Date: 5 August 2020
The Court of Justice of the European Union (CJEU) recently issued their decision in the case Brompton Bicycle, C-833/18
This case originated as a referral from the Belgian courts where Brompton brought a case for copyright infringement for the Brompton bike design drawings against Korean company Get2Get.
The "Chedech bicycle" produced by Get2Get uses the same three fold design as the Brompton bicycle. Get2Get defended their use of the same folding mechanism and similarity of their bike’s appearance. They argued that the appearance and design is dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. Get2Get argued that such an appearance must therefore be protectable only under patent law and not under copyright law.
It is worth noting that Brompton did have a patent granted for its bicycle but this has now expired.
Brompton's counter argument was that the there are many different designs of folding bicycle on the market and that a three position folding bicycle can be obtained by shapes other than those given to that bicycle by its creator. Following this argument, the bike’s shape may be protected by copyright.
The CJEU determined that the questions referred from the Belgium courts could be summed up as:
"Whether Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result."
When assessing this question, the CJEU made reference to the case Cofemel, C-683/17
The CJEU stated that it is settled law that in order to be a copyrightable 'work' the following two conditions must be met:
"First, it entails an original subject matter which is the author’s own intellectual creation and, second, it requires the expression of that creation".
The court did not believe that the second point was at issue because it was clear that "the bicycle appears to be identifiable with sufficient precision and objectivity" and therefore meets the second requirement.
Regarding the first requirement of originality, the court stated:
"it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices" and " where the realisation of a subject matter has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work and, consequently, to be eligible for the protection conferred by copyright".
In other words, if the appearance of the work is solely dictated by its function, then it may not attract copyright protection. Only free and creative choices that are made by the creator, rather than choices dictated by the technical requirements, can have copyright protection.
The CJEU were however of the opinion that a product whose shape is, at least in part, necessary to obtain a technical result may attract copyright protection.
When making this assessment, the court noted:
"even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, it is not decisive in assessing the factors which influenced the choice made by the creator. Likewise, the intention of the alleged infringer is irrelevant in such an assessment."
In summary, the CJEU concluded that Articles 2 to 5 of Directive 2001/29/EC:
"must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".
The case will now go back to the Belgian courts for a decision on whether Get2Get infringed the Brompton bicycle design. Given the judgement of the CJEU, it would appear favourable to Brompton's position that copyright subsists in the design drawings for the Brompton bicycle. This is on the basis that it is accepted by the court that the design is not solely dictated by the function of the foldable bicycle.
This case follows along the same line of case law as the Cofemel case and the previous Flos case C-168/09.
In Flos, the CJEU stated that EU Member States could not deny copyright protection to designs that meet the requirements for copyright protection. This decision led to the repeal of section 52 of the Copyright, Designs and Patents Act 1988 (CDPA).This act limited the duration of copyright in industrial designs to a period of 25 years from the end of the calendar year in which such articles are first marketed.
In Cofemel, the CJEU went further and confirmed that there is no additional requirement for a design to attract copyright other than the provisions set out in the Directive as for any other work. The court also clarified that a design generating an aesthetic effect does not, in itself, make it possible to determine whether that design constitutes an intellectual creation reflecting the freedom of choice and personality of its author. This is at odds to the approach taken in many countries in which artistic value forms part of the determination of if a work attracted copyright protection.
In the present case, the CJEU has again followed these principles and now indicates that prior rights, be they patent or design rights, are not a barrier to enforcing copyright in design drawings. This is provided that the designs are an original work and the shape of the product is not solely dictated by its technical function.
This approach is still at odds with UK law, even after the repeal of Section 52 of the CDPA; Section 51 states:
"It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design."
Section 51 of the CDPA therefore seeks to limit the rights in design documents to design rights and not copyright, unless the result of the copying would be an artistic work. In this instance, it is unlikely that a design document for a bicycle if copied would be held to result in a work of art and, under UK law as it stands, would not be eligible to copyright protection.
This decision may therefore require a further change to the CDPA in order for UK law to correspond to European law as interpreted by the CJEU. However, a further twist is Brexit. While the UK has left the EU, UK law should still follow the decisions of the CJEU during the transition period. That said, it remains to be seen how the UK courts will apply this decision. Please see more information here. It may be that the Brompton case is one of the first instances of a divergence between UK and European intellectual property law.
At the present time, it would appear that the CJEU has provided a way for design right holders to protect their products by using copyright well after the original design rights have expired, provided it can be shown that the design is original and not solely dictated by technical function.
Our team of attorneys are experienced in the enforcement and protection of registered designs. Find more information on our services and expertise here: Design Registration & Protection