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15th June 2020
Data, Tech & IP

Analysis: “Brompton bicycles: is copyright protection available for shapes?” by Sabine Jacques

Last Thursday, the Court of Justice of the European Union (CJEU) handed down its decision in the Brompton Bicycle case (C-833/18) on whether functional shapes are eligible for copyright protection. The referral questions were brought by a Belgian court (Tribunal de l’entreprise de Liège) in the context of a copyright infringement action against a Korean company selling comparable folding bikes. This case is of interest as it deepens the understanding of the possibility of overlapping intellectual property rights over the same item. It also offers the  CJEU the opportunity to clarify the protection granted to shapes which are dictated by a functional element.

The object of copyright protection

According to settled CJEU case law, copyright protects ‘works’ and this concept should be given autonomous and uniform interpretation throughout the EU territory (Cofemel (C‑683/17), paragraph 19; Levola (C‑310/17), paragraph 33). The initial question therefore revolves around whether shapes which are dictated by technical function fit within the scope of ‘work’ for copyright protection. To be protectable, a work needs to satisfy two conditions: (1) the work needs to be original; (2) the work needs to be expressed in some material form.

On originality

The CJEU has already had the opportunity to clarify the meaning of ‘originality’ – one of the required elements for copyright protection to be granted – in relation to utilitarian objects (Cofemel, paragraph 31; SAS Institute (C‑406/10), paragraphs 39-46; and Painer (C-145/10), paragraph 85). With the Brompton Bicycle decision, the CJEU confirms that if the subject-matter represents the author’s own intellectual creation through an expression of ‘free and creative choices’, originality is satisfied (Brompton, paragraph 23; Cofemel, paragraph 30). The limit that determines that originality is not satisfied is if the shape of the subject-matter is driven solely by a specific technical result without leaving any room for creative choices (Brompton, paragraph 24; Cofemel, paragraph 31).

Identifiable and objective expression

The CJEU found no difficulty in finding that the shape of the bike constituted expression, in a material form given how easily identifiable this shape was. In short, the second requirement was met.

Shapes necessary for obtaining a specific technical result

The crux of the discussion therefore revolved around whether a shape necessary to obtain a certain technical result (such as a bike that can be folded into three positions) allowed for creative freedom and therefore, was eligible for copyright protection. Whilst the CJEU only offers interpretative guidance and will not make a decision based on the facts of this particular case, it nevertheless notes that some factors may help judges. First, the CJEU notes that the intention of the alleged infringer is irrelevant and that the sole existence of alternative shapes for a technical result is not decisive (Brompton, paragraph 35). Second, the CJEU adds that the existence of a prior, but expired, patent and the effectiveness of a particular shape in achieving a specific technical function may be relevant only insofar as these may assist judges in determining why a specific shape was eventually chosen by its creator (Brompton, paragraph 36).

It is now for the Belgian court to decide whether the actual shape of the Brompton bikes results from free and creative choices, reflecting the author’s personality.

Intellectual Property Rights Overlap

With this decision, the CJEU leaves the door open to intellectual property rights overlapping in subject-matter by building on the recent Cofemel decision. The important lesson is that the subject-matter has to be assessed based on the way it was created irrespective of external factors, including the existence of earlier intellectual property protection. How domestic courts will apply the findings of this case to avoid the monopolisation of an idea (such as a shape), or ensure that design protection is not granted under the cover of copyright, remains to be seen. If caution is not exercised, there could be disastrous consequences as it would run against the fundamental principle that copyright only protects expressions rather than ideas as required under Article 9(2) TRIPS Agreement and EU copyright law. Therefore, although the path taken and factors are welcomed, extreme caution must be given to the automatic and long-term protection granted through copyright for utilitarian objects.

The ruling can be found here.

 

Sabine Jacques is a Senior Lecturer in IP/IT/Media Law at the University of East Anglia.

 

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