Nexus: Cofemel C-683/17

UK court applies CJEU Cofemel decision for the first time: "complete conformity" with EU law would preclude any requirement of aesthetic appeal

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IPKat-approved jacquard fabric

Yesterday, the Intellectual Property Enterprise Court (IPEC, a specialist court which is part of the Business and Property Courts of the High Court of Justice of England and Wales) issued what appears to be the first UK decision tackling the implications of the judgment of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [see here; Cofemel was also awarded the prestigious Kat-award 'Copyright Decision of the Year 2019'].

It is the decision in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC) (29 January 2020).

Background

The claimant, Response, is a clothing company; the defendant, EWM, is a major retailer of clothing with about 400 stores in the UK.

Between 2009 and 2012, Response supplied EWM with ladies tops made of a jacquard fabric of a design referred to as a 'wave arrangement'. In 2012, Response attempted to raise the price of the tops, but EWM refused. The latter then provided a sample of Response's top or a swatch of its fabric to other garment suppliers, with an invitation to supply tops made from a similar fabric. A few companies got the order over time, and supplied garments made from jacquard fabric.

Response sued EWM for copyright infringement, claiming that protection would subsist in its wave arrangement as:

either a graphic work [see the definition at s4(2) CDPA], or
a work of artistic craftmanship [there is no statutory definition of this category]

NOTE: the UK has a closed list of protectable copyright subject-matter. This has traditionally meant that, in order to claim copyright, there should be not just an original work, but also a work of the 'right kind'. In the past, certain types of less conventional subject-matter - including the Star Wars Stormtrooper Helmet and the assembly of a scene - were refused protection, while for works like TV formats uncertainties whether copyright protection would be available have subsisted for a long time.

The fabric as a graphic work?

HHJ Hacon considered whether a fabric could be considered a graphic work, and noted that - whilst the list in s4(2) is not exhaustive - "[i]t does not follow that the definition is endlessly flexible." He found that a fabric would not satisfy the definition of graphic work: the relevant notion cannot be stretched to include a fabric, whether made on a loom or a knitting machine.

The fabric as a work of artistic craftsmanship?

The judge thus turned to the consideration of whether copyright could subsist in the fabric as a work of artistic craftsmanship. To this end, he began by recalling the history of closed subject-matter categorization and the challenges that EU - or rather: CJEU-driven - harmonization have presented:

The Statute of Anne of 1709 was the world's first copyright statute, although there had been some earlier common law giving rights to authors. The Statute was concerned with literary copyright. Since then, because Parliament has incrementally afforded copyright protection to other types of work, the law has become structured in the form of successive categories of copyright work. In the 300 years since the Statute of Anne a claimant has been required to show that his work falls within at least one of the categories identified for protection in the copyright statute of the day. In recent years, there may have developed a tension between the way this is approached in the 1988 Act and EU copyright directives which have entered into force.

He then noted that, if the fabric at issue could not be considered a work of artistic craftsmanship, then "the design knitted into it is not protected by any other provision of the 1988 Act". This would be so because s1 CDPA is "clear": "a work is only capable of being a copyright work if it falls within one of the three descriptions set out under subsection (1)."

The judge reviewed case law on works of artistic craftsmanship. He noted that, to determine whether the claimant's fabric qualifies as such, it would be necessary to determine whether the employee who created it "was both (a) a craftsman in that he or she made the fabric in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he or she used their creative ability to produce something which has aesthetic appeal." (Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216). He was of the view that the claimant's work could qualify for protection if this was the test. However, if the test was instead that of the House of Lords in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 (a case decided under the 1956 Copyright Act), the conclusion could be that the claimant's work may not qualify for protection.

At this point, HHJ Hacon turned to EU law and the interpretation given of it by the CJEU.

Applying Cofemel

Before considering Cofemel, the judge recalled the earlier CJEU decision in Levola Hengelo, C-310/17 [here], which clarified that the notion of 'work' is an autonomous concept of EU law. As such, it must receive uniform interpretation and application across the EU.

Turning to Cofemel, the judge recalled that in its decision "[t]he CJEU ruled that national law could not impose a requirement of aesthetic or artistic value." Hence, the judge stated,

I take the view that, subject to my being satisfied that the [claimant's fabric] is original in that its design was its author's own intellectual creation, that design is a work within the meaning of art.2 of Directive 2001/29. If no sufficiently similar design existed before it was created, it must have been the expression of the author's free and creative choices.

