[Guest post] Jaguar goes after replica car manufacturer for copyright infringement

In a recent case concerning a replica of the Jaguar C-Type sportscar, the Swedish Patent and Market Court was asked to decide, among other things, whether this model, which was created in the UK in 1951, enjoyed copyright protection in Sweden in 2021.  

Katfriend Hans Eriksson (Westerberg & Partners) has analysed the case for us. Here's what Hans writes: 

Replica cars have vexed the car industry for a long time. As the name suggests, replica cars are built to look like historic, discontinued models. They are often manufactured to painstaking historical accuracy in the exterior, while using modern machinery for the interior. And if you want to drive around in a 1956 Aston Martin DBR1, and do not have 20+ million Euro lying around, you might consider a replica the next best thing.

The legal status of replica cars is at the very least complicated. If you plan to drive your replica car to the grocery store, there are obvious regulatory issues with self-built cars, as well as issues concerning safety standards. And if you think you have a hard time finding cheap car insurance for your Volvo, try getting a good quote on your replica Batmobile.

Then there is the IP angle. Cars may be protected by copyright as works of applied art (or conceivably even as artistic works) and may additionally enjoy design and trademark protection. A recent trend has even seen car makers seeking to register the exterior shape of the car itself as a trademark [see for instance the IPKat summary on the Jaguar Land Rover decision here]. Any commercialization of replica cars by third parties carries risk of infringing one or several of these IP rights.

Car makers are well-known for vigorously enforcing their IP rights. In fact, car makers have contributed substantially to the modern development of IP jurisprudence and are repeat players before CJEU in IP litigation (most recently in C-720/18, Testarossa) [Katpost here].

Car makers’ interest in pursuing the replica market for IP infringement has however historically been tempered somewhat by the fact that the dedicated gearheads who make up the replica car market are often also the car makers’ most dedicated brand loyalists. By enforcing its IP against the replica car market, a car maker may risk damaging its reputation with its core customers but, by allowing infringement to continue, that reputation may in time not be worth much.

The Swedish Patent and Market Court's decision in Jaguar Land Rover v Creare Form AB et al, PMT 15833-18

The Swedish Patent and Market Court recently decided an interesting copyright case between Jaguar Land Rover Ltd and Swedish company Creare Form AB, concerning a replica Jaguar C-Type sportscar.

Jaguar’s C-Type sportscar (officially the Jaguar XK120-C where the C is for Competition) is likely one of the most iconic sportscars of all time. The C-Type, with its instantly recognizable cartoonish tubular frame and sleek design, was created for racing and famously won the Le Mans 24 hours race in 1951. Only 53 C-Type racers were built between 1951-53 and these cars command astronomical prices on the vintage car market today. This scarcity has no doubt contributed to a thriving market for replica C-Type cars.

The case dealt with a number of interesting copyright questions, the most interesting of which are described below.

Can a work of applied art, created in the UK in 1951, enjoy copyright protection in Sweden in 2021?

In 1951, what we today call works of applied art enjoyed protection for a term of ten years in Sweden, according to the 1919 copyright legislation (In Swedish: Lag om rätt till verk av bildande konst). As Sweden was a Berne Convention signatory, a work of applied art created in the UK in 1951 thus enjoyed protection in Sweden until the end of 1961.

Conveniently for the plaintiffs in this case, the new Swedish Copyright Act entered into force early in 1961 and immediately extended the term of protection for all protected works of applied art for an additional ten years, extending the C-Type’s term of protection to the end of 1971.

In 1970 the Copyright Act was in turn amended to give works of applied art a term of protection of 50 years after the creator’s death, which again extended the C-Types protection to 2020. During that time, Sweden became a member of the European Union. The 1993 Council Directive 93/98/EEC, as implemented in Sweden, extended the protection for works of applied art to 70 years after death, leading the court to conclude, after a circuitous route, that the C-Type car model may indeed be protected as a work of applied art in Sweden today.

Is the C-Type a work of applied art?

In assessing whether the C-Type qualified for copyright protection, the court applied the CJEU’s well-known principles (see for example C-145/10, Painer, para 88-94), but with a distinct Swedish touch and focus on what the Copyright Act’s preparatory works (from 1969…) has to say about the originality needed for works of applied art to be protected under the Copyright Act.

In what has become something of a trend in Swedish copyright litigation, the court placed great emphasis on the work of applied art’s “origin story”. Since the C-Type’s creator, automotive aerodynamist Malcolm Sayer (1916-1970) and his contemporaries are no longer alive, the court had to evaluate the evidence invoked by the parties as to whether the C-Type qualified for protection.

With reference to C-833/18, Brompton Bicycle [Katpost here], the court found that the practical constraints put on Sayer by for example the need to design a car to win the Le Mans, while adhering to a distinctly Jaguar style, did not limit Sayer to such an extent that the C-Type did not display many significant free and creative choices. The C-Type thus qualified for protection as a work of applied art.

Who holds the copyright?

The court had to decide whether UK or Swedish law should be used to establish original ownership of the copyright. The court found that Swedish case law had not previously dealt with the issue and applied the so-called CLIP Principles (Conflict of laws in Intellectual Property, European Max Planck Group). The result was that Swedish substantive copyright law should be applied, which led the court to find that Jaguar Land Rover was the original copyright holder. The court also noted that the same conclusion would have likely been reached by applying UK law.

Following a number of structural and legal changes in the Jaguar company’s ownership, Jaguar Land Rover was found to hold the copyright in the C-Type today.

Passivity

Since the defendant’s replica car was just that, a historically accurate copy of the original C-Type in every painstaking detail (including the lack of exterior door handles, sacrificed I assume on the altar of aerodynamics), the infringement question held little suspense.

The defendants did however make one interesting last-ditch objection to copyright infringement that gets to the heart of what makes the replica car market special. They argued that the replica did not infringe Jaguar Land Rover’s copyright, based on Jaguar Land Rover’s alleged decades long acceptance and even celebration of replica car culture in general, and Jaguar Land Rover’s discussions with the defendants about their replica C-Type in particular, at various meetings over the years.

In the end, it came down to a question of evidence, and as Carl Sagan posited with his Sagan standard: extraordinary claims require extraordinary evidence. There had indeed been meetings between Jaguar Land Rover and the defendants but, based on written evidence and witness evidence, the court was not convinced that the defendants had made it clear to Jaguar Land Rover that what they intended to do with their replica C-Type project was a commercial venture, rather than a hobby project for private use. The fact that Jaguar Land Rover had in various way over the years supported or tacitly accepted replica cars and replica car culture did not change this conclusion.

Jaguar Land Rover’s claims for a prohibition on penalty of a fine were granted, as were claims for destruction of the infringing replica cars. Additionally, the court affirmed that the defendants should pay reasonable compensation to Jaguar Land Rover and awarded the car maker full litigation costs to the high-octane level of €500 000 .

While the defendants have already appealed, critical voices among Jaguar enthusiasts wonder if Jaguar Land Rover’s new-found focus on enforcing its IP rights against C-Type replica makers may have anything to do with this January 28, 2021 headline after 70 years of silence: Jaguar Is Launching a C-Type Continuation Series.