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.

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?

Hence, the referral to the CJEU.

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:

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

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:

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

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,

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

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. 

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.

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. 

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.

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

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."

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. 

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.

It just a few months ago that this blog reported on the Opinion of Advocate General Tanchev in the Sky v SkyKick, C-371/18 case.

A referral from the High Court of Justice of England and Wales made by Arnold J (as he then was), the Sky case is probably the most important referral in the EU trade mark field made over the past few years. It asked the Court of Justice of the European Union (CJEU) to clarify:

This morning, the CJEU handed down its judgment, ruling as follows:

• A EU or national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision;
• A trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. 
• When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services; 
• EU law does not preclude a provision of national law under which an applicant for registration of a trade mark must state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, in so far as the infringement of such an obligation does not constitute, in itself, a ground for invalidity of a trade mark already registered.

So thus, Case C-121/17 was born.  An Opinion from Advocate General Wathelet followed.  The AG dismissed the "inventive advance" approach as being one that would invite confusion, but laid down another test that confirmed "something more" was needed at [81]-[82]:

A short 18 months after the question was referred, on 25 July 2018 the CJEU delivered its decision.  It held: 

A dog-eared copy of this decision with multi-color highlights, scrawls and underlined exclamation marks thereafter appeared on the AmeriKat's bulletin board.  "Necessarily and specifically".  The AmeriKat was necessarily annoyed by the CJEU's decision, and specifically because it provided yet another test (comprised of two parts) to mosaic into the litany of Article 3(a) case law.  Sure enough, like asteroids colliding in space, national courts who subsequently applied the CJEU's decision started to spiral off in different directions.    

The Court of Appeal then held that:

Readers will recall that back in 2015 the Court of Justice of the European Union (CJEU) decided the important Soulier and Doke case [Katposts here], ruling that EU law mandates the recognition of the ‘author principle’, that is the need for the consent - whether express of implied (the latter is however to be strictly defined) - of authors to the doing, by third parties, of acts restricted by copyright in relation to their works.

Indeed, the protection afforded by copyright is not solely concerned with the enjoyment of rights, but also with their exercise.

The CJEU held that that authors must be individually informed of the future third-party uses of their works and the means available to prohibit them if so they wish. In the absence of any actual prior information relating to that future use, authors are not in a position to prohibit such use, if necessary, so that the very existence of implicit consent appears purely hypothetical in that regard. Thus, without guarantees that authors are actually informed as to the envisaged use of their works and the means at their disposal to prohibit it, it is virtually impossible for them to adopt any position whatsoever as to such use.

All this said, a few days ago, the CJEU ruled in another case - Spedidam v INA, C-484/18 - that focused on similar issues to those at the centre of Soulier and Doke, with however the factual difference that: (a) the relevant rightholders are performers, and (2) the mechanism whose lawfulness appeared doubtful is a rebuttable presumption that the performer authorized the fixation and exploitation of their performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

In its decision, the CJEU substantially confirmed the approach taken in Soulier and Doke, but it also qualified and - importantly - softened it, albeit the one at issue was a rather specific factual background.

Let’s see more in detail what happened and how the Court reasoned.

Background

Article 49 of Loi No 86-1067 of 1986 vests INA, the French National Audiovisual Institute (a publicly owned industrial and commercial State body), with the responsibility to preserve and promote the national audiovisual heritage.

The manner in which INA can undertake these activities is governed by agreements concluded by INA with relevant companies. Whilst INA is required to exercise the exploitation rights having due regard for the personal and economic rights of holders of copyright and related rights, the terms on which the works of performers in the archives to which this provision refers are exploited and the remuneration for that exploitation shall be governed by agreements concluded between the performers themselves or the employee organizations representing performers and the Institute.

In 2009, the claimants in the background proceedings became aware that INA was marketing – online and without their authorization – video recordings and phonograms reproducing the performances of a musician (to whom the claimants were successors in title) in the years 1959 – 1978. Those recordings and phonograms had been produced and then broadcast by national broadcasting companies.

The claimants successfully sued INA to obtain compensation for the infringement of the performers’ rights which they held.

The TGI Paris considered that, despite the wording of Article 49, INA was not exempted from having to obtain a performer’s prior authorization for the use of the fixation of their performances. The court considered that the sole purpose of the collective agreements provided for in Article 49 is to determine the remuneration due for new exploitations, provided that an initial exploitation has been authorized by the performers concerned.

The Court of Appeal of Paris upheld the decision at first instance, but then the Court of Cassation found that no such requirement as the one of authorization was present in Article 49. As a result, it sent the case to the Court of Appeal of Versailles for a new assessment, and this sided with INA.

The original claimants and Spedidam (which intervened in the proceedings) appealed (again) to the Court of Cassation, which – this time – expressed doubts concerning the compatibility with the InfoSoc Directive of Article 49.

According to the original claimants, INA would offer on its website the downloading in return for payment of performances by performers, without having to prove their authorization for such use. In response to this, INA had submitted that such provision is neither an exception nor a limitation on performers’ rights: it merely concerns evidentiary rules governing those rights – more specifically a rebuttable presumption that performers’ exploitation rights would have been transferred to it.

A referral to the CJEU was the next, unavoidable step in this complex dispute.

The question referred
First of all, the CJEU noted that it was irrelevant when the recordings of the performances had been made, since the InfoSoc Directive applies to all subject matter which, at the date of 22 December 2002, was protected by copyright or related rights in accordance with Member States’ legislation.

Secondly, the CJEU simplified the question asked by the French Court of Cassation. What the national court wished to know, in essence, was whether the InfoSoc Directive rights of reproduction (Article 2(b)) and making available to the public (Article 3(2)) preclude a Member State from providing a rebuttable presumption that a performer has authorized the fixation and exploitation of their performances where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

The decision

In providing a response to this question, the CJEU could not but refer to its earlier Soulier and Doke decision. Similarly to authors, also performers are entitled to a high level of protection, with the result that resulting rights must be broad in scope.