He continued noting that:

Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU

Clearly both a craftsman and an artist

The issue, the judge explained, was "not whether Directive 2001/29 has the effect of removing all the gaps there may be in copyright protection available from a court at first instance for 'works' within the meaning of art.2 of the Directive, but whether it is possible to interpret s.4(1)(c) of the 1988 Act in conformity with art.2 of Directive 2001/29 such that the [claimant's fabric] qualifies as a work of artistic craftsmanship and thereby its design becomes entitled to copyright protection. In my view it is, up to a point. Complete conformity with art.2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the [claimant's fabric] has aesthetic appeal".

The judge found that he did not have to go that far, since the fabric did in fact have aesthetic appeal.

He concluded that the claimant's fabric was protected in accordance with the Bonz Group test and that copyright in it had been infringed.

Comment

The decision, as mentioned, appears to be the first time that a UK court considers the CJEU judgment in Cofemel. What is interesting about it is the acknowledgment that, indeed, full compliance with it would probably require granting protection to an original work, irrespective of its aesthetic appeal (and, as I have said a few times on this blog, irrespective of the category it belongs to).

In this particular instance, the judge felt he did not have to go that far, as the fabric did possess such appeal. However, even if this had not been the case, protection should have been acknowledged insofar as the subject-matter at issue qualified as an 'original' 'work' in the sense clarified by the CJEU.

As I wrote here, Cofemel in itself did not arguably made any change to the law: it was merely a step in the consistent approach that CJEU case law has had to the requirements for copyright subsistence, this being a process which began a little over 10 years ago with Infopaq, C-5/08.

Overall, the Response decision employs a rather cautious language and confirms that, to be protected, a 'work' must (still) fall - at least formally - under one of the categories in s1 CDPA which - for the time being - must be interpreted in accordance with EU law.

However, after a decade of CJEU case law, it appears preferable and more correct to adopt a less formalistic approach. It is worth recalling that - as early as 2010 - Arnold J (as he then was), in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010), noted that:

In the light of a number of recent judgments of the CJEU, 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) of the Copyright, Designs and Patents 1988 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.

The Cofemel decision well beyond the ‘simple’ issue of designs and copyright

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G-Star Elwood,
a style of jeans that G-Star claims
Cofemel to have copied
in the background Portuguese proceedings

As announced on The IPKat, last week the Court of Justice of the European Union (CJEU) issued its much awaited judgment in Cofemel, C-683/17 [not yet available in English]. It ruled that, as far as designs are concerned, no other requirement is mandated for copyright protection to arise under the InfoSoc Directive, but the sufficient originality of the design at issue.

Earlier case law

The ruling is not surprising, considering earlier CJEU case law, most notably the decision in Flos, C-168/09. This was a reference from Italy asking about the compatibility with EU law of certain Italian provisions that the Court of First Instance of Milan had deemed potentially incompatible with the principle of cumulation envisaged under EU law. The Italian approach to copyright protection of designs has been traditionally rooted within the principle of scindibilità (separability). The CJEU held that EU law prohibits Member States from denying copyright protection to designs that meet the requirements for copyright protection – including designs other than registered ones (subject to Article 17 of the Design Directive) – and suggested that Member States cannot set any particular requirements as to how protection is to be secured.

The implication of all this appeared to be that – if a design is eligible for protection under the InfoSoc Directive and is, as such, original in the sense clarified by the CJEU – then Member States cannot deny such protection.

Such a reading of the Flos case is the one that, long before the Opinion of Advocate General (AG) Szpunar in Cofemel [Katpost here], AG Jääskinen had proposed in Donner, C-5/11 (at [31]):

[T]he judgment in Flos indicates that the items here in issue, although unprotected under Italian copyright law during the relevant period, were entitled to protection under EU copyright law.

The Flos decision has given rise to contrasting interpretations, and in the UK – for instance – it culminated in the repeal of section 52 of the Copyright, Designs and Patents Act 1988.

In all this it is worth noting that the ‘seeds’ of both Flos and Cofemel were sown long before these cases were decided.

