Brompton Bicycle – far from folded

CJEU follows Cofemel in allowing copyright protection where designs are not exclusively dictated by technical function

The CJEU has decided in the Brompton Bicycle case C-833/18 (11 June 2020) that to qualify for copyright, a design must be original – that is, the subject matter must reflect the personality of its author (the creator or designer), as an expression of her/his free and creative choices.  This requirement cannot be fulfilled where the design “has been dictated by technical considerations, rules or other constraints which have left no room for creative freedom or room so limited that the idea and its expression become indissociable“.  Therefore any design satisfying the condition of originality may be eligible for copyright protection, even if its creation has been dictated in part by technical considerations, provided those technical design choices have not prevented the creator from reflecting her/his personality in the design.

Summary

The case confirms that technical designs may benefit from copyright, dependent upon the extent to which creative freedom is possible. In situations where there is none and the design is solely dictated by the function, there will not be copyright protection. The CJEU left it to the local court to decide whether this was the case with the Brompton bicycle designs.  In order to establish whether the product concerned falls within the scope of copyright protection, the referring Belgian court must now decide on the facts whether, through the choice of the shape of the product, its author has expressed her/his creative ability in an original manner (by making free and creative choices) in such a way that it reflects her/his personality. The CJEU said that the question of the potential existence or not 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. Likewise, the intention of the alleged infringer is irrelevant in such an assessment. Significantly, the fact that a patent over the bicycle had recently expired was held not to be a relevant consideration; the individual copyright issues were considered independently of any history of protection by other IPRs.

Comment

This decision will have an important impact in the design sector, because it has confirmed that a design can also have copyright protection if the design  reflects the personality of its creator, as an expression of their free and creative choices, even if the shape of that product is in part necessary to obtain a technical result. Where there is no creative freedom in the development of the design copyright will not apply.

Since copyright protection is one of the longest lasting IP rights, this will make it an attractive option for protection and enforcement, in particular where other rights such as registered designs or patent rights in the product have expired. Whilst the existence of such latter rights was seen by the CJEU as potentially relevant to any assessment of the creative freedom of the author and technical functionality of a design, it was not fatal to a finding that copyright could exist.

As copyright has a much longer term than other IP rights (lifetime of creator plus 70 years for UK copyright, as opposed to 3 years for EU unregistered design rights or 10-15 years for unregistered UK design rights or 20 years for a patent), the decision will be welcomed by some in the design world who seek to maintain rights over key designs.  Others who would wish to get inspiration from designs, the protection in which would otherwise have expired, will find today’s decision more challenging.  We will undoubtedly see other designers seek to rely upon copyright to protect iconic designs, even if mass produced, given the advantages of copyright protection.  Another advantage of copyright is that there are no registration requirements, unlike registered designs or patents. However, designs remain a valuable form of protection, as they do protect a wider category of industrial designs, including those that have functional elements.

We saw the CJEU in Cofemel (September, 2019) endorse the EU test for subsistence of copyright, as being the artist’s own intellectual creation (consistent with Infopaq and Levolo).  This differs from the old UK test of for originality, of sufficient skill and labour test, i.e. sweat of the brow.  However, Cofemel also suggested that the categories of copyright protection were not limited, so could include designs.  However, the Cofemel judgment suggested that the scope for cumulative protection was limited for designs under both EU copyright and design law (also established in Flos).  It rejected the notion of a requirement of aesthetic appeal for copyright protection, but equally suggested that technical considerations may preclude exclusively functional designs from being eligible for copyright protection.

In the Brompton Bicycle case, the CJEU followed Cofemel in the view that a design whose shape is dictated by technical considerations, that do not leave room for the exercise of creative freedom, is not eligible for copyright protection.  It is analogous to the reasoning given in some of the trade mark cases on protecting 3D shapes (such as Lego).  It suggests that there does need to be something creative for a work to qualify for copyright protection, not driven by purely functional concerns or perhaps the technical output from a machine.

Until the repeal of section 52 Copyright, Designs and Patents Act 1988 (CDPA), the UK law limited the use of copyright to protect industrially manufactured designs to 25 years. Since that repeal, the industrial manufacture of a design does not have a limiting effect on the copyright term in the designs for that object. However, under section 51 CDPA, where any article is made to a design embodied in a design document or model, the copyright in that design document or model recording the design cannot be enforced (unless the design or model itself was an artistic work). This section must now be likely to come under review, either by the UK courts or legislature, in light of the Brompton and Cofemel decisions.  The UK Courts have already imported the test for originality, as being the author’s own intellectual creation, as recently seen in the Response Clothing decision of His Honour Judge Hacon in January 2020. This decision recognises the tension between section 51 of the Copyright, Designs and Patents Act 1988 which limits copyright protection for designs to works of artistic craftsmanship and the judgment in Cofemel.  In Response Clothing, the Judge acknowledged the tension, but found he was not constrained by earlier English law from finding that a machine-made fabric design was a work of artistic craftsmanship and followed Cofemel to find that it was entitled to copyright protection. This latter case left English law tipping its hat towards the important EU decision in Cofemel, but not fully importing its full effect.  There is scope for divergence by the Courts in post-Brexit UK in the important area for protection of designs, which is key to many product designs.

Notwithstanding that the UK has left the EU, the Brompton Bicycle case (coming within the transition period) will bind the UK courts, unless the Supreme Court (or Parliament through legislation) decides subsequently to depart from it or Ministers make regulations under the European Union (Withdrawal Agreement) Act 2020 about the judicial treatment of the decision.   Realistically, this is extremely unlikely in the short to medium term, given that Cofemel has already been endorsed and applied by the courts in the UK in the Rapid Clothing v Edinburgh Woollen Mill case.  That does mean that the conundrum of section 51 needs resolving, through primary legislation or the courts striking it down as ultra vires.  That leaves the UK with the prospect of enhanced protection for designs through copyright, including the potential for some designs to gain retrospective protection, when protection from unregistered design rights (UK or Community) might well have expired.

Further, additional changes will also come into effect on 1 January 2021 to recognise equivalent UK rights to Community design rights (both registered and unregistered).  See our Guide to the impact of Brexit upon IP here.

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