“[T]he CJEU found that where the design of an original work has not been so dictated by technical considerations that an author’s personality is still reflected in the work ‘as an expression of free and creative choices,’ that work may be protected by copyright.”
On June 11, the Fifth Chamber of the Court of Justice of the European Union (CJEU) issued a decision in Brompton Bicycle Ltd. v. Chedech/Get2Get in which the EU’s highest court held that European copyright law extends protection to product shapes producing a technical result when the shape is an original work resulting from the author’s intellectual creation. The decision is notable both for the CJEU’s departure from the advocate general’s opinion in the case as well as its sharp contrast to U.S. copyright law, where copyright protection is expressly prohibited for product designs that have utilitarian, functional aspects.
The case stems back to a complaint filed by Brompton Bicycle in Belgium Companies Court in November 2017 against Get2Get, the South Korean-based producers of a Chedech-branded bicycle. The Chedech bike is similar to bikes marketed by Brompton in Europe since 1987 in that it can be folded into multiple different positions. Brompton’s patent covering the folding aspects of the bike had expired so its suit alleged copyright and non-pecuniary right claims. While Get2Get argued that the bicycle’s appearance was dictated by the technical result achieved, and thus protectable under patent law but not copyright law, the court found that Belgian law extended copyright to any creation with an original shape, especially in situations where the technical result can be achieved through other shapes not used by the creator.
CJEU Applies DOCERAM Industrial Design Case to Copyright Law
Impacting the Belgian court’s analysis was DOCERAM v. CeramTech, a March 2018 decision by the CJEU in the realm of industrial design law. The German regional court in that case determined that the community designs asserted by DOCERAM were unprotectable under EU design law. On appeal from DOCERAM, a higher German court found that EU design law included an exception allowing community design protection when a product’s appearance isn’t solely dictated by the design’s technical function. In construing EU law on community design protections, the CJEU found in DOCERAM that, while the existence of alternative designs isn’t decisive, it must be established that the product’s design was solely determined by its function to invalidate design protections. In making this determination, the CJEU charged that national courts must consider all objective circumstances relevant in the case without basing findings on the perception of an “objective observer.”
In referring Brompton Bicycle to the CJEU, the lower Belgian court asked whether DOCERAM, which applies to industrial designs, necessitated a similar finding in the copyright realm. More specifically, the referring court asked Articles 2 through 5 of Directive 2001/29, which protects creators against unauthorized reproduction and distribution of original works, extends copyright protection to products with shapes achieving a technical result. The CJEU noted that the court’s settled case law clearly indicated that no copyright protection exists for a product with a shape that is dictated by technical considerations, regardless of the originality of that shape. However, the EU’s highest court found that where the design of an original work has not been so dictated by technical considerations that an author’s personality is still reflected in the work “as an expression of free and creative choices,” that work may be protected by copyright.
In applying this law to the present case, the CJEU noted that while the Brompton bike’s shape appeared to be necessary to the technical result of achieving the different folded positions, it was up to the Belgian court to determine whether the bike was still a work of intellectual creation by the author’s expression through free and creative choices. The CJEU clarified that the existence of other possible shapes achieving the same technical result was not necessarily decisive in assessing the factors affecting the author’s creativity. Further, the intentions of the alleged infringer are irrelevant in the analysis, and the existence of any expired patents are only relevant insofar as they reveal any of the author’s considerations in choosing the bike’s shape.
Conflicting Opinions from Advocate General Sánchez-Bordona, European Copyright Society
The CJEU’s Brompton decision differs from the opinion filed early this February by Manuel Campos Sánchez-Bordona, the CJEU’s Advocate General in the case. While Sánchez-Bordona noted that, under EU law, protections for copyright and designs may be granted cumulatively, there are limits to concurrent protections and national courts must specify when conditions allowing cumulative protections have been met, balancing the general interest with copyright concerns. Given that the Belgian court appeared to state that the Brompton bike’s shape seemed necessary to achieve the technical result, the AG indicated that copyright protection shouldn’t be extended to the bike in this case. The CJEU’s decision did comport with the AG’s opinion on the analysis regarding the existence of alternative designs, infringer intentions and expired patents. However, the CJEU diverged from the AG by not finding that the author’s intention in achieving the technical result was itself relevant to the analysis of whether a product’s design was dictated by the result.
