In March 2022, the Canadian Intellectual Property Office (“CIPO”)  its first artificial intelligence (AI)-authored copyright registration of a painting co-created by the AI tool, RAGHAV Painting App (“RAGHAV”), and the IP lawyer who created RAGHAV, Ankit Sahni. RAGHAV is the first non-human “author” of a copyrighted work. However, Canadian courts  that “[c]learly a human author is required to create an original work for copyright purposes” (para 88). Though the AI tool is a co-author with a human, the registration suggests that both RAGHAV and Ankit Sahni can constitute an author under the copyright regime and  amongst Canadian artists. Though the landscape in Canada is still unclear, the US Copyright Office (“Office”)  a clarification on March 16, 2023, about its practices for examining and registering works that contain material generated by artificial intelligence (AI) technology.

The Human Authorship Requirement

The Office  that the term “author,” used in both the US Constitution and the Copyright Act, excludes non-humans. To qualify as a work of ‘authorship,’ a work must be created by a human being and works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author are not registrable. This threshold reflects the Canadian copyright regime,. The author  significant original expression to the work that is  to be characterized as a purely mechanical exercise.

The US Copyright Office’s Approach to AI-Generated Work

The Office provided important  on assessing the protectable elements of AI-generated works. It begins by distinguishing whether the ‘work’ is one of human authorship, with the AI tool merely being an assisting instrument, or whether the protectable elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were conceived and executed not by man but by a machine.

If the machine produced the expressive elements of the work, it is not copyrightable. This guidance is critical for  surrounding Chat-GPT, where the AI tool receives a prompt from the user, and the user does not exercise ultimate creative control of the output. The Office provided an  where a user instructs an AI tool to “write a poem about copyright law in the style of William Shakespeare”. Given that the user contributes little to no expressive elements to the AI-generated output, the output is not a product of human authorship or protected under the US Copyright Act.

However, the Office also  that, in some cases, AI-generated works might contain sufficient human-authored elements to warrant copyright protection. This may apply in cases where the human selects or arranges the AI-generated elements or modifies the AI-generated material to a degree where it constitutes original expression. The analysis seeks to determine whether a human had ultimate creative control over the expression and formed the traditional elements of authorship.

This guidance is in response to a recent review by the Office of a  titled “Zarya of the Dawn” containing human-authored elements combined with AI-generated images. While the Office  that the author, Kristina Kashtanova, owned the work’s text and the selection, coordination, and arrangement of the work’s written and visual elements, copyright protection did not extend to the images generated by the AI tool, Midjourney. Though Kashtanova edited the Midjourney images, the Office held that the creativity supplied did not constitute authorship.

How will this apply in Canada?

Given the registration of RAGHAV as an author under Canadian copyright law last year, it remains to be seen whether CIPO will follow a similar assessment as the US Office and revisit the decision to register an AI-generated work as a work of joint authorship. However,  question whether moral rights, which are not part of the US regime, will extend to AI authors and if AI authorship will alter the copyright term of the last living author’s death plus 70 years. The increasing traction of AI warrants similar guidance from CIPO regarding the status of AI authorship under Canadian copyright law.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On February 22, 2023, it was that Google is blocking news content on its platform for under 4% of Canadian users in a five-week test as a potential protest of Bill C-18. While Parliament referred to this secret news blocking test by the tech giant as “,” this reality of Bill C-18 does not come as a surprise to critics who voiced these concerns throughout the legislative process.

Bill C-18, the , was first passed by the House of Commons in April 2022 and aimed to respect online communications platforms that make news content available to persons in Canada. This would provide news publishers with a framework to strike deals with tech giants, such as Google and Meta, to share the revenue they receive when reposting news content from publishers.

