An iconic design
Brompton make the very well-known bicycle with a characteristic folding mechanism and shape. The design was originally made in 1987.
Of course, the obvious intellectual property protection for a shape is registration of the design. That allows the owner to prevent others making articles to the design which (in the EU context) create the same overall impression as the owner’s design. Alternatively the owner can rely on unregistered design right where the design has been copied, but only (in the EU context) for a very short period of time. In the Brompton case either form of design protection would have expired. Brompton also had a patent for the folding mechanism – that has expired.
Increasingly originators or owners of iconic designs look for other routes to protect their designs. Brompton, in proceedings in Belgium, are seeking to rely on copyright protection. Copyright is familiar and more normally encountered in the context of books, films, computer software, sculptures and engravings and the like, rather than in relation to three dimensional utilitarian articles, and countries have historically had varying rules for dealing with copyright protection specifically for utilitarian or industrially produced articles.
Copyright for utilitarian designs
In this case, under Belgian law, copyright protection is available for utilitarian designs. However, the Defendant sought to challenge the application of copyright protection here on the basis that it should not be available for a design which was dictated by the function that article is to perform – and argued that the shape of the Brompton bicycle is chosen in order to perform the folding function for which it is well known. This raises a similar argument to that in relation to EU registered designs. For those, there is an express exception: designs which are dictated solely by function are not protected (and there is a similar exception in relation to unregistered design right). The rationale behind this is that the function, if it is inventive, is protectable by a patent. And registered designs and copyright should not be used to provide an alternative to or to extend those forms of protection.
The Belgian Court referred this question to the Court of Justice of the EU (CJEU) as the scope of protection given by copyright in EU Member States is the subject of the EU’s “InfoSoc” Directive (Directive 2001/29/EC).
Free and creative choices
The CJEU, handing down its judgment on 11 June, continued the line of earlier CJEU cases. They observed that, as held in a number of earlier cases, the InfoSoc Directive requires that copyright protection should be given to any “original work”. An “original work” is an autonomous EU legal concept (ie EU law determines what it means, not Member States’ national law). An original work was one whose subject was of a sufficiently certain form to determine the scope of copyright protection to be given (“the existence of a subject matter that is identifiable with sufficient precision and objectivity”, para 25) and which permitted the originator the freedom to express their free and creative choice in such a way that the shape reflects their personality. Thus the necessary and sufficient test – as applied in other cases – for a three dimensional shape to have copyright protection was that its shape could and did express the creative choices of the originator.
The relation to a design which was functional, the question was simply (still) was there sufficient design freedom to permit the originator the freedom to express their free and creative choices in such a way that the shape reflects their personality (“[The design] may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices.”, para 26). If there was no design freedom then it would not be possible that the design reflected the creativity of the originator. If there were different ways in which the function could be achieved (particularly if these were limited) then the design might nevertheless be indissociable from the function. (“Where the expression of those components is dictated by their technical function, the different methods of implementing an idea are so limited that the idea and the expression become indissociable”, para 27)
In relation to whether this should not be permitted to extend any patent protection, the CJEU regarded patent protection as relevant only in that it might give an indication of the (or a) function that the design was intended to perform – the test remained whether the shape could and did express the creativity of the originator.
In respect of registered designs there has been some discussion of functionality test: is the design solely dictated by function, and one aspect discussed has been whether the intention of the creator is relevant. A similar question was raised in this case, and the CJEU said the creator’s intention was not relevant.
Finally, it is worth noting that the CJEU said (as might be expected) that the test of whether the subject matter was one which permitted the creator to express his or her free and creative choice so that the shape reflects their personality is a test to be applied at the time the design was created.
It is now for Brompton to go back to the Belgian Court and convince them that the shape of the bicycle permits sufficient design freedom to express the creativity of the originator.
Is UK law out of step?
In the UK there is still a question, which has remained stubbornly unanswered in the CJEU. That is whether, in some circumstances, the scope of copyright protection given to a design can be limited – for example by excluding it in relation to certain categories of work. Under section 51 of the UK Copyright Designs and Patents Act, it is not an infringement of copyright in the design for anything other than an artistic work, (amongst other things) to make an article to the design. Many commentators say that, because the CJEU has said that it is irrelevant whether something is an “artistic work” to qualify for copyright protection, section 51 can no longer be good law. The argument is that since a work is entitled to copyright protection under EU law, without reference to whether it is specifically an “artistic work” the use of that term in section 51 is now unlawful.
However, it is not at all clear that this analysis is correct. Both the InfoSoc Directive, and the EU Designs Regulation and Directive, specifically reserve to Member States provision for qualifying the scope of copyright protection in respect of designs. The InfoSoc Directive provides (Recital 60):
“The protection provided under this Directive should be without prejudice to national or Community legal provisions in other areas, such as industrial property, …, which may affect the protection of copyright or related rights.”
and the Designs Regulation (Regulation (EC) No 6/2002, Article 96(2)) and Directive (Directive 98/71/EC, Article 17) state:
“A design protected by a [Community design/design right registered in or in respect of a Member State in accordance with this Directive] shall also be eligible for protection under the law of copyright of [Member States/that State] as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.”
This expressly permits Member States to include a qualification to the scope of protection afforded to a design under copyright law – subject obviously to complying with other binding rules in the EU (An example of such a rule is the Directive harmonising the term for copyright, which is the subject of the Flos case, C-168/09). So there is no reason why the UK s.51 rule (that it is not an infringement in copyright in a design for anything other than an artistic work to make an article to the design) is not still good law. The test for an “artistic work” in this section is a matter for UK law, as its purpose is simply to limit the scope of protection given by copyright law in respect of designs. So product designers like Brompton may still not hold all the cards.