The CJEU’s decision also conflicts with viewpoints espoused by 16 university professors signing on to an opinion issued by the European Copyright Society (ECS), which advocated that the CJEU should adopt neither the causality approach in DOCERAM nor the extension of the multiplicity of shapes approach from design law into copyright law. The ECS noted that, compared to design law, EU copyright law requires the absence of technical considerations that eliminate room for creative freedom. The ECS largely ruled out the multi-factor analysis proposed by the Belgian court on whether a shape is dictated by a technical result and instead proposed a copyright-specific test which assesses whether the necessity of achieving the result didn’t leave sufficient room for creative choices. Such a test would involve two steps: first, the court’s determination on whether the required criteria on a work’s originality have been met; and second, identifying features of the work which aren’t individual expression and thus not copyrightable. The ECS cautioned against the extension of copyright protections under the reasoning in DOCERAM, noting that the EU’s copyright system doesn’t publicize protected works for the notice of third parties despite the long exclusivity period of protected works under copyright law.
Brompton Bicycle conflicts squarely with the United States’ take on copyright protections covering useful articles, or products like furniture, clothing or machinery that have an intrinsic utilitarian value. While U.S. copyright law might protect graphic or sculptural authorship identified separately from a useful article’s utilitarian aspects, mechanical or utilitarian aspects of works of craftsmanship are flatly denied copyright protection under U.S. law. While there have been some attempts by Congress to create sui generis protection for designs of certain useful articles, such as designs for boat vessel hulls, it would seem that the functionality of the foldable design in the Brompton bike at issue in the CJEU case would preclude protection of the bike’s design under U.S. copyright law.
Benoit Van Asbroeck, Partner at Bird & Bird and Counsel for Brompton Bicycle, had the following to say about the win:
We are delighted by the ruling and in particular that the CJEU did not follow the opinion of the AG who considered that when the intention of a designer is to have its original design massively produced it could not be eligible for copyright protection. The AG considered further that granting copyright protection to industrial design is disproportionate towards the limited duration of protection of patents and design and models. Fortunately, the CJEU disregarded this attempt to limit the cumulation of IP rights. Finally, the AG was suggesting that only decorative non-functional parts of an industrial design could benefit from copyright protection. In other words, minimalist designs would not be protected anymore by copyright. Fortunately, the CJEU did not go that route. Thanks to this seminal ruling companies like Brompton focusing on original industrial designs will be able to continue to take action against copycats of their products and secure their further development, which plays a key role in the European economy.
This article was updated on June 19 to add the following statement from counsel for GET2GET, Alejandro Marin of Procer Abogados:
The opinion from the Advocate General has not been refused by the CJEU, but just subtly nuanced. What it is clear is that, in functional objects like bikes, designs are narrowed and limited by functionality. If a bicycle can be folded, the creator needs to fulfill this function in order to make the bike compact. Copyright is to protect creativity, originality and art. In this regard, the CJEU is plain: with an expired patent such as Brompton’s, to continue protection under copyright is to monopolize ideas when the product leaves no margin of creation in order to achieve a function. That would mean a much longer period of legal protection for functional objects (75 years after the creator’s death instead of 25), resulting in a very significant slowdown in the product’s progress. It is fair to say that the outcome is evident in the fact that originality and creativity are to be protected, but with limits in functional objects. The dictum, nonetheless, leaves a margin of flexibility for national courts, which will have the last word regarding whether or not the design was the outcome of free choices but limited by reaching regular standards of functionality (such as being able to fold a bicycle).