On 11th June 2020, the Court of Justice of the European Union (‘CJEU’) handed its key decision Brompton Bicycle Ltd. v. Chedech / Get2Get (Case C‑833/18). In this judgment several points are discussed, including the overlap between copyright and design law and whether a mass-produced product such as the Brompton bicycle, with a design which is functional, can be subject to copyright protection.

Following earlier case law, the CJEU provided that copyright can protect products whose shape is, at least in part, necessary to obtain a technical result as long as the design is original. In this case the CJEU focused more on the originality requirement of a copyright work and how it is to be assessed in relation to functional designs.

This interpretation has given rise to much discussion and it will be interesting to see how this decision will be viewed and implemented under Irish and UK copyright law. Moreover, one could also foresee some changes in relation to designers’ rights in practice and new trends in intellectual property protection.

Details of the Case

The Brompton bicycle is a foldable bicycle which was created in 1975. The bicycle’s tripartite folding mechanism was formerly subject to patent protection which has now expired. Another company, Get2Get, the defendant in this case, also sold a folding bicycle under the trade mark Chedech which was visually similar and which could also fold into three different positions. In 2017, Brompton brought an action for copyright infringement in the Belgian courts with a request to withdraw Chedech from the market.

Get2Get claimed that copyright could not be invoked in this case as the appearance of the bike is solely dictated by its function of folding up and consequently, it is only protectable under patent law. Brompton Bicycle Ltd (Brompton) reiterated that the shape is indeed protected by copyright since the positions afforded by the bicycle could be achieved using different shapes, making it original.

Belgian law applies the theory of the multiplicity of shapes which provides that if there is proof that there are other possible shapes which allow the same technical result, then the contested shape is not considered necessary to achieve a technical result. Nevertheless, the Belgian court referred to the CJEU for a preliminary ruling to clarify its interpretation. In particular, the Belgian court referred the question of whether Articles 2 to 5 of the InfoSoc Directive (2001/29) must be interpreted to mean that copyright protection is afforded to a product whose shape is necessary to obtain a technical result.

What Constitutes a ‘work’?

In its deliberation, the CJEU referred to settled case law on the notion of what constitutes a “work” subject to copyright, such as Cofemel v G-Star (C-638/17). In that case, the CJEU had confirmed that a “work” which could benefit from copyright protection must: (i) embody an original subject matter that reflects the personality of its author, as an expression of their free and creative choices, and (ii) the subject matter must be identifiable with precision and objectivity.

The Originality Requirement

The CJEU held that copyright can protect a product’s shape which is, at least in part, necessary to obtain a technical result, provided it is original. It follows then, that if the shape of the product is solely functional then this cannot be protected by copyright, as in that case there would be clearly no room for a designer’s creative freedom and hence, it would not be original (Brompton, § 24). When the subject matter is exclusively functional, copyright protection cannot be sought because the methods of implementing an idea are very limited and consequently, there is no difference between the idea and the expression. On the other hand, copyright protection arises if, a product is functional in part and despite this, the author still managed to express their imagination and personal expression in the shape chosen.

Consequently, how is one to assess this originality factor in a product? To answer this question, the Court provided that originality should not be assessed with regard to the idea per se, but rather to its expression. The CJEU provided the following criteria when assessing whether the originality requirement has been satisfied having regard to a shape which is necessary to achieve a technical result:

  • Account should be taken of all the relevant aspects of the product, as they existed when that subject matter was designed;
    • the existence of other possible shapes is not a decisive factor of originality. The Brompton design owner had previously claimed this as one of the factors of Brompton’s originality. This therefore, rejects the theory of the multiplicity of shapes
  • the intention of the infringer is irrelevant to decide whether the shape is original; and
  • the existence of an earlier patent, and the effectiveness of the shape in achieving the technical result is not a decisive factor of originality. They are only relevant when determining the reason why the author has chosen the shape in question.

The CJEU held that the Brompton bicycle is identifiable with sufficient precision and objectivity. So the question that remains is whether it is an original work resulting from intellectual creativity.  Following this preliminary ruling, the decision is now with the referring Belgian court which will need to consider the above factors to assess whether the Brompton bicycle is in fact an original work to qualify for copyright protection.

Comments

This judgement presents a logical application of copyright principles when commenting on the idea of originality and re-affirming the idea/expression dichotomy. The CJEU confirms that a product which was subject to one form of intellectual property is not barred protection by another right. As a result, there are cases where designers will benefit from protection under both design and copyright law.

This decision is a potential game changer in the design world and will certainly have an impact on the IP choices designers will make. The Court’s decision to grant copyright protection to a product’s design will bring about long-term copyright protection as opposed to a maximum of 25 years protection provided by design rights. Moreover, designers might also be able to rely upon copyright when other IP rights such as registered designs or patent rights have expired, as in the Brompton case.

The UK Copyright, Designs and Patents Act 1988 stipulates that for a product with a functional result to be granted copyright protection, it must be a ‘work of artistic craftsmanship’. This is quite a limited category of goods as the requirements are stringent in this area while also being unclear as products can be produced by a craftsman who is also artistic. As a result of this ambiguous area, designers have commonly applied for design rights for their products and generally do not avail of automatic copyright protection which allows longer protection.

Moreover, that this requirement is at odds with the developing CJEU interpretation of the InfoSoc Directive as is apparent in Cofemel and Brompton. This interpretation may bring forth the need to evaluate whether the requirement for a work to be ‘of artistic craftsmanship’ should be accompanied by the originality requirement introduced by these cases.

Notwithstanding this fact, it might be the case that the UK will not be bound by this decision as the binding power of CJEU judgments upon the UK are now coming to an end as the UK-EU Withdrawal Agreement comes into force.

Additionally, the Community Unregistered Design Right (CUDR) protection in the UK will cease to apply after 31st December 2020 due to Brexit. While there is some provision under UK law for unregistered design rights there are differences in criteria and requirements and therefore some designs covered by a CUDR may not be cover by the equivalent UK right. UK Product designers or manufacturers might look to copyright instead. In this regard, it might be a good time for professionals in the industry to properly consider their options in relation to their intellectual property.

Should you need advice on your options related to copyright or design rights, please reach out to us on mail@maclachlan.ie or info@ansons.co.uk.  We would be happy to help.

Also, feel free to attend our webinar on Wednesday, 30th September at 12.30 to discuss these aspects in more detail. You can book a place at our webinar here . If you cannot make our webinar on 30th September, but would like to know more, please register anyway and we will share the recording of the webinar with you.