By: Alexis Fierens and Gert-Jan Fraeyman

On June 11, 2020, the Court of Justice of the European Union (“CJEU”) issued an important decision in relation to a request for a preliminary ruling from the Commercial Court of Liège (Belgium) concerning the question whether shapes with a technical function can obtain copyright protection.

  • Facts

Brompton Bicycle Ltd. (hereinafter “Brompton”), an English company, markets a folding bicycle, sold in its current form since 1987 (the “Brompton Bicycle”).

The particular feature of the Brompton Bicycle is that it can have three different positions: (i) a folded position; (ii) an unfolded position; and (iii) a stand-by position enabling the bicycle to stay balanced on the ground. This feature of the Brompton Bicycle was protected by a patent which has now expired.

Get2Get, a South-Korean company, also markets a folding bicycle under the brand name “Chedech” (the “Chedech Bicycle”) which is visually very similar to the Brompton Bicycle and which may fold into the same three positions as the Brompton Bicycle.

On November 21, 2017, Brompton brought an action before the Commercial Court of Liège, seeking a ruling that the Chedech Bicycle infringes Brompton’s copyrights and its founder’s moral rights and, consequently, an order that Get2Get should cease its infringing activities and withdraw the Chedech Bicycle from all sales outlets.

The Commercial Court of Liège decided that although shapes necessary to obtain a technical result are excluded from copyright protection, the fact remains that doubt arises when such a result can be obtained by means of other shapes. Therefore, the Commercial Court of Liège decided to stay the proceedings and to ask the CJEU whether Articles 2 to 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (the “Infosoc Directive”) 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.

The referring court furthermore asked whether account must be taken of the following criteria when assessing whether a shape is necessary to achieve a technical result:

  • 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.

 

  • CJEU decision

Articles 2 to 4 of the Infosoc Directive determine authors’ exclusive rights as regards the reproduction, communication and distribution of their works. Article 5 of the Infosoc Directive provides the exceptions and limitations to those exclusive rights.

In its analysis, the CJEU referred to its recent, and widely commented, Cofemel decision of 12 September 2019 (C-683/17) in which it considered that:

  • the concept of a ‘work’ has two conditions: (i) it entails an original subject matter which is the author’s own intellectual creation; and (ii) it requires the expression of that creation;
  • as regards the first condition, if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of the author, as an expression of his free and creative choices;
  • in that regard, a subject matter cannot be regarded as possessing the originality required for it to constitute a work and, consequently, to be eligible for copyright protection if the realisation of that subject matter has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom; and
  • as regards the second condition, the concept of a ‘work’ necessarily entails the existence of a subject matter that is identifiable with sufficient precision and objectivity.

On the basis of these considerations, the CJEU established that a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices.

In that regard, the Court noted that the criterion of originality cannot be met by the components of a subject matter which are differentiated only by their technical function. This follows from the principle that copyright protection does not extend to ideas (Article 2 WIPO Copyright Treaty).

The Court noted in the case at hand that the shape of the Brompton Bicycle appears necessary to obtain a certain technical result, namely that the bicycle may be folded into three positions, one of which allows it to be kept balanced on the ground. However, the CJEU elaborated that it is for the referring court to ascertain, taking into account the above mentioned conditions and considerations, whether, in spite of the functional shape, that bicycle is an original work resulting from intellectual creation.

According to the CJEU, that cannot be the case 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 or room so limited that the idea and its expression become indissociable.

The Court reiterated that where the shape of the product is solely dictated by its technical function, that product cannot be covered by copyright protection.

In relation to the question of the referring court on the various criteria that may be taken into account for the assessment, the CJEU held that, 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, this is not decisive in assessing the factors which influenced the choice made by the creator. In that respect, also the intention of the alleged infringer is irrelevant.

As regards the existence of an earlier, now expired, patent and the effectiveness of the shape in achieving the same technical result, the Court concluded that those factors should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

The CJEU concluded that Articles 2 to 5 of the Infosoc Directive must be interpreted as meaning that copyright protection 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 as the author has made free and creative choices in such a way that the shape reflects his personality, as to be determined by the national courts taking into account all relevant aspects of the dispute at hand.

  • Conclusion and analysis

By this ruling, the CJEU confirmed its settled case law that functional shapes can be ‘works’ within the meaning of Article 2 of the Infosoc Directive and that the originality criterion must be applied in the same manner as to non-functional shapes.

This decision must also be seen against the background of the controversy of this issue in legal literature and case law.

In the Benelux, for example, two opposing doctrines exist on this matter. According to the ‘result-oriented’ theory (resultaatgerichte leer), also known as the ‘multiplicity of forms’ theory, the mere fact that alternative technical solutions exist, should be the decisive factor to decide on copyright protection. In other words, copyright protection can be granted if the same technical result can be achieved through alternative technical solutions. According to the second (majority) theory, the ‘device-oriented’ theory (apparaatgerichte leer), the ‘technical function’ exclusion applies even though alternative technical solutions are available if the features of appearance of a product are determined solely for the creation of a technical solution and aesthetic considerations are irrelevant. In other words, copyright protection cannot be obtained if the creator only made technical choices.

Accordingly, in its decision, the CJEU seems to have rejected the result-oriented (or multiplicity of forms) theory as it held that the existence of other possible shapes which allow the same technical result to be achieved is – although apparently not irrelevant – ‘not decisive’.

As the CJEU concluded that the national courts must determine whether, through that choice of the shape of the product, its 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 confirmed that originality remains the only requirement that must be fulfilled.

However, the Court did not provide any criteria that can be taken into account when making the originality assessment. The Court only provided guidance on the four criteria mentioned by the referring court. In that respect, the CJEU rejected the proposal of the Advocate General M. Campos Sanchez-Bordona to take into account, not the intention of the infringer, but rather the intention of the author.

This decision furthermore confirms the open-minded approach of the CJEU, in line with its decision in Cofemel (C-683/17) and, in relation to trade marks, its decision in Gömböc (C-237/19), on the potential cumulation of intellectual property rights. In that context, the CJEU emphasised in the decision at hand that in order to assess whether the Brompton Bicycle is an original creation and thus protected by copyright, the referring court must take into account all relevant aspects for the assessment under that right, as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product (such as an earlier, expired, patent).