We previously blogged on the Advocate General's opinion in February 2020 (On Yer Brompton Bike – AG advises that exclusively functional shapes cannot be protected by copyright) and on 11 June 2020, the CJEU confirmed that where the shape of a product is solely dictated by its technical function, that product cannot be covered by copyright protection.
However, if the product is only partly dictated by its technical function but is also an original work resulting from intellectual creation, in the sense that the author "has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality", then copyright can subsist.
In other words, where a design merely has a number of functional aspects, but these are also combined with sufficiently original creative elements, it may be eligible for copyright protection.
It will now be for the Belgian court to decide on the particular facts of this case, whether the Brompton bicycle is a work whose shape is exclusively dictated by technical constraints or whether there is still room for creative freedom.
Brompton is a UK company which has marketed and sold the compact Brompton bicycle in its current form since 1987. The Brompton bicycle design is popular because it has three different positions – folded, unfolded, and a stand-by position so it can stand up balanced on the ground. The bicycle was once protected by a patent which has now expired but there has never been any reference in the proceedings to any protection under design law.
Rival Korean company, Get2Get, markets a bicycle, called the 'Chedech' (which means 'righteousness' in Hebrew) which is visually very similar to the Brompton bicycle and which can also fold into the same three positions as the Brompton bicycle.
In November 2017, Brompton brought an action for copyright infringement in the Companies Court, Liège, Belgium, which Get2Get defended on the basis that the appearance of its bicycle was dictated by technical function and accordingly, the bicycle could only be protected under patent law (and the patent had expired), not copyright. (NB. EU and UK design and trade mark law both contain provisions excluding protection for designs and shape marks with a technical function (in order to prevent monopolies on technical solutions), but there is no counterpart in copyright law).
Brompton claimed that there were other bicycles on the market, which also folded into three positions, but they were different in appearance to the Brompton bicycles, so it was clear to see they had made creative choices and that the Brompton bicycle was original and could therefore claim copyright protection.
The Belgian court considered whether the CJEU's decision in Doceram, which related to design law, could also apply in this copyright context. In Doceram, the CJEU ruled that when determining whether the features of the appearance of a product are exclusively dictated by technical function, it must be established that the technical function is the only factor which determined those features and the fact that other alternative designs exist is not decisive.
However, the Belgian court needed further clarification and therefore referred the following questions to the CJEU:
- Must EU law (in particular the InfoSoc Directive (2001/29) which sets out the various exclusive rights for copyright owners), be interpreted as excluding works whose shape is necessary to achieve a technical result?
- When assessing whether a shape is necessary to achieve a technical result, should you take into account the following criteria
- The existence of other possible shapes which allow the same technical result to be achieved?
- The effectiveness of the shape in achieving that result?
- The intention of the alleged infringer to achieve that result?
- The existence of an earlier, now expired patent on the process for achieving the technical result sought?
Articles 2 to 5 of the InfoSoc Directive protect authors against the unauthorised reproduction, communication and distribution to the public of their works. The starting point for the Court of Justice, therefore, was to look at the concept of a "work", which, according to the seminal ruling in Cofemel (which explored copyright protection in the design of jeans), has two conditions – (i) it entails original subject matter which is the author's own intellectual creation; and (ii) it requires the expression of that creation.
To fulfil the first condition of originality, the design must reflect the personality of its author, 'as an expression of free and creative choices'. To fulfil the second condition, it is necessary to be able to identify the design with sufficient precision and objectivity (which it had been in this case and was not in issue).
The CJEU therefore needed to focus on whether the folding Brompton bicycle, despite its technical constraints i.e. that the shape of the bicycle was necessary to allow it to fold into three positions, was still worthy of copyright protection because it was an original work resulting from intellectual creation. The CJEU re-confirmed that where a shape is solely dictated by its technical function, then that product cannot benefit from copyright protection. However, the CJEU said that, ultimately, it was up to the referring court to make the final call on the extent to which the Brompton bicycle is dictated by its technical function and the extent to which the author has 'expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality'.
The CJEU reiterated the approach adopted in Doceram that even though there are other possible shapes of bicycles in existence achieving the same technical result, and therefore demonstrating that there is a possibility of choice, it is not decisive in assessing the factors that influenced the choice made by the creator. The intention of the alleged infringer is also irrelevant in an assessment.
In terms of the relevance of the now expired patent and the effectiveness of the shape in achieving the same technical result, the court said they could be taken into account but only if those factors helped to reveal what was taken into consideration when choosing the shape.
The CJEU stated that in order to assess whether the Brompton bicycle is an original creation, the referring court must take into account all relevant aspects of the case at hand, as they existed when the bicycle was designed, irrespective of factors external to and subsequent to the creation of the bicycle.
This could be seen as a positive ruling for designers in that it could open up the possibility for original industrial designs to benefit from the longer term of copyright protection. As the Advocate General neatly put it, there is no reason why 'mixed designs', being those which combine functional and artistic elements, should be excluded from copyright. However, it will really depend on how the national courts assess each individual case on the relevant facts and apply this 'intellectual creation' test. It will be interesting to see what sort of evidence will be necessary to assist the court in assessing whether the author has sufficiently expressed his creative ability by making free and creative choices.
When considering designs that combine artistic and technical/functional elements, it can sometimes be difficult to separate out the creative aspects from the functional aspects, so it will be interesting to see how the Belgian court determines this case and the extent to which it is able to distinguish those creative features of the Brompton bicycle, from the functional ones (e.g. wheels, chain, frame and handlebars which a bike needs to be functional), so as to allow room for copyright protection.
It will also be important for any national court, when considering cases such as this, not to overlook the difficulties in relation to cumulative protection. Even though the general rule confirmed in Cofemel is that the protection of designs and the protection of copyright may, in principle, be granted cumulatively to the same subject matter, national courts will need to ensure that a careful balance is struck between the different, yet overlapping rights, and that copyright is not used as a means to circumvent the shorter term of protection of other rights.
So it is over to the Belgian courts for the next leg of this journey which by no means looks like an easy ride!
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