By analogy with Soulier and Doke, the Court reasoned that:

protection must be understood, in particular, in the same way as the protection conferred by copyright, as not being limited to the enjoyment of the rights guaranteed by Article 2(b) and Article 3(2)(a) of Directive 2001/29, but [as also extending] to the exercise of those rights (see, to that effect, judgment of 16 November 2016, Soulier and Doke, C‑301/15, EU:C:2016:878, paragraph 31). 

It is also important to note that the rights guaranteed to performers by Article 2(b) and Article 3(2)(a) of Directive 2001/29 are of a preventive nature, in that any act of reproduction or making available to the public of the fixations of their performances requires their prior consent. It follows that, subject to the exceptions and limitations laid down exhaustively in Article 5 of the directive, any use of such protected subject matter by a third party without such prior consent must be regarded as infringing the holder’s rights (see, to that effect, judgments of 16 November 2016, Soulier and Doke, C‑301/15, EU:C:2016:878, paragraphs 33 and 34, and of 7 August 2018, Renckhoff, C‑161/17, EU:C:2018:634, paragraph 29 and the case-law cited). 

That interpretation is in line with the objective of providing a high level of protection for performers’ rights referred to in recital 9 of Directive 2001/29, as well as the need, mentioned, in essence, in recital 10 of that directive, for performers to obtain appropriate remuneration for the use of fixations of their performances in order to enable them to continue their creative and artistic work. [paras 37-39] 

All this said, the CJEU also recalled that consent can be expressed in different ways, including implicitly.

With regard to the rebuttable presumption envisaged in the French law, the Court considered that:

a performer who is himself involved in the making of an audiovisual work so that it may be broadcast by national broadcasting companies, and who is thus present at the place where such a work is recorded for those purposes, first, is aware of the envisaged use of his performance (see, by analogy, judgment of 16 November 2016, Soulier and Doke, C‑301/15, EU:C:2016:878, paragraph 43) and, second, gives his performance for the purposes of such use, with the result that it is possible to take the view, in the absence of evidence to the contrary, that he has, as a result of that involvement, authorised the fixation of that performance and its exploitation. [para 42]

In addition, the particular structure of the French presumption – notably the possibility to rebut it – suggests that such provision only concerns the procedures for proving that such authorization has been granted (that is the rule of consent in writing as per Article L. 212-3 IPC), not the actual authorization of the concerned performer.

Finally, the CJEU considered that the mechanism envisaged in Article 49 would also to safeguard the fair balance of rights and interests between different categories of rightholders, as mandated by Recital 31 in the preamble to the InfoSoc Directive:

Studio executive on a break

because the INA does not hold in its archives the written authorisations of the performers or their successors in title, or the employment contracts concluded by them with the producers of the audiovisual programmes in question, it would be impossible for that institute to exploit part of its collection, which would be detrimental to the interests of other rightholders, such as the rights of the directors of the audiovisual works in question, of the producers of those works, namely the national broadcasting companies, the legal predecessors of the INA, or of other performers who may have performed in connection with the production of the same works. [para 44]

In conclusion, the CJEU ruled that EU law does not prevent an arrangement like the one envisaged in Article 49 of the French law.

Comment

As mentioned, the decision may be considered substantially in line with the main tenets of the earlier Soulier and Doke judgment. However, it adds important qualifications to the rigorous criteria envisaged therein. In doing so, the INA judgment softens the sharpest – and most radical – edges of earlier case law.

Indeed, in Soulier and Doke, the CJEU had considered that:

• the circumstances in which implicit consent can be admitted must be strictly defined. This would be required not to deprive of effect the very principle of the author’s prior consent;
• authors must be individually informed of the future third-party use of their works and the means available to prohibit it if so they wish. Without guarantees that authors are actually informed as to the envisaged use of their works and the means at their disposal to prohibit it, it is virtually impossible for them to adopt any position whatsoever as to such use [paras 31-40]; and, most importantly,
• mere lack of opposition on an author’s part cannot be regarded as the expression of their implicit consent to the use in question. 

If one had considered these three principles alone, then a situation like the one of Article 49 would arguably be at odds with the author principle as envisaged in Soulier and Doke.

This is the conclusion that Advocate General (AG) Hogan had reached in his Opinion. By also considering the decision in Luksan, the AG found that the situation at issue in INA would be different. He concluded that Article 49 "seems to organise and effect a transfer of the performer’s rights on the basis of an implicit consent in favour of the INA". In his view, "this would amount in the circumstances to a disproportionate interference with the exclusive nature of the performer’s rights." It would follow from Soulier and Doke (at least implicitly) that, "transfer of this kind must operate in a proportionate manner and cannot take from the exclusivity of this right save to the extent that it is clearly necessary for this purpose."

Going back to the Court's reasoning in INA, it was probably on consideration of the ‘disproportionate’ effects that a strict application of the author principle would have on the interests of other rightholders, including other performers who may have performed in connection with the production of the works for which certain performers did not grant an authorization in writing, that at least a qualification of the earlier stance in Soulier and Doke appeared necessary.

In doing so, the CJEU also placed greater emphasis on certain considerations that it had expressed in that decision, including the fact the author principle would be still respected if the author at issue (or, as in this case, the performer) is in a position to put an end to the future exploitation of their content.

A rebuttable presumption to this effect would serve to achieve this outcome, standing in any case its qualification as an evidentiary tool, rather than a system to circumvent the need for the performer's prior consent.

In all this, despite the criticisms made by some commentators, the position of the CJEU has been consistent overall, though there have been some ambiguous messages being sent.