The Edinburgh Woollen Mill finds itself in a stitch following infringement of copyright in wave design fabric
The recent case of Response Clothing Limited v The Edinburgh Woollen Mill Limited  WLR(D) 88,  EWHC 148 (IPEC) considered the threshold for establishing copyright protection in the design of a fabric and found infringement following the sale of garments made to the design.
In January 2020, the Intellectual Property Enterprise Court gave judgment on a copyright infringement claim brought by Response Clothing Limited (“Response”) against The Edinburgh Woollen Mill (“EWM”) concerning the design of the jacquard fabric used as part of a ladies top (the “Fabric”).
Historically, between December 2009 and 2012, Response had supplied EWM with a garment made using the Fabric, the distinctive feature of the Fabric being a “wave” design being woven into the same, rather than such a design feature being printed, stamped or embroidered. Following an attempt at renegotiating the pricing of the supply contract, the arrangement between Response and EWM came to an end. EWM proceeded to supply a sample of the Fabric to other suppliers with an invitation for them to supply garments made with a similar fabric. Three suppliers created and supplied the same throughout the period 2012 to 2015.
Response subsequently brought a claim against EWM on the basis that copyright subsists in the wave design of the Fabric, either as a graphic work or in the alternative as a work of artistic craftsmanship, and that they were the owner of such copyright.
In considering the case, HHJ Hacon firstly sought to identify the copyright work subsisting in the Fabric and the assertion made by Response that the work was created on a loom and should either be classified as a graphic work or a work of artistic craftsmanship. In the first instance, and with reference to s.4(1)(a) of the Copyright, Designs and Patents Act 1988 (“CDPA”) HHJ Hacon confirmed that the Fabric did not qualify as a graphic work as the definition of s.4(1)(a) could not be stretched to include a fabric.
HHJ Hacon therefore turned to the question of whether Response could rely on the Fabric being a work of artistic craftsmanship pursuant to s.4(1)(c) CPDA. In considering this point, HHJ Hacon drew references to a number of historic cases including the New Zealand decision of Bonz Group (Pty) Ltd v Cooke  3 N.Z.L.R which considered ‘artistic craftsmanship’ in the context of woollen sweaters. In the Bonz Group judgment, Tipping J was prepared to “combine the artistry of the designer and the craftsmanship of the knitters and conclude that the sweaters fell within the description”. In applying this decision, HHJ Hacon considered the role of the machine in creating the Fabric as an item that is aesthetically pleasing, in order to satisfy the criterion concerning the intention of a craftsman. On the review of the evidence submitted by Response, it was concluded that the Fabric must have been aesthetically pleasing to customers due to its commercial success.
HHJ Hacon then went on to consider whether copyright protection could be afforded to the Fabric, with reference being made to Cofemel-Sociedade de Vesturário SA v G-Star Raw CV (Case C-683/17). He commented that if the design of the Fabric was original, the creator of the design must have exercised their free and creative choices in devising the same and, accordingly, the design would be entitled to copyright protection. HHJ indicated that there was no additional requirement to show aesthetic appeal in order for the design to attract copyright protection (although he concluded that the Fabric did, in fact, have aesthetic appeal).
Accordingly, HHJ Hacon made the following points:
- it is possible for an author to make a work of artistic craftsmanship using a machine;
- aesthetic appeal can be of a nature which causes the work to appeal to potential customers; and
- a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed.
In assessing the alleged infringement by EWM, HHJ Hacon reviewed the similarities between the Fabric and the fabric supplied by EWM’s alternative suppliers and inferred that there was direct or indirect copying of the same, with such similarities being apparent to a reasonable person. Accordingly, he made a finding of copyright infringement.
This decision of HHJ Hacon is a positive one for the fashion and textile industry in particular. It indicates that the term “artistic craftsmanship” does not require an assessment of aesthetic appeal in order for copyright protection to be established. Whilst designers may have previously focused on just design right to protect their creations, this case is a useful reminder that copyright protection should also be borne in mind.