Latest

Insights

On Your Bike: Pedalling Your Way to Copyright Protection

30 June 2020

In the recent case of Brompton Bicycle Ltd v Chedech/Get2Get, the Court of Justice of the European Union (CJEU) ruled that copyright protection can apply to a product shape where it is both functional and original. As a result, any product whose shape is at least in part necessary to obtain a technical result, such as the folding bicycle in this case, may be able to avail of copyright protection.

Impact

The impact of this decision is an expansion of current EU copyright law in that the sole requirement for copyright protection is that the 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.

This new judgment presents a change in the law. It can be contrasted with the reluctance of Courts to facilitate a claim for copyright protection such as the previous UK Supreme Court decision in Lucasfilm v Ainsworth. The Lucasfilm case found that the design of the famous Star Wars Stormtrooper helmet did not qualify for copyright protection as it was functional in portraying a film character. Similarly, when attempting to protect the shape of its Land Rover models as a trade mark, Jaguar Land Rover discovered that it is not possible to do so where a products shape is exclusively dictated by its technical function. Therefore, this latest development in EU copyright law will be welcomed by those operating in the manufacturing and automotive industries as copyright may provide protection where trade mark protection is not available.  

Background

British bicycle manufacturer ‘Brompton’ is well known for its iconic folding bicycle, which was originally created in 1975 and has been sold in its current form since 1987.

A particular feature of this ‘Brompton bicycle’ is that it can have three different positions including a folded position, an unfolded position and a stand-by position enabling the bicycle to stay balanced on the ground. This feature was previously protected by a patent which has since expired. When Korean rival Get2Get introduced a folding bicycle with a similar appearance, Brompton brought a claim in the Companies Court in Liege, Belgium, alleging copyright infringement.

It sought an order that Get2Get cease its infringing activities and withdraw its product from sale. In response, Get2Get argued that the appearance of its bicycles was dictated by the technical solution sought, i.e. to ensure the bicycle can fold into three different positions. In these circumstances, Get2Get argued that the bicycle could only be protected under patent law and not the law of copyright and no patent existed. Brompton pointed out that there were other folding bicycles on the market with different appearances and therefore, their own bicycle, which demonstrated both creative choices and originality, should benefit from copyright protection. 

Questions referred

The Belgian Court stayed the proceedings and asked the CJEU to clarify whether copyright protection under EU law applies to a product whose shape is, at least in part, necessary to obtain a technical result. Moreover, it asked the CJEU to determine whether any of the following criteria would be relevant to such an assessment: 

  1. The existence of other possible shapes which allow the same technical result to be achieved.
  2. The effectiveness of the shape in achieving that result.
  3. The intention of the alleged infringer to achieve that result.
  4. The existence of an earlier, now expired, patent on the process for achieving the technical result sought.  

Judgment

The CJEU held that EU law does not, in principle, exclude from copyright protection works whose shape is necessary to achieve a technical result. Indeed, in line with its previous holding in the Cofomel decision concerning copyright protection for garments, the CJEU confirmed that for copyright to arise, it is “both necessary and sufficient” that the subject matter at hand is original, meaning that it is its author’s own intellectual creation which results from that author’s free and creative choices and reflects their personality.

In line with its previous decisions, the CJEU also noted that the notion of originality is not fulfilled where the realisation of a subject matter has been exclusively dictated by technical considerations, rules or other constraints which have left no room for creative freedom. Therefore, shapes dictated solely by their technical function will not be protectable by copyright. Conversely, the Court held that, as was the position in this case, it will be for the national courts in each case to decide whether the author or designer, when choosing the shape of the product, expressed their creative ability in an original manner by making free and creative choices and by designing the product in a way that reflects their personality.  

In addition, with regard to the ‘other criteria’ raised by the Belgian Court, the CJEU held that the intention of the alleged infringer (3 above) is “irrelevant” and the existence of other possible shapes which allow for the same technical result (1 above) is “not decisive.” On the other hand, when considering points 2 and 4 above, the CJEU commented that these “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.” For present purposes, in deciding whether the Brompton bicycle is to be protected by copyright, the CJEU stated that the Belgian Court should consider all relevant aspects of the case, as they existed at the time the bicycle was designed.

An expansion of copyright?  

This decision will be welcomed by many product manufacturers as it ultimately means that more goods, such as the ‘Brompton bicycle’ for example, may qualify for copyright protection. Further, it is significant that the CJEU held that the intention of the author or designer is not relevant and we now also have greater clarity that when determining if copyright protection is applicable, originality is the sole requirement to be satisfied.

The decision serves as a timely reminder of the potential interplay and overlap of various intellectual property rights subsisting in respect of the same object or product. Each right has its own subsistence requirements and the analysis required to determine eligibility for a certain type of right will differ for the requirements under other rights. In this case and for copyright protection to apply, the CJEU was keen to point out that account is only to be taken of the relevant requirements under this right “as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product,” including earlier protection under other intellectual property rights. 

For more information on successful copyright protection, contact a member of our Intellectual Property team.


The content of this article is provided for information purposes only and does not constitute legal or other advice.

Discuss your related queries now with Gerard Kelly.


Gerard_Kelly_(Web_153x230).jpg

Related Contacts

John_Milligan_Portrait_May_2019_WEB.jpg

John Milligan

Associate


Related Expertise

Intellectual Property Law
  • LinkedIn