Law on copyright in shapes clarified in Brompton Bicycle case

However, the Court of Justice of the EU (CJEU) has said that the shape of those designs must be original and reflect the personality of its creator to be eligible for copyright protection.

The court considered the question of whether copyright protection applies to technical designs in a case referred to it by a court in Belgium where two companies are in dispute over the rights to a design for a folding bicycle.

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.

In a non-binding opinion issued in the case back in February, an advocate general to the CJEU expressed the view that copyright protection does not apply to designs where the shape of those designs is "exclusively dictated" by their technical function. That view has now been endorsed by the judges issuing their formal ruling in the case at the CJEU.

However, in circumstances where the shape is only partly dictated by technical constraints, copyright protection is available in principle provided "that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality", the CJEU said. This should be assessed by "bearing in mind all the relevant aspects of the dispute in the proceedings".

In reaching that view, the CJEU said the existence of other possible shapes which allow the same technical result to be achieved is "not decisive" to the issue of whether copyright subsists in the design, and confirmed that it is "irrelevant" whether the author intended to achieve their own intellectual creation.

The effectiveness of the shape in achieving the technical result, or the fact that the design previously benefited from patent protection, now expired, is relevant to the question of copyright only in so far as they reveal "what was taken into consideration in choosing the shape of the product concerned", the court said.

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law, said the ruling is in line with a judgment issued by the CJEU in another case last year in which it held that copyright protection can in some cases be applied to products that also benefit from design rights. In that ruling, the CJEU said the specific aesthetic effect the design produces has no bearing on whether copyright applies to it. Connor said the latest ruling has potential implications for UK case law.

"The CJEU has confirmed last year’s decision in the so-called Cofemel case and made clear that originality in the sense of the author’s own intellectual creation is key," Connor said. "It can be inferred that the need for aesthetic appeal is consigned to history and so it would appear that the Star Wars helmets case is no longer good law although we will have to see how the UK courts interpret the decision."

"The case is also important because it confirms that just because an object attracted one type of IP protection in the past – in this case the Brompton was protected by a patent – that is not necessarily a bar to protection by another IP right," he said.

Frankfurt-based Dr. Nils Rauer of Pinsent Masons said: "Getting the interplay of the various IP rights in adequate balance is highly important given the differing periods of protection. Notably, the current decision applies a similar ratio as the German Federal Supreme Court when considering counterfeiting in the context of not only copyright, but also design and unfair completion cases. As a result, patents are well placed within the family of IP rights."

Susan Kinlan of Pinsent Masons in Dublin said the CJEU's ruling differed from the opinion of the advocate general in this case by removing the subjective element of the designer's intention in considering whether a product is exclusively dictated by its technical function and capable of copyright protection.

"The case confirms that technical designs may benefit from copyright where creative freedom is possible," Kinlan said. "This allows room for the culmination of design rights following the expiry of a patent, which must be closely monitored by the courts to prevent an undermining of the IP system. Copyright protection has a much longer term than other IP rights and this leaves open a potential for significant back-to-back protection if the test is not strictly applied."