Parliament stressed that Bill C-18 will help recoup financial losses sustained by the news media industry in Canada. However, there is great concern as to whether Google and/or Meta will limit or fully shut down its news aggregation services to avoid payments. These concerns are warranted, as Google its Google News outlet in Spain for eight years to avoid paying for links and snippets citing stories from Spanish newspapers and other outlets. Google also conducted similar news blocking tests in response to the attempting to pass a code similar to Bill C-18 which sought to promote negotiations between news publishers and tech giants. Even more recently, Google Google News snippets in Czechia in response to Czech Copyright Act reform seeking to compensate Czech news publishers.

The costs of Bill C-18 to Google and Meta are not insignificant, with the estimating news businesses to receive a total compensation of $329.2 million CAD per annum from digital platforms. Given that both and generate upwards of $100 billion USD per annum, the costs of Bill C-18 appear to be a drop in the bucket for the tech giants. However, the backlash from Google to a lack of input from the Parliamentary Budget Officer as to how this figure was calculated. Parliament consulted the Australian Communication and Media Authority to learn more about its Bill-C18-like legislation implementation in Australia, so the estimates may have been based on Australian data.

Google’s news blocking test in Canada illustrates that the reality of Bill C-18 may go against its very purpose by digital platforms to link to news materials. This will not only limit access to online news content in Canada, but, more significantly, will further drive the losses suffered by Canada’s news media industry. , more than 450 news outlets in Canada have closed, with 64 closures in the past two years. With the second reading of Bill C-18 now in progress at the Senate, Parliament may need to reconsider its legislative approach to avoid further backlash from Google and Meta.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

The Ministry of Energy, Commerce and Industry of the Republic of Cyprus (“Cyprus”) lost its latest attempt to obtain trademark protection for its famous cheese, “Halloumi,” in a dated January 20, 2023. The Quebec Court of Appeal (QCCA) dismissed the appeal and agreed with the trial judge, ruling in favour of the Canadian dairy company, Saputo Produits Laitiers Canada S.E.N.C. (“Saputo”).

Halloumi, also commonly spelt as “Haloumi” or “Halomi”, is often associated with the Mediterranean island of Cyprus where it was first manufactured . It is the second most important export for Cyprus and its popularity in Canada has over the past 20 years, with many Canadian dairy manufacturers, including Saputo and President’s Choice, producing and selling halloumi cheese.

In 1995, Cyprus filed an to register “Halloumi” as a certification mark for cheese of the following defined standard: “the cheese is produced only in Cyprus using the historic method unique to that country, namely: traditionally, it has been produced from sheep's and/or goat's milk. In the case of mixtures, cow's milk is also allowed.” are a type of trademark that can be licensed to manufacturers as an indication to consumers that its products meet the owner’s defined standard. Common examples of certification marks include for Ontario wine, , and .

While this certification mark was registered in the , the Trademarks Opposition Board (TMOB) the mark on the basis that there was evidence of commercial use of “Halloumi” or similar terms in Canada already and thus, the mark is not distinctive to cheese “produced only in Cyprus.” The TMOB’s decision was upheld by both the and , with leave to the dismissed in 2012.

Cyprus entered into a with Saputo in 1999 and 2004, stipulating that Saputo “shall not use the trademark HALOMI on its products, or any other trademark confusingly similar with HALLOUMI or HALOMI.” Cyprus Saputo for breach of contract and requested a permanent injunction preventing Saputo from making further use of “Halloumi” or similar marks on its packaging. The Superior Court of Quebec ruled in favour of Saputo given that the law in Canada is settled that “Halloumi,” or similar words, could not be used as a trademark and therefore, the above contractual provision does not apply. On appeal, the QCCA agreed with the trial judge.

Canada’s rejection of trademark protection for “Halloumi” raises important questions surrounding cultural appropriation, a controversy recently brought up in the UK for the trademark “Taquería” (see ). Halloumi cheese is integral to Cyprus’ since its preparation is “directly linked to the traditional rural life and social solidarity that characterizes even today the villages of Cyprus.” However, the now widespread recognition of halloumi cheese in Canada presents a significant hurdle to Cyprus in protecting its historic cheese-making methods. To distinguish halloumi produced in Cyprus from that of Canadian retailers, Cyprus will likely need to seek a more fanciful certification mark that goes beyond the mere description of “Halloumi” (or similar terms).

