Copyright and the protection of the shape of industrial products
The EU Advocate General has been called to express his opinion, in case C 833/18, which deals with the alleged infringement of copyright on the shape of the famous folding bicycle made by Brompton Bicycle Ltd, whose patent is expired. The company claims a copyright infringement against similar bicycle manufacturers. Careful examination has led the Advocate General to allow a restricted space for copyright protection for forms such as the bicycle mentioned.
In the recent past the European Court of Justice has been focusing on copyright protection of the shape of industrial products.
In the seminal Cofemel decision (Judgment of 12 September 2019, Cofemel-Sociedade de Vestuário, S.A, C‑683/17) the court ruled that:
(a) the notion of ‘work’ in the InfoSoc Directive is an autonomous notion of EU law, which requires uniform interpretation across the EU;
(b) national legislation cannot subordinate protection, under copyright, to designs on the ground that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect.
These concepts and findings have been further refined and developed by the Advocate General in the very recent opinion given in the Brompton case (Brompton Bicycle Ltd. v Chedech / Get2Get C‑833/18), dealing with the alleged infringement of the copyright on the shape of the famous “Brompton” foldable bicycle.
The bicycle’s folding mechanism (the main feature of which is that it has three positions: unfolded, stand-by and folded) was patented; the patent however elapsed many years ago; now Brompton is claiming copyright infringement against the manufacturers of similar bikes.
The case went up to the EU Court of Justice, requested to give a preliminary ruling on the possibility to grant copyright protection to the shape of such a product.
The starting point of the analysis is the question if the EU copyright laws, in particular the InfoSoc Directive, could be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result.
It is not easy to construe the notion of “shape is necessary to achieve a technical result”; in the Brompton case the Court explored the following issues:
– 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.
A prudential and careful examination of the above factors led the Advocate General to allow a narrow space to copyright protection for shapes like the Brompton bicycle.
Indeed, he concluded that (a) EU laws do not allow copyright protection of creations of products with an industrial application whose shape is exclusively dictated by their technical function, and (b) in order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.
The Advocate General further clarified that where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.
In case the court shares these conclusions, the easier access to copyright protection for industrial design works introduced by Cofemel would be reduced, at least for designs provided with significant technical functions.
Both the Cofemel decision (Member States shall not discriminate works introducing additional protection requisites for certain categories thereof, like design works) and the Advocate General conclusions in the Brompton case (copyright protection for shapes dictated by technical function can be granted only after a careful scrutiny) are per se reasonable.
Their combined effect results however in a gymkhana for the interpreter, usually dealing with products where aesthetic and technical features are combined and difficult to distinguish; some would indeed say that this is the very nature of industrial design, so that any construction requiring to differentiate these features is probably unsatisfactory.