As early as Infopaq, C-5/08, in fact, the CJEU removed the possibility of envisaging different standards of protection for different subject matter. If a work falls within the scope of application of the InfoSoc Directive, then protection only arises upon satisfying the requirement that it is its ‘author’s own intellectual creation’, that is the result of ‘free and creative choices’ (FAPL, C-403/08 and C-429/08) and something that carries the ‘personal touch’ of the author (Painer, C-145/10). As recently summarized by the Court in Funke Medien, C-469/17 (at [23]),

[I]t is for the national court to ascertain whether […] the author was able to make free and creative choices capable of conveying to the reader the originality of the subject matter at issue, the originality of which arises from the choice, sequence and combination of the words by which the author expressed his or her creativity in an original manner and achieved a result which is an intellectual creation (see, to that effect, judgment of 16 July 2009, Infopaq International, C‑5/08, EU:C:2009:465, paragraphs 45 to 47), whereas the mere intellectual effort and skill [is] not relevant in that regard (see, by analogy, judgment of 1 March 2012, Football Dataco and Others, C‑604/10, EU:C:2012:115, paragraph 33).

The Cofemel decision

In its Cofemel judgment, the CJEU proceeded along the very lines set by these earlier rulings. It may be worth noting that the Judge Rapporteur was Mr Malenovský, ie the same judge who – besides acting as rapporteur in over 50% of the copyright referrals today, was also the rapporteur in Infopaq.

The key question referred by the Portuguese Supreme Court was whether EU law (specifically: Article 2(a) of the InfoSoc Directive) prevents Member States from granting copyright protection to designs subject to requirements other than originality, eg, a high level of artistic value, as per the traditional Italian scindibilità and German Stufentheorie).

In order to answer, the CJEU moved from the notion of ‘work’ in Article 2(a), and recalled that this – like all those concepts that do not refer to the laws of individual EU Member States – is an ‘autonomous’ notion of EU law, which requires uniform interpretation across the EU. The Court referred to both Infopaq and the recent judgment in Levola Hengelo, C-310/17 [Katpost here] (at [33] and [35]-[37]) to note that the notion of work presupposes the fulfilment of two cumulative requirements:

It implies the existence of an original object, in the sense that said object is the intellectual creation of its author in the sense clarified above. This means that the originality criterion “is not satisfied when the setting up of the database is dictated by technical considerations, rules or constraints which leave no room for creative freedom” (Football Dataco, C-604/10, at [39]);
The notion of work is reserved to those elements which are the expression of such creation. As the CJEU stated in Levola Hengelo, this necessarily implies that the subject matter “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” (at [40]). There should be “no element of subjectivity –– given that it is detrimental to legal certainty –– in the process of identifying the protected subject matter” (at [41]).

"Mirror, mirror on the wall,
who's the fairest of them all?":
a question that no longer needs to be asked
post-Cofemel ...

Also considering a fundamental rights angle (Article 17(2) of the EU Charter of Fundamental Rights), the CJEU noted that “it does not follow that said objects or categories of objects shall all benefit from an identical protection” (at [38], my own translation from Italian). So, in this sense, in line with the Berne Convention (which does not preclude rights cumulation), different ‘objects’ might fall under the InfoSoc Directive, the Design Directive, and/or the Community Design Regulation, which pursue fundamentally different objectives.

All this said, however, if a design falls within the scope of the InfoSoc Directive, then the only requirement for copyright protection under this piece of legislation is that the design is a ‘work’ fulfilling requirements 1. and 2. above.

The Court also added that, if a national law were to require some sort of ‘aesthetic’ value for a design to be eligible for copyright protection, this would contradict the requirement of objectivity as mandated under EU law.

Implications

The Cofemel judgment is yet another landmark ruling of the CJEU with far-reaching consequences, both for designs and other ‘objects’ protected by copyright.

Designs

As far as designs are concerned, the judgment brings to its natural consequences the evolution already signalled by earlier case law: copyright protection simply arises upon fulfilment of the originality requirement. Nothing further is required.

Whilst this ‘throws out of the window’ those national approaches that have traditionally made copyright protection dependent on an artistic, aesthetic, etc value, it also makes it clear that the assessment of originality is to be a thorough one. In this sense, national courts will need to identify what makes a design an original work, also bearing in mind the CJEU’s considerations re technical features.