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On December 26, 2022, the Japanese IP High Court dismissed an appeal from Christian Louboutin (“Louboutin”), a shoe designer known for its iconic red-bottom heels, in its action against Japanese shoe designer, Eizo Collection Co., Ltd. (“Eizo”), to shut down Eizo’s use of red soles on high-heeled shoes.

In May 2019, Louboutin sued Eizo under the Unfair Competition Prevention Law, seeking a permanent injunction against Eiko’s production of red-soled high heels and damages of approximately CAD 43,500. The Tokyo District Court ruled against Louboutin by finding red soles insufficient as a source indicator, and that the likelihood of confusion among consumers is therefore low. The IP High Court affirmed the judgment and placed particular emphasis on the to assess the likelihood of confusion:

1. The relevant consumers in the Japanese shoe market (women from their 20s to 50s) are likely to try on multiple shoes before purchasing ones that fit in a physical store;
2. The market can be divided into three categories: (i) luxury brand products, (ii) affordable brand products, and (iii) inexpensive no-name products;
3. The shoes in question, as well as most high-heeled shoes, bear a brand name or logo on the insole so that consumers can distinguish between trade sources; and
4. E-commerce websites post images of ladies’ shoes and identify the trade source for the respective goods in advertisements ().

While Louboutin’s products retail for and over and fall within the luxury brand market, Eizo’s shoes occupy the affordable or no-name brand markets, with an average retail price of JPY17,000 ($130). As such, the court ruled that, despite the resemblance of the colour of Louboutin and Eiko’s outsoles, the likelihood of confusion amongst consumers is low since each company occupies a different position in the market.

Relying on the fact that Louboutin is not the exclusive supplier of red-soled high heels in Japan and only 51.6% of targeted women in their 20s to 50s residing in major Japanese cities recognized Louboutin at the sight of a red-soled high-shoe, the IP High Court Louboutin’s assertion of its remarkable reputation amongst consumers. The court also took with Louboutin’s market research. The 3,149 individuals surveyed were luxury retail shoppers and were only presented with Louboutin’s products, not Eizo’s.

This loss for Louboutin follows several years of from the Japan Patent Office (JPO) and JPO Appeal Board to register its trademark for a colour mark consisting of a red (Pantone 18-1663TP) coloured in soles for use in high heels filed on April 1, 2015 (TM App no. ). In April 2015, Japan opened the gate for non-traditional trademarks, including colour, sound, and motion . As of November 2020, however, the JPO only registered out of 543 applications for colour marks. The JPO based on Article 3(1)(iii) of the Japan Trademark Law, stating that Louboutin’s colour mark lacks distinctiveness to be deemed as an indicator of source for Louboutin in the Japanese market.

(Alt Text: EIZO shoes with red soles; Source: ()

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Androu Waheeb is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Gone are the days when businesses were valued by their ability to market tangible goods. and reported that intangible assets (IP and data) are crucial to wealth creation and represent the “world’s most valuable business and national security assets.” In 2019, they accounted for 91% of the S&P500’s value. Canada has struggled to meaningfully partake in this intangible economy.

Canada’s patent portfolio is incommensurate with its enviable workforce and publicly funded research. Domestically, Canadian patent filings decreased by 3% annually and 7% in the last ten years. Non-resident filings swelled by 1% and 4%, respectively. In 2019, Canadians contributed 12% of the patents filed in Canada, whereas Americans accounted for half. Contrarily, reports that Americans owned 60% of patents filed in the USA.

Internationally, Canadian patent filings decreased after 2012, stagnated after 2014, and are geographically clustered. In 2018, 2/3 of Canadian international applications were filed in the USA – a meagre 2% of applications filed there.

