AG Campos in Brompton Bicycle advises CJEU to rule that 'exclusively' functional shapes do not deserve copyright protection

Is a functional shape eligible for copyright protection under the InfoSoc Directive?

This, in a nutshell, is the intriguing issue that the Court of Justice of the European Union (CJEU) has been asked to address in Brompton Bicycle, C-833/18.

As readers might guess, the shape at issue in this case is Brompton's iconic foldable bike, originally created in 1975 and sold in its current form since 1987:

This morning, Advocate General (AG) Campos Sánchez-Bordona issued his Opinion. He advised the Court to rule that, if the shape is exclusively dictated by the technical function of the relevant product, then no copyright subsists in it. 

Whilst this conclusion appears reasonable and in line with existing CJEU case law, including - most recently - the Cofemel decision [here; for a recent application, see here], the Opinion appears to go a bit astray from that, at least in one notable respect (read on).

Let's see a bit more in detail what happened and how the AG reasoned.

Background

This referral from the Tribunal de l’entreprise de Liège was made in the context of copyright infringement proceedings that Brompton had brought against Korean company Get2Get over this bike:

In response to Brompton's claim, Get2Get submitted that the appearance of the Brompton product is dictated by the technical function sought and that it deliberately adopts the folding technique [previously covered by a now expired patent; the referring court did not indicate whether the appearance of the Brompton bike was also protected by a design right] because that is the most functional method. As a result, the defendant's product looks as it does because of technical constraints.

Brompton submitted that other shapes are present on the market, and this would demonstrate the originality of its product: free and creative choices were made in the realization of the Brompton bike.

The court which heard the action was not sure whether copyright could subsist in an object whose shape is necessary to achieve a technical result. Also, should any of the following criteria be relevant to the assessment?

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

Hence, the referral to the CJEU.

The AG Opinion

The AG began his assessment noting that any response to the referring court's questions "cannot overlook the difficulties related to cumulative protection", as offered under patents, designs, and copyright, respectively. Copyright cannot be a means to circumvent the time-limited duration of other rights and the overall balance between different rights:

That careful balance — which is most directly reflected in the short protection period granted to an inventor or designer — would be upset if the allotted term were simply extended to reach the generous periods afforded to copyright protection. Designers would lose the incentive to avail themselves of the industrial property system if, in return for lower costs and fewer procedural requirements (inter alia lack of registration), they were guaranteed copyright protection of their creations for a much longer term.

In this sense, AG Campos referred back to the Opinion [not yet available in English] of AG Szpunar in Cofemel [here].

The implications of Cofemel

Whilst it is true that in principle rights cumulation is allowed under EU law, according to AG Campos, the Cofemel judgment contains "a number of clarifications which weaken, so to speak, or reduce the force of the principle of cumulation." This is so because:

• first, "concurrent protection can be envisaged only in certain situations"; 
• second, the nature of the protection provided under copyright and designs is different;
• third, "the obtaining of copyright in subject matter which is already protected by a design right involves certain risks which should not be underestimated. In particular, "the grant of protection, under copyright, to subject matter that is protected as a design must not have the consequence that the respective objectives and effectiveness of those two forms of protection are undermined’";
• fourth, it is for national court to specify when one of the 'certain situations' which allow the cumulation of IP rights has arisen.

(1) Copyright in a technical shape

Further to these preliminary remarks, the AG turned to consideration of the first question referred and recalled that:

One of the important contributions of the judgment in Cofemel is that it does not allow the originality of the purported ‘work’ (in that case, clothing) to be linked to its aesthetic elements. The Court refused to allow reliance on aesthetic factors as a ground for protection of a design by copyright.

According to the AG, in light of all this, the issue is whether - having excluded aesthetic elements as relevant to the assessment - the achievement of a technical or functional result serves to rule out copyright protection.

He recalled that a similar question has been already answered - in the affirmative - in relation to computer programs: "where the expression of the components of a subject matter ‘is dictated by their technical function, the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable’." (Bezpečnostní softwarová asociace; in the same sense, see also Football Dataco).  Hence,

It can be inferred from those rulings that, as a general rule, works (objects) of applied arts whose shape is dictated by their function cannot be protected by copyright. If the appearance of a work of applied art is exclusively dictated by its technical function, as a decisive factor, it will not be eligible for copyright protection.

This conclusion, explained the AG, is in line with what happens in the field of trade marks and means that:

[D]esigns whose shape is dictated by technical considerations which do not leave room for the exercise of creative freedom are not eligible for copyright protection. Conversely, where a design merely has a number of functional aspects, that does not deprive it of copyright protection.

But for what the AG called 'mixed designs', that is designs that combine artistic and functional elements, if the latter predominate over the former "to the extent that the latter became irrelevant", then copyright will not be available. 

