The price of Banksy’s anonymity
What is the background to Banksy’s copyright dispute with fashion brand, Guess?
In a recent judgement (Brompton Bicycle, C-833/18), The Court of Justice of the European Union (CJEU) has ruled that a functional shape may be eligible for copyright protection, subject to it being an original work.
Brompton markets a folding bicycle (“the Brompton bicycle”), which has a particular feature that allows the bike to be moved between three different positions (a folded position, an unfolded position and a stand-by position). This functional arrangement was protected by a patent, which has now expired.
In 2017, Brompton brought an action before the Tribunal de l’entreprise de Liège (Companies Court, Liège, Belgium) seeking a ruling that “Chedech bicycles”, marketed by Get2Get, infringe Brompton’s copyright. The Chedech bicycles are similarly foldable between the three positions mentioned above and have some visual similarity with the Brompton bicycle.
In defence, Get2Get allege that because the appearance of the Chedech bicycle is dictated by its technical function (ensuring that the bicycle can fold into three different positions), such an appearance could only be protected by a patent and not copyright.
In reply, Brompton argued that the three positions of the Brompton bicycle can be obtained by shapes other than those given to that bicycle by its creator, and because of this, its shape may be protected by copyright.
This led to the following questions being referred to the CJEU for a preliminary ruling:
(1) Must EU law be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?
(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:
a) The existence of other possible shapes which allow the same technical result to be achieved?
b) The effectiveness of the shape in achieving that result?
c) The intention of the alleged infringer to achieve that result?
d) The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’
In summary, the CJEU ruled that copyright protection is in principle available for products having a functional shape, that is where the shape is, at least in part, necessary to obtain a technical result, provided 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” – paragraph 38 of the judgement.
The judgement states clearly at paragraph 33, and as per established case law, that “where the shape of the product is solely dictated by its technical function, that product cannot be covered by copyright protection”.
Turning to the four questions 2a to 2d above, the CJEU commented as follows.
In order to establish whether a product falls within the scope of copyright protection, it is to be determined whether, “through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality”.
The CJEU commented that, whilst it may indicate a possibility of choice, the existence of other possible shapes which can achieve the same technical result is not decisive in assessing the factors which influenced the choice made by the creator – question 2a. The intention of the alleged infringer to achieve the result is irrelevant – question 2c.
With regards to the effectiveness of the shape and the existence of the lapsed patent (questions 2b and 2d), the CJEU commented that these factors should be taken into account, but 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”.
With this ruling, it is now up to the Belgian court to decide on the existence of copyright in the Brompton bicycle based on the specifics of this case.
This decision builds on existing EU case law, complementing the earlier CJEU decision of September 12, 2019, Cofemel, C-683/17, and acts to further harmonise copyright law across the EU. Whilst this decision may not come as a surprise in many EU member states, for a number of EU countries this decision serves as a potentially significant shift in terms of the scope of copyright protection in the context of functional products.
This is potentially good news for designers of functional products who may benefit from an additional layer of (and longer lasting) automatic protection for such products, particularly for designers who generally tend to rely unregistered rights as opposed to patents and registered design rights.
It will also be interesting to see what effect this decision might have in the UK, where copyright protection in this area has historically been assessed quite narrowly by virtue of a potential conflict with UK unregistered design right, and of course in the context of the UK’s relationship with the EU beyond 2020.
If you have any questions on this judgement, please contact us to speak to one of our intellectual property attorneys.
An English language version of the judgement can be found here.