Canada’s struggle to protect ideas has dire economic consequences. As Canada’s IP footprint diminishes, Canadian corporate operations face increasingly onerous restrictions, with portfolios too anemic to leverage. Consequentially, our GDP per capita has declined by 3% since 2010 and job quality by 15% since the 1980s. New jobs generate 2/3 of the income they did in the 1980s.

and blamed this on deficiencies in IP awareness, access, resources, expertise, capacity, laws, and funding. Neither report performed competent modelling or statistical analysis, which led to inadequate recommendations. To implement those recommendations, Canada developed the ; Ontario established the and .

Meanwhile, Peter Nicholson of the blamed Canada’s inability to foster and retain innovative corporations. The technology sector, a driver for innovation, contributes only 5% of the . Conversely, the 75 technology corporations in the constitute 1/3 of the index. Without innovative corporations to develop IP, Canada will never amass the portfolio it deserves. Public funds and talent earmarked for innovation will benefit other economies to the detriment of our own, cementing Canada as an innovation farm for hire.

Innovation emigrates from Canada because of what calls its “buy versus make” economic structure which results in passive posturing and ambivalence about market dominance in Canadian C-suites. Canada’s refusal to acclimate to new global economic realities disincentivizes local innovation independently of the patent system, and the “trend of investment in innovation is not encouraging.”

Canadian innovations’ short-lived victories exemplify this. and revolutionized telecommunications, yet their failure to continue innovating led to their demise. Canada’s abandonment of the shuttered .

Canada must foster a fertile corporate environment and broad innovation incentive structures to fend off the pending economic degradation. All policy instruments must be recruited, including taxation, trade, and regulation. Unfortunately, the current strategy of developing IP awareness, access, resources, and law alone will not suffice.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On January 10, 2023, Justice Pratter of the United States District Court for the Eastern District of Pennsylvania that storing melted rink ice from championship hockey matches in a piece of memorabilia is not copyrightable. Justice Pratter confirmed that the scope of copyright law extends only to the expression of ideas, but not the ideas itself.

The , William Grondin, sued sports merchandise company Fanatics Inc. (“Fanatics”) for copyright infringement. Mr. Grondin alleged that he owns copyright for “Slice of the Ice”, a Stanley Cup-shaped piece of hockey memorabilia incorporating melted ice from championship hockey games. He also alleged that Fanatics unlawfully copied his work in its own ice-filled hockey puck-shaped memorabilia. To establish copyright infringement, the following criteria must be met:

1. Grondin owns valid copyright in “Slice of the Ice”; and
2. Fanatics unlawfully copied the original, protectable elements of Mr. Grondin’s work.

While the court found evidence that Mr. Grondin owned valid copyright in “Slice of the Ice”, Fanatics succeeded in its motion to dismiss on the basis that the elements allegedly copied from Mr. Grondin’s work were not copyrightable.

Justice Pratter relied on the longstanding notion in copyright law (as early as ) that copyright does not protect ideas, only the expression of ideas. The sole element which Mr. Grondin alleged Fanatics copied was the “hockey puck-shaped piece with a hollow cavity into which melted rink ice is placed.” The idea of storing melted rink ice in hockey memorabilia is not protected by copyright. The question became whether Mr. Grondin’s specific expression of this idea in “Slice of the Ice” is copyrightable and if Fanatics substantially copied this expression.

The court Fanatics’ argument that the use of a hockey puck to express the idea of storing melted ice in memorabilia is inevitable and simply inherent in the underlying idea. This argument was supported by the fact that Fanatics also stored melted ice in Stanley Cup- and snow globe-shaped memorabilia. However, Justice Pratter that hockey pucks are inseparable and indispensable from the sport of hockey. Allowing Mr. Grondin to establish substantial similarity merely on the shared use of this element would effectively provide him a monopoly on the underlying idea of hockey memorabilia. The court also held that the elements of the hockey pucks in both works, notably its clarity and hollow cavity to hold melted ice, are merely utilitarian features which permit the idea of a water-filled puck. These utilitarian features are not protected by copyright. Since the sole element by which Mr. Grondin alleged copying by Fanatics is an idea not within the scope of copyright protection, the court held that there was no basis for a copyright infringement claim.