To this end, the AG noted that case law on shapes associated with functional elements in relation to industrial property and trade mark law can provide, by analogy, a number of valid interpretative approaches in respect of copyright. In particular, he referred to the CJEU decision in Lego Juris to conclude that, as the referring court appeared to consider the appearance of the bicycle at issue as necessary to achieve the technical result, meaning that the relationship of exclusivity between appearance and functionality exists, then it is not possible to grant copyright protection to such a shape. 

(2) Criteria to be used

Turning to the second question referred, that is what criteria need to be taken into account to conduct the assessment of copyright subsistence, the AG considered them in turn.

1. The existence of an earlier patent

In principle, this circumstance should not prevent copyright protection from arising, although a registered patent may serve to identify technical constraints which dictated the shape of the product in question, as well as highlighting a close relationship between the shape patented and the result intended. 

2. The existence of other possible shapes which allow the same technical result to be achieved

Here the AG referred to DOCERAM, which held that a court can take this circumstance into account in the field of designs, though it is not a conclusive factor in itself. The same should apply, mutatits mutandis, in respect of copyright.

3. The intention of the alleged infringer to achieve that technical result

This, according to the AG, "is not, in principle, relevant." However:

When examining whether or not there is a right for the object to be protected as a work, the court is entitled to explore the inventor or designer’s original intention rather than that of the person who reproduces his invention or design.
For that purpose, account must be taken of the time when the invention or design was initially conceived in order to assess whether its author was really seeking to achieve his own intellectual creation or whether, instead, he was seeking only to protect an idea applicable to the development of an original industrial product with a view to the mass production and sale of that product on the market. The fact that there has been an industrial application of the invention or design or that a commercial benefit has been obtained from it may provide evidence worthy of attention.
From that perspective, the fact that subsequent recognition of the design may also warrant its exhibition in museums does not appear to me to be relevant. That factor or others like it, such as the receipt of awards in the sphere of industrial design, confirms, rather, that its nature is that of an industrial object deserving of praise, or even admiration, in its own sphere, or that it has a number of important aesthetic components.

4. The effectiveness of the shape in achieving a technical result

As the referring court did not provide enough information to understand the exact meaning of this part of the second question, the AG considered that there was not much to say and that "if the shape which the designer of the product (in this case, a bicycle) planned were not suitable for attaining the desired functionality, the requirement of future industrial application would not be satisfied."

In conclusion

The AG noted that, like AG Saugmandsgaard Øe had argued in his Opinion in DOCERAM, there might be criteria other than those listed by the referring court, but also that "it would not be appropriate to make an exhaustive or non-exhaustive list of those criteria in the abstract when, in reality, that assessment (which is factual in nature) is connected to a set of circumstances which are difficult to recognise a priori." He also added that refusal of copyright protection would not in any case prevent protection under the national laws again slavish or parasitic imitations. 

In a position to "achieve his
own intellectual creation"?

Comment

The Brompton Opinion is correct in several respects but also problematic, at least in one key aspect.

Let's start from the good. The considerations concerning rights cumulation and the conclusion re copyright protection of functional shapes are overall in sync with earlier CJEU case law. 

The Opinion is also important because it adopts a functional interpretation of Cofemel, one which could contribute to avoiding that copyright protection is perceived as 'easy' to claim now that extra criteria, eg aesthetic appeal, artistic merit, etc, are out of the window. 

However, the Opinion is also concerning insofar as it considers that account could be taken of the intention that the author had when he/she created the work. The AG considered that, whilst external recognition (eg, exhibition in museums or awards) should not be relevant, internal and subjective elements might be. This is concerning for a number of reasons, of which two in particular stand out.

First, it runs contrary to the Cofemel decision itself: the CJEU said that what is only required is a work that is original. Certainly, the subjective intention of the author should not be taken into account to determine copyright subsistence. What the author thought or wanted to achieve is irrelevant. The assessment should be one based on objective criteria.

Second, it evokes the need for an assessment that is difficult to undertake and may potentially imply a value judgement: eg, only works created by those who felt like that they were 'making art' would be deserving of protection, as would only the works created by those in the 'right' (or, in some cases, 'sober') state of mind to understand what they were trying to achieve. According to this logic, something written in a state like that of Coleridge when he drafted Kubla Khan could not be deserving of protection ... Similarly, cases like Lucasilm (concerning copyright in the Star Wars Stormtrooper Helmet) should be regarded as correctly decided (in my view, it was not). This can't be right: what matters is that a work is the result of an author's free and creative choices, irrespective of whether such choices were made with a certain end goal in mind or in a certain state of mind.

Let's now wait to see what the CJEU thinks.