When does a technical product become eligible for copyright protection? This is the question the Court of Justice of the European Union (CJEU) has been grappling with in a series of recent decisions. The most recent decision on this question is Brompton Bicycle Ltd v Chedech/Get 2 Get (C‑833/18), relating to the design of their iconic folding bicycles. This decision followed the earlier decision in Cofemel (C-683/17).
The CJEU have previously held that EU law requires Member States to confer copyright protection to designs which meet the requirements for copyright (Flos (C-168/09)). A number of member states, including Italy and the UK, previously had limitations upon works which would typically be considered as industrial designs which prevented them from copyright protection, or limited the length of its term.
With the Cofomel judgement, the CJEU confirmed that copyright protection can co-exist with design protection and arises simply when the subject matter has “originality”. To be original the subject matter must reflect “the personality of its author, as an expression of his free and creative choices”. Any other requirements such as artistic merit are not compatible with EU law. Cofomel related to the sale of a certain style of jeans, which is perhaps more similar to an artistic work that would be more commonly understood to be protected by copyright.
The decision in Brompton Bicycle Ltd v Chedech/Get 2 Get shows the law being tested in a field even further away from artistic works. As people that regularly travel on trains will know, Brompton Bicycles Ltd (Brompton) produce a folding bicycle aimed at commuters. The bicycle can be folded between an arrangement for cycling, a smaller arrangement for carrying and storage, and a stand-by arrangement where the bicycle remains upright for parking. This is technical subject-matter which may naturally feel more comfortable as the subject of a patent, which it was in EP 0 026 800 B1. The patent was of course limited to a 20 year lifespan, which expired in 1999.
Competitors could thus be forgiven for thinking that they would be free to make their own folding bicycle substantially similar to the Brompton bicycle as the patent has expired. Chedech manufactured and sold their own folding bicycle in Belgium, with the same three configurations. This prompted Brompton to bring an action against Chedech for copyright infringement of their bicycle.
Chedech argued that the design could not be protected by copyright as the appearance of the bicycle is dictated by its technical function – it needs to be able to fold and unfold between the three positions. In response, Brompton argued that the appearance is not solely dictated by this technical function as a folding bicycle could use different mechanisms with different shapes.
The Belgian Companies Court heard the arguments and referred these questions to the CJEU:
- Are products whose shape is necessary to achieve a technical result excluded from copyright protection?
- When assessing whether a shape is necessary to achieve a technical result, is the court required to consider:
a. the existence of other possible shapes;
b. the effectiveness of the shape in achieving the result;
c. the intention of the infringer to achieve the result; and
d. the existence of an earlier patent right.
Ultimately, the CJEU addressed question 1 by reiterating Cofemel: the only requirement for copyright protection is that the work is an original expression of the author’s free and creative choices. The impact of the need to achieve a technical function affects whether or not the work is original. If the author is able to express creativity and personal choice then the work is original. If the shape is solely dictated by the technical function then the author has not had the required choice and hence the work is not original and does not qualify for copyright protection.
With regard to points a. through to d., the CJEU held that a. is “not decisive”. For b. and d., these are to be taken into account “only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape”. That is, they can act as indicators that the author did have free choice so as to make the work original. The intention of the infringer in point c. was held to be “irrelevant”.
Therefore, the decision of the CJEU affirms that copyright protection is available for utilitarian products, even those which have previously been the subject of a patent or a design registration. It remains to be seen how wide a scope the concept of “originality” will be given by courts in future decisions based on works more traditionally associated with designs and patents. It is too soon to say that these recent decisions have opened the floodgates for copyright actions in such cases. However, they do highlight the need for competitors to be especially careful when attempting to move into a new marketplace simply because a patent or design right has expired.
Finally, it should be noted that UK law is currently at odds with these recent decisions in that it provides a specific list of categories in order to qualify for copyright protection. With the end of the Brexit transition period approaching on 31 December this year, it will be interesting to see if there is any movement to change this for a harmonised approach.
If you have any questions about your own designs, or those of a competitor, please contact your usual representative.