Interestingly, the court granted the without prejudice. This ruling leaves open the possibility that the action could be amended. Alternatively, Mr. Grondin could allege copying of other aesthetic or non-utilitarian features from which substantial similarity might be established against Fanatics or other sports companies.

(Alt Text: Comparison of Mr. Grondon’s work with the allegedly infringing hockey memorabilia; Source: )

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Vogue’s publishers have rappers Drake and 21 Savage for unauthorized use of Vogue’s trademarks and false representations in marketing their newest album, “Her Loss”. This follows Vogue’s controversial asking a small English pub called “The Star Inn at Vogue” to change its name.

Condé Nast, the owner of Vogue Magazine, filed a for trademark infringement and false advertising against Drake and 21 Savage on November 7, 2022, in the United States District Court after the artists released a parody promotional cover of the widely acclaimed Vogue Magazine, featuring a photo of Drake and 21 Savage atop the Vogue logo and multiple fake story headlines. The magazine was part of a , including a fake NPR Tiny Desk Concert and a fake Saturday Night Live performance. Drake and 21 Savage jointly promoted the fake magazine on their Instagram with the caption:

“Me and my brother on newsstands tomorrow!! Thanks @voguemagazine and Anna Wintour for the love and support on this historic moment”

The artists also mimicked Vogue’s promotional activities by distributing copies of the fake magazine in North America’s largest metropolitan areas, including New York, Los Angeles, Atlanta, Miami, Houston, and Toronto, and plastering posters of the counterfeit cover along streets and buildings in these cities.

This lawsuit followed a week of repeated demands to Drake and 21 Savage from Vogue and its counsel to cease their allegedly infringing activities and take remedial actions to curtail further public confusion. Given that the artists refused to take action and continued to benefit from the social media posts, Vogue requested and was immediate injunctive relief to prevent Drake and 21 Savage from using fake covers to promote their album. This injunction also prevents Drake and 21 Savage from using Anna Wintour’s likeness, including a doctored photograph of Vogue’s long-serving editor-in-chief and Drake, a full-page feature in the fake magazine. Vogue also requests statutory damages of up to $4 million US, though the court has yet to address these damages.

Though the post containing the counterfeit magazine was taken down from Instagram and the posters of the counterfeit cover along streets and buildings were removed because of the injunction, distributed copies of the fake magazine remain and are now being sold for upwards of on e-commerce sites. Ample evidence demonstrates that this false representation caused confusion, including various online articles from which claim that Drake and 21 Savage landed the December Vogue cover and social media posts indicating users’ excitement for the fake cover.

U.S. District Judge Jed Rakoff agreed with Vogue and Condé Nast that there was sufficient proof that consumers were being confused and the publisher had been "irreparably harmed”, a temporary injunction for the production and distribution of the fake magazine. On Drake and 21 Savage agreed to this preliminary injunction and also agreed to stop using Vogue trademarks for their album promotion.

The counterfeit marketing that went into promoting “Her Loss” may have paid off, with the album reaching during its first week and a . However, it is unclear if these sales can offset the potential damages of up to $4 million US requested by Vogue and other remedies that NPR and NBC may seek for the artists’ fake Tiny Desk and Saturday Night Live performances, respectively.

(Photo Credits: ) (Alt text: Screen capture of Drake’s now-deleted Instagram post containing multiple copies of the impugned magazine cover)

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

For all the gamers out there, do you still remember the classic, pixelated games of the 2000s? Gone are the days where fiction and reality were easily discernible, with the emergence of hyper-realistic video games such as , and depicting entire fantasy worlds at a crisp 1080p quality or better.

The video game industry has sky-rocketed in the last decade, especially due to historic amounts of people turning to digital forms of entertainment to wait out the pandemic. In this , game developers must be especially cautious of potential trademark infringements. Two recent U.S. court cases addressed the question of whether depictions of real vehicles in video games constitutes trademark infringement.

