Although the judgment handed down on 11 June 2020 by the Court of Justice of the European Union will not provide much information to the court in Liège, which had asked it to rule on the dispute between Brompton Bicycle Ltd and Chedech/Get2GEt, it will reassure the concerns that commentators may have had about the conclusions of Advocate General Manuel Campos Sanchez-Bordona.
The case is between the designer of a folding bicycle (and the company he set up to market it) and a Korean company that has marketed a very similar version of the bicycle. These bicycles have the same particularity of being able to be arranged, because of their foldable nature, in three positions: one unfolded, the other two folded. The Court of Liège, indicating that the Belgian courts usually applied the criterion of multiplicity of forms and wondering what consequences the position taken by the CJEU in the DOCERAM case on 8 March 2018 in relation to design rights (CJEU, 8 March 2018, aff. C-395/16) might have in the context of copyright, intended to put the following questions to the said Court for a preliminary ruling before deciding this dispute:
“1) Is Union law, and more particularly Directive [2001/29], which sets out, inter alia, the various exclusive rights recognised to copyright owners in Articles 2 to 5 thereof, to be interpreted as excluding from copyright protection works whose form is necessary to achieve a technical result?
2) In assessing whether a form is necessary to achieve a technical result, should the following criteria be taken into account
– The existence of other possible forms which achieve the same technical result?
– The effectiveness of the form in achieving the said result?
– The will of the alleged infringer to achieve this result?
– The existence of a prior patent, now expired, on the process to achieve the technical result sought?
On 6 February 2020, Advocate General Manuel Campos Sanchez-Bordona filed submissions, the result of which, unsurprisingly, was to state: (i) that a product “having an industrial application” whose shape is determined exclusively by its technical function could not be protected by copyright, (ii) that in order to determine whether the shape has this character, it was necessary to “take into account all the relevant objective circumstances of each case, including the existence of a prior patent or design… the effectiveness of the shape in achieving the technical result and the intention to achieve it” and iii) the existence of other alternative shapes was irrelevant, unlike the fact that “the chosen shape contains non-functional elements, subject to the free choice of the author”.
However, some of the considerations contained in these conclusions had been noted by certain authors who were concerned. In particular, our colleague Pierre Massot noted that the Advocate General, while dismissing the usefulness of having recourse to the “will of the alleged infringer” as suggested by the Liège court in its second question, substituted the interest that “the original will of the inventor or creator” could present by seeking “whether the inventor or creator has the right to use the invention”, substituted the interest of the “original will of the inventor or creator” by seeking “whether the author really wanted to make an intellectual creation of his own or whether he was rather seeking exclusively to defend an idea applicable to the elaboration of an original industrial product, for the purpose of its manufacture and mass sale on the market” (points 92 and 93 of the conclusions of Advocate General Manuel Campos Sanchez-Bordona).
This search for the intention of the designer of the shape was also criticised by the commentator of these conclusions on the blog “the Ipkat” (Eleonora Rosati https://ipkitten.blogspot.com/2020/02/ag-campos-in-brompton-bicycle-advises.html). Perhaps it was possible to understand this research if one considered that, with reference to the solution given by the CJEU for designs in the DOCERAM case, it was necessary to “establish that this [technical] function is the only factor which has determined those characteristics”, and to do so in time “at the time of the choice” of the characteristics which define the object (paragraph 31 of the DOCERAM judgment). On the other hand, one could not understand the reservation that seemed to be contained in the Advocate General’s conclusions with regard to the reference to “mass” production and marketing to determine the protectable nature of the object in question when it includes original shapes (see Pierre Massot, Chronique Dessins et Modèles, Propriétés Intellectuelles, April 2010, No. 75, pages 115 to 125).
Fortunately, these concerns did not materialise in the judgment handed down by the CJEU on 11 June 2020. First of all, it should be noted that, for the sake of economy, the Court joined the two preliminary questions and answered them in a fairly brief judgment which essentially takes up concepts that are now well known in its case law on the criterion of copyright protection. It refers to points 29 and 32 of the COFEMEL judgment it delivered on 12 September 2019 (CJEU 12 September 2019, Case C-683/17), which already referred to the INFOPAQ and LEVOLA HENGELO judgments (CJEU 16 July 2009, C-5/08 and CJEU 13 November 2018, C-310/17) to recall:
1. the two elements which constitute a copyrightable work are: i) “an original subject-matter which is an intellectual creation unique to its author” and ii) “the expression of that creation”
2. with regard to the first element, “it is both necessary and sufficient that it reflects the personality of its author, manifesting the latter’s free and creative choices” (point 23), and, with regard to the second, the work “necessarily implies the existence of an object identifiable with sufficient precision and objectivity” (point 25).
I find this chronology of steps confusing: it starts by looking for originality before determining whether there is a material embodiment of the idea which, in itself, is not protectable. It seems that the opposite approach would be more coherent: starting by determining whether there is an “identifiable object” would obviate the need to investigate whether it was the result of the exercise of “free and creative choices” and therefore the expression of a copyrightable personality.
The Court, curiously enough, with the exception of the introductory part of its judgment where it recalls the reasoning of the Liège Court, makes no reference to its DOCERAM judgment, although it suggests a similar solution: it sets aside the criterion of multiplicity of forms by noting that ‘even if there remains a possibility of choice as to the form of the object, it cannot be concluded that it necessarily falls within the concept of “work” within the meaning of Directive 2001/29’ (point 32). And it goes on to state that ‘in order to establish whether the product concerned falls within the scope of copyright protection, it is for the national court to determine whether, through that choice of the form of the product, its author has expressed his creative capacity in an original manner by making free and creative choices and has shaped the product in such a way that it reflects his personality’ (point 34). In this respect, “the existence of other possible forms capable of achieving the same technical result, while it makes it possible to establish the existence of a possibility of choice, is not decisive in assessing the factors which guided the choice made by the designer” (paragraph 35).
By indicating that it is not “decisive”, the Court of Justice implies that this possibility of choosing between several forms remains a factor which can be taken into account among others, as in the DOCERAM solution, where it is accepted that there may be a body of elements allowing one to consider that the choice of form was not exclusively dictated by the technical function. The refusal to refer to its judgment of 8 March 2018 can be seen as the Court of Justice’s desire to separate the legal regimes of design law and copyright.
Finally, the Court dismisses the relevance of the reference to the infringer’s intention in the second question of the Liège Court as well as any “factors external to and subsequent to the creation of the product” (paragraph 37).
This makes it unnecessary to invoke the presence in design or decorative art museums of the objects for which copyright protection is claimed or the receipt of prizes and awards, which are often referred to in the pleadings of claimants in applied copyright cases. Here too it is curious not to want to take into account points of view outside the creator or the company that has marketed the products and which relate to the recognition of the added value that design brings to objects whose raison d’être is not limited to their primary utility.
In reality, this ruling is not a major breakthrough: it underlines the reality of partial cumulation and indicates that an object with a technical function can be protected by copyright if it is original: in short, it can be protectable if it meets the conditions for copyright protection. Another tautology of which the CJEU is fond.
Patrice de Candé
Avocat (Paris Bar), CANDE BLANCHARD DUCAMP AVOCATS
The opinions expressed in this article are those of the authors and do not reflect the position of the Institute.