IS TECHNICAL DESIGN OF A PRODUCT ELIGIBLE FOR COPYRIGHT PROTECTION? CJEU DECISION IN BROMPTOM BICYCLE CASE

Since its ruling of Infopaq 11 years ago, the Court of Justice of the European Union (CJEU) has made another step further in defining and constructing legal framework of copyright protection. In the case of  Brompton Bicycle, C-833/18 it has issued yet another ruling regarding the question when and under which terms does copyright arise.This time regarding the functional shape of the product and its possibility to be protected under the InfoSoc Directive.

Brompton Bicycle Source: Case C‑833/18 Opinion of Advocate Genereal M. Campos Sánchez-Bordona delivered on 6 February 2020

This awesome Bromptom bicycle has received several design rewards, it has been exhibited in various museums and has been a subject to various disputes in the past. Following its invention, Brompton protected its bicycle’s folding mechanism under the patent system in 1979. After 20 years of protection the patent expired and entered public domain. However, if the entire bicycle or part of its configuration is original, it could be protected via copyright system and unauthorized reproduction could be prevented until 70 years after the death of the author Andrew Ritchie.

In 2020 the Bromptom Bicycle Ltd filled a suit against its competitor Korean company Get2Get for copyright infringement.

Chedech / Get2Get bicycle Source: Case C‑833/18 Opinion of Advocate Genereal M. Campos Sánchez-Bordona delivered on 6 February 2020

In response to Brompton’s claim Get2Get argued that the appearance of the Brompton product is dictated by technical function and that the folding technique is the most functional method, which results in that kind of visual apperance of their product. Brompton Bicycle argued, that there are other three-position folding bicycles on the market, whose appereance is different then their own bicycle. They also claimed, that creation of the product is a result of free and creative choices and that it is original.. The Tribunal de l’enterprise de Liege was unsure whether copyright could subsist in an object whose shape is necessary to achieve a technical result, so they asked for preliminary ruling to the CJEU here. The court in Belgia wondered whether any of the folowing criteria regarding Articles 2 to 5 of Directive 2001/29/ EC (here) should be taken under account in the assessment:

  • exclusive rights granted to the copyright holders exclude the protection of those ”works whose shape is necessary to achieve a technical results”?
  • 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?

The Tribunal de l’enterprise de Liege, did not however indicate whether the appearance of the Brompton bike was also protected by design right. Patent is acquired for invention which is new and useful as well as for its functions and process as well. Design protection on the other hand is obtained in order to protect the aesthetic or ornamental features of the product. In any case, a prior patent or design protection should be used to asses technical specific.

In its opinion, CJEU considered that if the technical function of the product prevails and the appearance or form shape is exclusively dictated by that technical function,  copyright protection is excluded.  Expired patent may serve as a clarification of whether the shape of the product was primary imposed by technical constraints.  According to CJEU, the willingness of the alleged infringer to achieve the same technical result is not relevant.

On 11th of June the CJEU decided that the shape of the bike needs to obtain the technical result, however the product can be seen as work that can be protected by copyright and therefore the author in title will enjoy the exclusive rights recognised in Articles 2 to 5 of Directive 2001/29/ EC .(here The Court concluded that copyright protection is available to product whose shape is, at least in part, necessary to obtain a technical result in so far that a product is an ‘’original in the sense that it is author’s own intellectual creation’’ that results from their ‘’free and creative choices and reflects their personality.’’

In any case, a prior patent or design protection should be used to asses technical specifications for the shape of the product.  As Advocate General explained: ‘’The inventor has assumed that the patented shape is suitable for achieving the desired functionality. Moreover, patent descriptions were so detailed that the functionality could be easily clarified on the basis of them. ‘’ He also stated that: ” In any event, an exclusion from copyright should only take place if the functional elements take precedence over the artistic elements to such an extent that the latter are irrelevant.’’

It is now up to Court in Belgia to decide.

Comment

The fact that the Court was prepared to grant copyright protection to product design and therefore long term intellectual property protection has a potential to really change intellectual property law in the context of design.  It builds and extends copyright protection to functional products across all EU members and it can seemingly be applied for example to fashion industry. In comparison to unregistered design rights that lasts for 3 years in EU or patent rights (20 years), copyright protection lasts for a lifetime of creator (in UK it lasts 70 years after the death of an author). copyright protection for key designs will be a welcomed possibility by designers who will seek to rely upon copyright. Besides, for copyright protection there are no registration requirements. The CJEU endorsed its opinion did not display any list of factors, although some are mentioned, probably because it prefers to leave this assessment to the national court. That is very wise and in sync with autonomy of EU members, however it could result in some misunderstandings, disharmony and another references to court.   

It will be interesting what the Belgian court decides. It is hard to asses whether a shape is original enough and not entirely dictated by function.