Battle of the tractors:

The star of this case is a K-700 tractor. Saber Interactive Inc.(“Saber”) had entered into a licensing agreement with the trademark owner for the exclusive intellectual property rights to depict the K-700 in its video game, Mudrunner. The agreement included the right to enforce the license in court. Subsequently, Oovee Ltd (“Oovee”) released its game Spintires, featuring the K-700 as a playable vehicle. Saber then sues Oovee for unfair competition caused by unauthorized use of the K-700 trademark and trade dress under the American Lanham Trademark Act.

Expressive works are granted expression rights by the First Amendment. Oovee’s use of the K-700 was hence protected as such, as the Court found video games to indeed be expressive works. Accordingly, then, Saber had to satisfy the two-prong Rogers test to bypass this defense by showing that Oovee’s use of the K-700, as follows:

1. Had no artistic relevance to its Spintires game; or
2. Explicitly misled consumers regarding the source of the K-700.

The Court found that Saber “did not explain why Oovee’s use of the K-700 is artistically irrelevant,” and did not satisfy the high bar of “explicitly misleading” in their submissions. Saber argued that because consumers expect that “actual vehicles featured in simulations are licensed,” there arises a likelihood of confusion amongst the public as to the involvement of Saber in Oovee’s game. The Court found that without an explicitly misleading statement, this likelihood of confusion is insufficient to satisfy the second prong. Accordingly, Oovee’s use of the K-700 did not infringe upon any marks and the motion was dismissed.

Humvee v. Call of Duty, aka

The Saber case ruling follows an earlier case concerning the appearance of Humvee vehicles in the Call of Duty franchise games. Call of Duty, created by Activision Blizzard, is a first-person shooter game simulating a modern warfare setting with Humvees depicted throughout the game. AMG sued Activision Blizzard for these depictions since Blizzard did not acquire authorization for such uses. Like the Saber case, First Amendment protection applied to the video game, and this protection was subjected to the Rogers test.

Ultimately, the Court found that the use of Humvees was artistically relevant to the game because they evoked “a sense of realism and lifelikeness” to the players. The second prong, however, was unmet because despite there being survey evidence of confusion, the confusion itself did not arise from Activision Blizzard’s actions. The case was dismissed in favour of Activision Blizzard.

Implications

As more of our world moves online, these such lawsuits help guide the direction of developers designing the digital space. To make video games more immersive and realistic, developers would have to bring in real-life characteristics and these precedents help to shield designers from tedious trademark litigation. However, as we have seen from the Orton case , similar protection may not be granted to copyright infringements in games. Regardless, we expect further guidance as the courts continue to clarify how the nuances of IP law apply online.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On October 25, 2022, following a string of antisemitic remarks and hate speech from Ye (formerly known as Kanye West) on social media, Adidas their decision to terminate their co-branding partnership with Ye and end production of all Yeezy branded products. The termination of this seven-year partnership, most famously known for its development of the Yeezy sneakers, raises important questions about IP ownership when business collaborations collapse.

While Ye’s company, Mascotte Holdings Inc. (“Mascotte”), owns a portfolio of 160 trademark applications in the US connected to the “Yeezy” brand, Adidas solely owns all design rights to existing products, as well as previous and new colorways under the partnership. This includes at least eight filed by Adidas in 2016 that claim the ornamental design of the Yeezy sneakers. A licensing agreement between Mascotte and Adidas exists for the “Yeezy” trademarks. The dissolution of this contract will rely on the termination clauses that stipulate the division of IP between the parties or whether any “moral” clauses allow early termination of the contract.

Adidas intends to take advantage of its design rights by selling the Yeezy sneakers using its own branding. Adidas has the right to continue to manufacture identical sneakers to Yeezys, so long as they do not use the trademarks owned by Ye. However, the inherent link between Ye and this distinguishable sneaker design may prove problematic to Adidas regardless of the name etched onto the shoes.

How can businesses protect their public perception in co-branding partnerships?

