JLR sparks a fire of condemnation amongst lovers (and users) of classic car design

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I know what you are thinking: not another article about Jaguar Land Rover’s (JLR) legal shenanigans. However, in my defence:
  1. JLR seems to be doing interesting things with its IP portfolio; and
  2. The subject matter of this article cuts close to the bone for me, as one of my vehicles is a wide-body replica of an early 1950’s Porsche 356.

So what has JLR been up to now?

JLR v Creare Form

JLR has successfully sued1 lifelong Jaguar enthusiast Karl Magnusson2 in Sweden for infringement of copyright in the design of its C-type Jaguar (shown below). The C-type (or XK120-C) was designed by Malcolm Sayer in 1951 and only 53 examples were built.3 The car was designed primarily for racing and famously won the 24 Hours of Le Mans in 1951.

Given its scarcity and provenance, the price of original C-types is stratospheric. For example, a C-type that raced at Le Mans in 1953 sold for $USD13.4 million in 2016. This has spawned an entire industry geared around providing faithful replicas for those with a love of the car but not the funds to own an original. That’s where the likes of Mr Magnusson come in.

A self-confessed “Jaguar nerd”, Mr Magnusson spent nine years researching and building a faithful C-type replica. He was even invited by senior management of JLR Classic4 to give a presentation about his C-type project in 20165. JLR itself has a track record (pun intended) of supporting the replica industry. It has been reported that: no less than three JLR CEOs have supplied close to 2,000 technical drawings to builders, with awards going to the best replicas; three senior JLR managers and one director have privately built and raced C-type replicas themselves; and since 2015, 25 historic “Jaguar Classic Challenge” races have been held in which replicas are publicly invited to participate, with more planned this year. A YouTube search for the C-type results in a host of JLR films featuring replicas, and the company sells a “Classic Drive” experience in C-type and D-type replicas – none of which are built by JLR. It’s even reputed that JLR Classic’s Engineering Manager had a C-type replica parked in his garage while giving testimony in the case against Mr Magnusson.

Why Mr Magnusson?

So why, given its support for the replica community which includes some of the brand’s most dedicated followers, did JLR risk its ire by taking aim at a Swedish pensioner?

Where Mr Magnusson appears to have gone wrong was to publicise his intention to build and sell several more C-type replicas to fund his own copy, thereby crossing the line between private passion and commercial advantage. Speaking on the ruling JLR confirmed:

“According to the Swedish court, the external shape of the Jaguar C-type does have copyright protection, and this was infringed by a car being built by the defendants’ company, the first of six that they planned to build and sell.

“Jaguar Land Rover are not going after private owners of pre-existing individual replica vehicles, nor insisting upon the destruction of their vehicles. However, we will take action to prevent businesses using our IP illegally for their own profit.

Mr Magnusson may have also been an unfortunate victim of timing, with JLR having recently announced plans to build eight ‘continuation’ C-types to mark the car’s 70th anniversary. The new cars will be hand-built by JLR to the same specification as the  model that was driven to victory by Duncan Hamilton and Tony Rolt in the 1953 Le Mans.

The legal stuff

The Swedish Court held that the design of the C-type was capable of copyright protection as a “work of applied art”. To qualify for copyright protection, there cannot be practical constraints that limit the designer from making free and creative choices. In this case, the designer was tasked to create a car that could win at Le Mans, whilst adhering to a distinct Jaguar style. With reference to C-833/18, Brompton Bicycle,6 the Court found that these constraints were not limiting to a significant extent, and the shape of the C-type (rightly) qualified for copyright protection.

How was JLR able to assert copyright in a design which had been on the market for 70 years? A turn of events occurred, that significantly benefitted JLR. As both countries were signatory to the Berne Convention, a work of applied art created in the UK in 1951 enjoyed protection in Sweden for ten years in accordance with its copyright legislation – covering the C-type until late 1961. To JLR’s  advantage, Sweden introduced a new Copyright Act in early 1961, which immediately extended the term of protection for another ten years. Then, in 1970, months before the copyright in the C-type was due to expire, the Swedish Copyright Act was again amended to provide a protection term of 50 years after the death of the author. This took the C-type’s protection to 2020, but this wasn’t to be the last extension. Sweden soon joined the European Union and adopted its copyright laws, which protect works of applied art for 70 years after the author’s death – giving a final expiration date of 2040.

And what of JLR’s apparent support of the C-type replica industry, including its meeting with Mr Magnusson? Perhaps unsurprisingly, Mr Magnusson argued that based on this and other similar activities, JLR had given general consent to produce Jaguar C-type copies in the form of replicas, therefore he had not infringed its copyright. However, the Court was not satisfied that there was sufficient evidence of JLR engaging in conduct which might amount to a general consent. Using the Jaguar Classic Challenge as an example, the Court accepted JLR’s evidence that, although it sponsored the event to strengthen the company’s brand, it had no influence on the rules of the event or the club hosting the event and, presumably, no ability to prevent replica cars from participating.

