Out-Law / Your Daily Need-To-Know

Copyright in shape of designs considered in CJEU case

Out-Law News | 10 Feb 2020 | 4:18 pm | 3 min. read

Copyright protection does not apply to designs where the shape of those designs is "exclusively dictated" by their technical function, an adviser to the EU's highest court has said.

However, advocate general Manuel Campos Sánchez-Bordona said that copyright protection might apply in some cases where the shape of designs is linked to, but not exclusively dictated by, their technical function.

He said: "In short, designs whose shape is dictated by technical considerations which do not leave room for the exercise of creative freedom are not eligible for copyright protection. Conversely, where a design merely has a number of functional aspects, that does not deprive it of copyright protection."

In his non-binding opinion, Sánchez-Bordona explained that designers who cannot claim copyright in the shape of their designs may be able to take action under unfair competition laws in some EU countries to combat "slavish or parasitic imitations".

The advocate general set out his opinion in a case referred to the Court of Justice of the EU (CJEU) by a court in Belgium where two companies are in dispute over the rights to a design for a folding bicycle.

According to the opinion, Brompton Bicycle has claimed that it owns the copyright in the design of its folding Brompton bicycle and that Korean company Get2Get infringed that copyright in producing its own folding bike. Brompton had previously obtained a patent for the folding technique for its bicycle, but that patent has now expired. Get2Get has admitted that it deliberately adopted the folding technique which Brompton had invented because it was the most functional method of delivering the technical solution it was seeking, but has claimed that that technical constraint dictates the appearance of its Chedech bicycle.

Copyright law expert Dr. Nils Rauer of Pinsent Masons, the law firm behind Out-Law, said the advocate general's opinion was particularly noteworthy as he had considered EU case law in respect of computer software and applied arts in the field of copyright, as well as other cases concerning the protection for shapes offered in design rights and trade mark law.

"The advocate general's approach could be characterised as holistic and convergent, drawing analogies from other contexts which he said could be applied to the question of whether copyright subsists in the shape of designs," Rauer said. He rightly points out that the difficult cases are those where technical reasons and some freedom of how to shape the product come together. In such case, there must be room for copyright protection, if the product expresses sufficient originality."

Sánchez-Bordona said that to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, courts must take into account all the relevant objective factors in each case. This includes 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, he said.

The advocate general confirmed that where a product has already benefited from patent protection it does not automatically preclude its shape from qualifying for copyright protection. However, he suggested it might be a persuasive factor.

"First, a registered patent may serve to determine whether there were technical constraints which dictated the shape of the product," Sánchez-Bordona said. "It is natural for the description of the design and its functionality to be set out in as much detail as possible in the registration documents for the patent (which, by definition, is intended for industrial application) because the scope of protection depends upon it."

"Secondly, the choice of a patent as the tool for protecting the activity of the person registering that patent permits the assumption that there is a close relationship between the shape patented and the result intended: to be exact, the shape is that which the inventor decided was effective to obtain the desired functionality," he said.

The advocate general also said that the existence of other alternative shapes for products is only a factor in relation to whether copyright applies to those shapes if the technical function of the design is not the only factor determining the product's appearance. However, he said where the shape chosen incorporates "important non-functional elements which were freely chosen by its creator" then this may be a relevant factor for the court to consider.