For those countries with an extra set of criteria that need to be fulfilled for a design to be eligible for copyright protection, the judgment clearly mandates a change of approach.

... as is the question of artistic intention
(and value!)

Other works

Moving on to other copyright subject matter, the implications of Cofemel are equally profound.

First, the judgment suggests that only the objective criteria indicated therein need to be satisfied: hence, there is no (longer) room for any requirement of artistic value or intent, as is instead still the case in certain jurisdictions. So, if we take the UK, the category of works of artistic craftmanship needs to be seriously re-considered. Furthermore, approaches like the one adopted by the UK Supreme Court in Lucasfilm (the Stormtrooper Helmet case) in relation to artistic works appear even more questionable than what could have possibly been the case so far.

Second, in line with earlier case law up till the Levola Hengelo ruling, Cofemel indicates that exhaustive lists of protectable subject matter (as is the case of, eg, the UK) are really incompatible with EU law. Protection only arises when there is a work in the sense clarified by the Court: no other requirements are needed. And, in line with the point above, copyright protection cannot arise at different conditions depending on the ‘category’ the object at issue belongs to.

Finally, as a follow up to Levola Hengelo, the Cofemel decision also questions the fixation requirement. It is true that the Berne Convention leaves it to individual signatory countries to decide on their own approach to fixation, but is that true also for EU Member States? It appears that the answer is in the negative: what EU law or, rather, the CJEU approach to EU copyright, requires is a harmonized approach to fixation across the EU. This means that there cannot be different choices are regards and understandings of fixation: the approach should be uniform across the EU and be the one mandated in Levola Hengelo and Cofemel.

[This contribution was first published on the Bird & Bird's DesignWrites blog: follow it for updates on relevant developments in the design and copyright world!]

BREAKING: CJEU rules that only requirement for copyright protection of designs is their originality

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Copyright in designs: what are the relevant requirements for protection? Is it compatible with EU law that a certain national law requires a design to be a 'work of art', an 'artistic creation' for copyright to vest in it?

This, in a nutshell, was the twofold issue at the heart of the referral from the Portuguese Supreme Court to the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17.

As readers will remember, this referral originated in the uncertainties arisen in the aftermath of earlier CJEU case law, most notably the Flos ruling, which suggests that - in fact - Member States (contrary to what appears from the wording of Article 17 of the Design Directive) would have no freedom whatsoever in determining the conditions at which designs are eligible for copyright protection.

A few months ago, Advocate General (AG) Szpunar advised [Katpost here; the Opinion is still unavailable in English] the Court to rule that copyright protection in designs should arise when the sole originality requirement is fulfilled, without taking into account any additional criteria. This means that - if the Court were to endorse the AG Opinion - national theories, like Italian scindibilità or German Stufentheorie, would no longer be acceptable under EU law.

As I wrote in my earlier post, the approach indicated by the AG is *correct* from the point of view of how EU copyright has developed in CJEU case law, irrespective of how desirable an outcome of this kind could be. I also ventured to say that it would be likely that the CJEU followed it.

The Court has just issued its judgment [currently only available in French and Portuguese] and ruled - indeed - that the only requirement for copyright protection to arise in designs is their originality.

The CJEU held that, in light of 'settled case law', in order for an 'object' to be regarded as original, it is

both necessary and sufficient for it to reflect the personality of its author, as resulting from their free and creative choices [para 30; my own translation from French]

However, the Court also noted that:

where the making of an object has been determined by technical considerations, by rules or by other constraints, which have not left room for the exercising of any creative freedom, then that object cannot be regarded as possessing the originality required to constitute a work [para 31; again my own translation]

Hence, Article 2 (a) of the InfoSoc Directive must be interpreted as precluding a national law from conferring copyright protection designs on the ground that, beyond their utilitarian purpose, they create a distinct and noticeable visual effect from the aesthetic point of view [para 56].

A more detailed analysis of this key judgment and its implications will be provided soon.

Nexus

UK court applies CJEU Cofemel decision for the first time: "complete conformity" with EU law would preclude any requirement of aesthetic appeal

The Cofemel decision well beyond the ‘simple’ issue of designs and copyright

BREAKING: CJEU rules that only requirement for copyright protection of designs is their originality

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