Would the result have been different in New Zealand or Australia? More importantly, is my 356 replica safe?

New Zealand

Section 14 of the Copyright Act 1994 provides that copyright is a property right that exists in original works including artistic works. Artistic works are defined in s.2 as including a graphic work or a model irrespective of artistic quality, and a work of artistic craftmanship. The distinction between these types of artistic works is important because it has a bearing on the term of protection.

While the term of protection for all artistic works is ordinarily 50 years from the death of the author7, New Zealand has a special provision8 where the artistic work has been applied industrially – as in the case of the works underlying the design of the Jaguar C-type. Under those provisions, if more than 50 examples of the artistic work have been made9 then the copyright term will be:

  • 25 years from the date of industrial application for works of artistic craftsmanship; and
  • 16 years from the date of industrial application of any other artistic work.10

In the case of automotive design, drawings of body panels and component parts will qualify as artistic works irrespective of artistic merit and will be protected so long as the drawings are original, in the sense that they were not copied from something else, and involved more than minimal effort on the part of the author. Unlike in Europe, New Zealand applies a “sweat of the brow” approach to copyright protection and does not require the expression of free and creative choices so that even totally utilitarian items with no aesthetic input will be protected. Bucks and molds will also qualify for protection as models, as might prototypes11, but they would probably not qualify as works of artistic craftmanship12. However, this copyright will likely expire 16 years after the vehicle or vehicle part has been put into production.

Australia

Australia deals with copyright in industrial design slightly differently. While copyright will be recognised in original artistic works (such as drawings of body panels and components parts of cars), if the design was of a type which was capable of registration under the Designs Act 1906 or Designs Act 2003, that copyright becomes unenforceable once products made to the design are offered for sale. This forces designers to seek registered design protection before putting new products on the market – or accept that the design becomes public domain once they do so. Suffice to say, even had JLR sought design protection in Australia in 1951, it will long since have expired.

As an aside, I have argued elsewhere that the approach to protection of industrial design in Australia is preferable to the free copyright which designers enjoy in New Zealand since it forces designers to consider forms of registered intellectual property which might be available to their product before they launch. In my opinion New Zealand businesses are far less aware of the availability of intellectual property rights, and are disincentivised by the crutch of broad ranging and free copyright rights to educate themselves. Many New Zealand businesses experience the real cost of this information gap when their products are copied in Australia and they find that, without registered design protection, there is nothing they can do.13

Conclusion

All of this would be very bad news for JLR’s copyright claim in respect of the C-type in New Zealand and Australia, but great news for owners (like me) of replicas of vehicles of similar heritage down under. Mr Magnusson might consider a move, depending how his appeal goes.

1. Jaguar Land Rover v Creare Form AB et al, PMT 15833-18.
2. Via his company Creare Form AB.
3. But more are on the way – see below.
4. An arm of JLR established in 2017 dedicated to the production and maintenance of historic models as well as the manufacture of new parts for them.
5. Extracts from Mr Magnusson’s presentation to JLR are annexed to the judgment of the Swedish Court.
6. https://forums.autosport.com/topic/217191-jaguar-land-rover-a-brutal-own-goal/
7. Which held (at [26]) that “…subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his [sic] personality in that subject matter, as an expression of free and creative choices.”
8. Section 22 Copyright Act 1994
9. Section 75 Copyright Act 1994
10. JLR made 53 C-types. Conversely Ferrari only made 36 250GTOs and could still assert some rights here.
11. Except a sculpture that is not a cast or pattern for an object that has a primarily utilitarian function, and works of architecture, to which the exception does not apply.
12. Thornton Hall Manufacturing Ltd v Shanton Apparel (No 2) [1989] 1 NZLR 239 , (1988) 3 TCLR 240 (HC) and Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216 , (1994) 6 TCLR 23 (HC)
13. Works of artistic craftsmanship are generally hand-made pieces of which no two are identical such as jewelry, pottery and knitting but require some artistic merit which is objectively assessed: Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216, (1994) 6 TCLR 23 (HC). In Burge v Swarbrick [2007] HCA 17 , (2007) 232 CLR 336 , 72 IPR 235 the High Court of Australia rejected an argument that a molding tool, or “plug”, used in the manufacture of yachts was a work of artistic craftsmanship.
14. The reverse is also true, with some Australian businesses finding that what is permissible in Australia falls foul of New Zealand’s unique copyright laws. See for example Jeanswest Corp (New Zealand) Ltd v G-Star Raw CV [2015] NZCA 14, (2015) 13 TCLR 787 involving copied jeans.