Nexus: Cofemel

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

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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.

Copyright protection of fictional characters: is it possible? how far can it go?

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The IPKat's favourite fictional character

Last year, I was fortunate enough to be invited by Associate Professor Yann Basire (Director-General of CEIPI) to participate in a great (and cool!) conference he organized in Strasbourg on Pop Culture and IP. The topic I was asked to discuss was trade mark protection of fictional characters, and the contribution will be published in 2020 as part of a collection edited by Yann and entitled Propriété Intellectuelle et Pop Culture (LexisNexis, coll. IRPI).

But what about copyright protection of fictional characters: is it possible? how far could it go?

Copyright protection is available to any work in a Berne and, now, EU sense. While no particular issues arise in relation to the literary, artistic or dramatic works that feature certain characters, in that they are regarded as ‘traditional’ copyright subject matter, whether copyright also vests in fictional characters as such has occasionally proved controversial.

Difficulties are linked to the fact that, first, one might wonder whether a character is to be considered a ‘work’ in a copyright sense and, secondly, assuming that it is, what type of work a character is. While the latter appears to be less fundamental question than the former, it might still be a problematic one to answer in those European jurisdictions that envisage an exhaustive list of protectable works.

A ‘work’ that is sufficiently ‘original’

There is no statutory definition of ‘work’ in EU copyright directives, including the InfoSoc Directive.

However, recently the Court of Justice of the European Union (CJEU) tackled the notion of ‘work’ in its judgment in Levola Hengelo [Katposts here] (the CJEU confirmed its findings in that case in its more recent decision in Cofemel [Katposts here]).

Noting that the InfoSoc Directive provides both a set of exclusive rights relating, in the case of authors, to their ‘works’ and relevant exceptions and limitations to such rights but makes no express reference to the laws of individual Member States for the purpose of determining the meaning and scope of the concept of a ‘work’, such concept is to be considered an autonomous concept of EU law. As such, it is to be given a uniform application throughout the EU, in compliance with the principle of autonomy of EU law.

As I also discuss here, this conclusion on the side of the CJEU is not surprising, also considering its frequent use in copyright case law: the CJEU has indeed often employed this interpretative standard in its copyright case law, with the practical effect of strengthening harmonization of copyright laws across the EU.

The CJEU considered that two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of the InfoSoc Directive. First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation, in accordance with the decision in Infopaq and subsequent case law. Second, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of that directive. Recalling both the wording of Article 2(1) of the Berne Convention and the idea/expression dichotomy in Articles 2 of the WIPO Copyright Treaty and 9(2) of the TRIPs Agreement, the Court concluded that

for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

In the case of a fictional character, the definition of ‘work’ may be satisfied when the character at issue appears in a single work and its features are identifiable in accordance with the CJEU criteria. The assessment, however, might be potentially more complex when the character is one with a longstanding history and which has appeared and changed to some extent over time. Would it be possible to identify with sufficient precision and objectivity the protectable expression which renders such character a ‘work’?

Under US law, the answer appears to be in the affirmative, insofar as certain requirements are satisfied. In 2015, the U.S. Court of Appeals for the Ninth Circuit was called to decide whether defendant Mark Towle had infringed DC Comics’ exclusive rights under a copyright when he built and sold replicas of the Batmobile, as it appeared in the 1966 television show Batman and the 1989 film BATMAN. “Holy copyright law, Batman!”, noted Circuit Judge Ikuta at the beginning of his opinion.

The court considered whether the Batmobile itself could a protected character under US law by adopting a 3-part test:

the character must generally have physical as well as conceptual qualities;
the character must be sufficiently delineated to be recognizable as the same character whenever it appears (this requires the presence of identifiable character traits and attributes, but the character does not need to have a consistent appearance);
the character must be especially distinctive and contain some unique elements of expression, meaning that it cannot be a stock character such as a magician in standard magician garb. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard.

Applying this test, to the case at issue, the court concluded that the Batmobile would be protected by copyright and that the defendant had infringed it.

It appears that, even if this test is only directly applicable under US law, it could be useful also in a European context. We could indeed consider that fulfilment of all requirements of the test is substantially what is required under EU law to identify a ‘work’ that is sufficiently ‘original’. Indeed, whilst the first and third step seem to relate to the originality of the character and, thus, what makes it its ‘author’s own intellectual creation’, the result of their ‘free and creative choices’ and ultimately what carries their ‘personal touch’, the second step entails the consideration of whether such character is “identifiable with sufficient precision and objectivity” and is, thus, a ‘work’ in the sense clarified in Levola Hengelo.

A work of the ‘right kind’

In European jurisdictions that envisage a closed list of protectable subject matter, an additional difficulty surrounding copyright protection of fictional characters relates to their classification: what types of works are they? A question of this kind, whose compatibility with EU law (or, rather: CJEU case law) is highly questionable, remains formally a fundamental one to answer, in that impossibility to determine what category a work belongs to (usually) leads to a finding that copyright protection is not possible.