The success of Ye and Adidas’ co-branding partnership demonstrates how cross-licensing IP, including industrial designs and trademarks, can be a strategic marketing scheme to tap into different markets or classes of consumers. Ye and Adidas join the rank co-branding fails including the for Pepsi with Kendall Jenner that was pulled back 48 hours after release; the partnership between Lego and Shell, which due to Shell’s negative environmental reputation; and, more recently in Canada, the of Lululemon and Peloton due to alleged unfair competition from Peloton. These examples stress the need for companies to protect their public perception through strategic negotiation and drafting of co-branding licensing agreements, particularly through “moral” clauses.

Moral clauses hold contracting parties to a behavioural standard so as not to bring scandal to the other party. These clauses should address the potential for “tarnishment, loss of goodwill or reduction in brand value that may stem from reputational damage experienced by either party” (). Remedies for breach of such clauses include corrective advertising, damages, and contract termination.

Before entering into co-branding agreements, especially those involving celebrities, contracting parties should also ensure their shared goals and values are aligned to mitigate the risk of negative backlash or future fallout. For Adidas, a risk assessment of entering this partnership with Ye in 2016 may have involved balancing the precarious public perception of Ye against the potential commercial market for Yeezy-branded shoes.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

A dated August 5, 2022 from the United Kingdom’s High Court of Justice has the potential to expand the definition of “artistic works of craftmanship” under UK copyright law. Deputy High Court Judge Stone rejected a motion by the defendants, Liking Ltd. (“Liking”), to strike out Water Rower (UK) Ltd.’s (“WaterRower”) claim for copyright infringement in its WaterRower water resistance rowing machine on the basis that the machine is not a “work of artistic craftmanship” within the UK’s .

The Facts at Issue

As a member of the 1975 US National Rowing Team and having studied naval architecture, including wooden boat design, John Duke sought to design a wooden rowing machine in which the user has a “welcome emotional connection, as they would with a piece of furniture”. The first versions of this machine were developed between 1985 and 1987 and, since this time, there have been eight iterations of the WaterRower and it has grown to be an “iconic design” in the UK and US. Liking admitted to copying the eighth iteration of the WaterRower in creating its rival rowing machine, the TOPIOM Model 1. However, Liking argued that since the WaterRower could not be considered a “work of artistic craftmanship,” no copyright subsists in the WaterRower.

Court’s Decision

While the Court did not ultimately conclude whether the WaterRower is a “work of artistic craftmanship” under copyright law, Judge Stone ruled that the question of whether the WaterRower could be considered as such is one that requires a full trial and cannot be determined in summary judgment. This ruling was based on the leading House of Lords authority on works of artistic craftmanship, George Hensher Ltd v Restawile Upholstery (Lancs) Ltd.[1] Though Hensher provides a less than clear definition of what constitutes works of artistic craftmanship, Judge Stone considered that:

1. The artist’s intention is relevant to whether a work is artistic, and there is evidence about Mr. Duke’s intention as a craftsman; and
2. It is unclear that the WaterRower is less artistic than the examples of artistic works given by Lord Simon in Hensher, including hand-painted tiles and stained-glass windows.

As such, Judge Stone rejected Liking’s argument under Hensher that, on any view, WaterRower has no real prospect of proving their machine is artistic.

What could this mean for UK and Canadian copyright law?

If the WaterRower is found to be an artistic work of craftmanship at trial, this would indicate that the UK courts are adopting a more flexible definition of “artistic”, especially in relation to functional works that are generally considered more congruent with the patent framework.

In Canadian copyright law, works of artistic craftmanship are generally limited to those “intended to have an appeal to the aesthetic senses” (). Given the evidence of John Duke’s intention to create a wooden rowing machine that evokes emotion, the argument could be made that the aesthetic features of the WaterRower are protected under the Canadian copyright regime. However, since the WaterRower has been mass produced for the fitness industry in Canada, the Canadian would intervene and only permit the aesthetic features of the useful machine to be protected, so long as these features are distinctive. To date, neither WaterRower or Liking have applied for design protection in Canada, though other rowing machine designs  have previously been registered in Canada.

[1] George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 (“Hensher”).

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