment application must stand or fall together, and so I need only address the strike out application. Counsel for the Claimant pointed out that the request for summary judgment is not made in the application notice, only in the draft order attached to it, but in light of the approach taken, that issue does not arise.
The Defendant also sought summary judgment on its Counterclaim. The Counterclaim is for various declarations of non-infringement – during the course of argument, these were narrowed to a single declaration for the territory of the UK – “that the WaterRower is not a work of artistic craftsmanship.” Counsel for the Defendant submitted that this is merely the flipside of the Defendant's application to strike out the claim, but conceded, quite rightly, that declarations sit within the Court's equitable jurisdiction and involve the exercise of discretion, and it therefore does not necessarily follow that if the strike out application is granted, declarations of non-subsistence of copyright follow. I return to this issue below.
The evidence before me was contained within the statements of case (each of which has been amended, some several times) and in two witness statements. The Claimant relied on a witness statement of Mr Jonathan Moore, solicitor for the Claimant. The Defendant relied on a witness statement of Ms Rachel Pearse, solicitor for the Defendant. Neither witness was cross-examined as, in reality, their evidence dealt with other applications that were before the Court, not the Defendant's application to strike out the claim.
The Defendant also sought to rely on draft Particulars of Claim that were never signed, but were sent from the Claimant's then legal advisors to the Defendant prior to the action being launched. I do not consider that that document assists me – it may evidence how the Claimant's then advisors planned to plead the case, but I do not consider that anything more can be gained from that document.
I need also say something at this stage about the machines in issue and the claimed copyright works. The Claimant's machine is called the WaterRower. There have been eight iterations of the WaterRower in four series, each of which differs from the previous one. Photographs of each were in evidence before the Court. The first iteration is shown here:
The Defendant now admits to having copied the eighth iteration of the WaterRower to create its TOPIOM Model 1. Its TOPIOM model 2 was an attempt to work around any rights said to subsist in the WaterRower.
The Claimant claims that copyright subsists in each of the eight iterations of the WaterRower, which it defined in its APoC collectively as “the Works”. In its Re-Amended Defence and Counterclaim (which prior to hearing the Defendant's strike out application, I gave permission to file and serve with some amendments), the Defendant does not adopt the definition of “the Works”, but rather refers to “the WaterRower”.
Given the single issue before the Court, neither side sought to argue that it matters for present purposes which of the eight iterations of the WaterRower I consider – whilst there are differences between them, they are, in my judgment, insufficient for present purposes to suggest, for example, that iteration 1 might be a work of artistic craftsmanship whereas iteration 8 might not be. The Defendant has other arguments as to the additional copyright that may subsist in iteration 8 as compared to iteration 1, but that is not a matter for today. It will therefore be largely unnecessary to distinguish between them.
The Defendant did not seek to argue that a water resistance rowing machine could never be a work of artistic craftsmanship. Rather, the argument before me was on the question of whether or not the WaterRower is a work of artistic craftsmanship. I will refer to that question during the course of this judgment. Of course, that is not the complete question to be asked on an application for strike out/summary judgment – and I have kept in mind throughout that I am to apply the relevant legal tests, set out below. In reality, I am to ask myself whether the Claimant has “no reasonable grounds” to claim that the WaterRower is a work of artistic craftsmanship and/or that it has no real prospects of success in relation to that claim.
The expression “work of artistic craftsmanship” entered the CDPA in 1911 when gender-neutral drafting was largely unknown. I will use the expression in the CDPA.
The Law on Strike Out/Summary Judgment
The parties were agreed as to the law to be applied.
In relation to strike out, CPR 3.4(2)(a) provides that the Court may strike out a statement of case if it appears to the Court “that the statement of case discloses no reasonable grounds for bringing or defending the claim.” CPR PD3A provides some examples of cases which may fall within rule 3.4(2)(a), including “those which contain a coherent set of facts but those facts, even if true, do not disclose any legally recognisable claim against the defendant.” The White Book, volume 1 at paragraph 3.4.1, emphasises that claims which are “obviously ill-founded” or “which do not amount to a legally recognisable claim” should be struck out. Counsel for the Claimant also brought the following passage from the White Book to my attention:
“Statements of case which are suitable for striking out on ground (a) include those which raise an unwinnable case where continuance of the proceedings is without any possible benefit to the respondent and would waste resources on both sides ( Harris v Bolt Burdon [2000] C.P. Rep. 70; [2000] C.P.L.R. 9). A claim or defence may be struck out as not being a valid claim or defence as a matter of law ( Price Meats Ltd v Barclays Bank Plc [2000] 2 All E.R. (Comm) 346, Ch D). However, it is not appropriate to strike out a claim in an area of developing jurisprudence, since, in such areas, decisions as to novel points of law should be based on actual findings of fact ( Farah v British Airways, The Times, 26 January 2000, CA referring to Barrett v Enfield BC [2001] 2 A.C. 550; [1989] 3 W.L.R. 79, HL). A statement of case is not suitable for striking out if it raises a serious live issue of fact which can only be properly determined by hearing oral evidence ( Bridgeman v McAlpine-Brown, 19 January 2000, unrep., CA). An application to strike out should not be granted unless the court is certain that the claim is bound to fail ( Hughes v Colin Richards & Co [2004] EWCA Civ 266; [2004] P.N.L.R. 35, CA (relevant area of law subject to some uncertainty and developing, and it was highly desirable that the facts should be found so that any further development of the law should be on the basis of actual and not hypothetical facts)).”
I have been asked to decide this application on the basis of a strike out, but Counsel for the Defendant also referred me to the law on summary judgment, so I have also kept it in mind. He excerpted the usual passage from the White Book at paragraph 24.2.3, adding his own emphasis as shown below:
“The following principles applicable to applications for summary judgment were formulated by Lewison J in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch) at [15] and approved by the Court of Appeal in AC Ward & Sons Ltd v Catlin (Five) Ltd [2009] EWCA Civ 1098; [2010] Lloyd's Rep. I.R. 301 at [24]:
i) The court must consider whether the claimant has a “realistic” as opposed to a “fanciful” prospect...
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7 Years On: The Practical Effects Of The Resurrection Of Expired Copyright In Works Of Craftsmanship
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