So, under UK law (a jurisdiction in which copyright protection is only available to a limited number of works), leading commentaries explain that a ‘work’ is "a thing which satisfies the statutory description of a literary, dramatic, etc. work."

Such ‘thing’ must be, first, a production in the Berne sense and, second, fall within one of the categories provided by the Copyright, Designs and Patents Act 1988 (CDPA). Categorization has implications not just for determining whether a certain work may be actually protected by copyright under UK law, but also what rights attach to such work. So, for instance, section 21(1) CDPA excludes the right of adaptation for artistic works, while providing expressly for it in relation to literary, dramatic and musical works. Similarly, section 17(3) includes conversion of a work into a three-dimensional form within the scope of the right of reproduction only for artistic works, not also literary works. In addition, differences between the various categories subsist also in relation to the topic of infringement. While copyright in a literary, dramatic, musical or artistic work may be infringed without copying the medium on which the work was recorded by the author or published by the publisher, copyright in sound recordings, broadcasts, published editions and films may only be infringed by reproducing the medium produced by the author.

In UK copyright case law, there have been a few instances in which works have been denied copyright protection due to the very impossibility of placing such works within one of the categories provided by the CDPA. Examples include the assembly of a scene (the scene was that which would be photographed for the cover of Oasis’s Be Here Now album) and the Stormtrooper Helmet from the Star Wars films. Until recently, uncertainties have also surrounded the protectability of TV formats by means of copyright, due to uncertain categorization thereof [Katpost here].

The same difficulties of categorization seem likely to subsist also in relation to fictional characters: are they a literary work? a dramatic work? an artistic work?

All this said, as mentioned, it is highly questionable whether an approach of this kind is (still) allowed under EU law. Most recently, in Cofemel, the CJEU considered that the notion of work solely presupposes the fulfilment of two cumulative requirements: first, it implies the existence of an original object, in the sense that said object is the intellectual creation of its author; second, the notion of work is reserved to those elements which are the expression of such creation. When an object is a ‘work’ in this sense, “it shall be eligible, in this respect, for copyright protection, in compliance with Directive 2001/29”.

All this rather clearly suggests that no other criteria can be imposed to determine copyright subsistence, not even the requirement that the work at issue is one of the right kind. This conclusion is also in line with certain enlightened UK case law, which has noted how – in light of a number of CJEU rulings – it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) CDPA and defined elsewhere in that Act. Nevertheless, it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention.

Which and how many copyrights?

Copyright protection of a character (if available) is in principle limited in time; in Europe, it will last for the life of the author and seventy years after their death. This means that in principle, upon falling in the public domain, it will become possible to use a character without the need for a licence to, eg, create a new adaptation of the story featuring said character.

So, if we take the example of Sleeping Beauty in the version by Charles Perrault (as also subsequently collected and printed by the Brothers Grimm), both the story and the characters are no longer protected by copyright. However, subsequent adaptations of the public domain stories would warrant their own copyright protection, insofar as they are original.

The same is true with regard to the relevant characters: so, if we apply the criteria mentioned above, this means that, eg, Disney’s version of Sleeping Beauty as a character with a certain appearance and personality would enjoy its self-standing copyright protection and the same would be true of Dreamworks’s own version, which also has an original appearance and personality. Insofar as no original features of a copyright-protected character are reproduced, it remains possible to use a third-party character to create, eg, new adaptations of well-known story.

Conclusion

Different IP rights are available for the protection of fictional characters. As far as copyright is concerned, doubts may subsist regarding the classification of characters as self-standing works which enjoy copyright protection separate from the works in which they are contained. In addition, copyright protection is limited in time and encompasses the external appearance of such characters.

Other types of IP rights, including trade mark protection, might thus present a certain attractiveness, due to the fact that (in the case of trade marks) protection could be virtually perpetual and relate to elements that are not necessarily connected with the external appearance of the character (eg, their name).

However, it is doubtful whether trade mark registration could be effectively pursued in each and every instance, particularly on consideration of the applicability of the absolute grounds for refusal or invalidity concerning distinctiveness, public policy and morality and aesthetic functionality. In addition, the scope of protection – where available – would go only as far as allowing the trade mark owner to repress third-party uses of identical or similar signs, insofar as such uses are uses in a trade mark sense and affect the functions of the registered trade mark (the latter is true also in double identity scenarios, as the CJEU considered in Arsenal).

All this suggests that the most effective way to protect a fictional character through IP is a comprehensive strategy that relies on different rights allowing the pursuit of different objectives of exclusivity, but is also conscious of the limitations that are inherent to each and every right.

Nexus

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

Copyright protection of fictional characters: is it possible? how far can it go?

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