AGA appeal raises important UK copyright questions

The dispute came before the High Court previously, with noteworthy aspects of its ruling earlier this year concerning exhaustion of trade mark rights in the context of refurbished and adapted consumer goods within the UK and its interpretation of case law developed by the Supreme Court relevant to director liability for IP infringement.

The High Court also considered copyright claims raised as part of the dispute, where thorny questions around the interpretation of the defence to copyright infringement in section 51 of the Copyright Designs and Patents Act 1988 (CDPA), and the impact of the CJEU case law on this interpretation, has been considered of such significance that permission to appeal the High Court decision on these issues has been granted.

What happened in this case?

AGA Rangemaster Group manufactures and sells the well-known AGA range cookers in the UK. It owns a number of UK registered trade marks for the word mark ‘AGA’ and the AGA badge, each registered for ovens, hobs, cookers, cooking ranges and stoves in class 11 of the Nice Classification system – an international classification system for trade mark applications.

UK Innovations Group (UKIG), under the control of director Michael McGinley, the second defendant to these proceedings, was in the business of refurbishing and reselling second-hand AGA cookers, including by converting them from being run on fossil fuels to electricity instead, known as the “eControl Cookers”. AGA Rangemaster alleged that UKIG infringed its trade marks under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994 (TMA) by marketing and selling the eControl Cookers.

In his ruling, High Court judge Nicholas Caddick KC held that there was trade mark infringement under all three sections of the TMA and that UKIG could not rely on the exhaustion of rights defence in section 12 of the TMA. The manner in which UKIG and McGinley marketed the cookers suggested a commercial connection with AGA Rangemaster, the judge considered, and this was a legitimate reason for the rights holder to oppose further dealings in the eControl Cookers. The judge determined, however, that McGinley was not an accessory to the infringement by UKIG as he considered that AGA Rangemaster had not successfully shown that the director had knowledge of the essential facts which made the sale of the eControl Cookers trade mark infringement.

Copyright infringement

AGA Rangemaster also alleged copyright infringement by UKIG. The claim related to a CAD drawing showing the design of the control panel for AGA Rangemaster’s own electric AGA cookers. The manufacturer asserted that copyright subsisted in the drawing as an original artistic work and was infringed by UKIG in making control panels for their eControl Cookers. UKIG argued that copyright did not subsist in the drawing, but if it did then it had the defence to infringement under section 51 of the CDPA.

For copyright to subsist in the CAD drawing as an artistic work it needed to be original, meaning that it must have been the author's own intellectual creation. This test is satisfied where the author has made free and creative design choices.

UKIG argued that the drawing was not original because the appearance of the control panel was dictated by technical considerations so there were no, or only very limited, creative choices that its author could make. The High Court judge rejected that argument. He held that the design depicted in the CAD drawing was influenced, but not dictated by, the function that the control panel was intended to perform. In his view, there were numerous designs which could have performed that function and he was satisfied on the evidence that AGA Rangemaster’s designer had made aesthetic choices driven by his desire to create a design that was in keeping with the historic look of the traditional AGA cookers.

Section 51 of the CDPA is complex in its wording. In plain terms, it provides that if a design drawing is of an artistic article, then a third party that makes an article to that design will infringe copyright in the design document. However, if a design drawing is of a non-artistic article – a functional design – then making an article to the design will not infringe copyright in the design drawing. The purpose of section 51 is to limit copyright protection for industrial designs, which is the proper role of design law.

The section 51 defence succeeded in this case at the High Court. The judge held that the drawing was a design document fora control panel which was not an artistic work, as that term was understood in English law. That meant it was not an infringement of artistic copyright in the CAD drawing for UKIG to make control panels to the design recorded in the drawing.

The impact of the CJEU decision in the case of Cofemel on section 51 was considered. The Cofemel decision forms part of post-Brexit assimilated law in the UK. It established that where an article, functional or otherwise, satisfies the originality test as described above, then copyright will subsist and the article will be protected under both copyright and design law. No conditions other than originality need be satisfied for copyright protection to arise. Further, EU member states, as the UK was at the time of the CJEU’s decision, must not legislate to require other conditions to be satisfied. 

To date, judges sitting in the courts of England and Wales have avoided directly answering the question of how they should react to the CJEU’s Cofemel ruling and its potential wider impact on copyright law in this jurisdiction. Currently, only certain categories of work defined in the CDPA can be protected by copyright and, in some cases, this requires works in those categories to have aesthetic merit before copyright will subsist. 

Clearly there is tension between the case law developed in the Cofemel case and section 51, with Cofemel introducing the concept of functional designs being protected by copyright and section 51 having the opposite objective. The question for the High Court judge in this case was whether section 51 imposed any additional requirement for the subsistence of copyright beyond originality and, if it did, whether that additional requirement would stand or whether the Cofemel case law would prevail.

The High Court judge declined to directly answer the question. Instead, he applied section 51 on its own wording and held that section 51 and Cofemel were most likely compatible as section 51 does not impose any additional requirement for the subsistenceof copyright. Where it applies, copyright subsists in the design document but is simply not infringed by the making of an article to that design.

Important and, as yet, unanswered questions around how the Cofemel case law sits within the existing copyright regime in the UK, and its potential reforming impact, must now wait to be considered by the Court of Appeal when it comes to hear the appeal in these proceedings next year.