Brompton Bicycle Case: CJEU Decision on Copyright Protection for Functional Designs
The law on copyright protection unfolds
19 June 2020
In its recent decision, the Court of Justice of the European Union (CJEU) has clarified that copyright protection does not extend to purely functional designs (Case C-833/18).
The claimant, Brompton Bicycle Limited ("Brompton"), is a well-known British manufacturer of iconic foldable bicycles which incorporate a hinged frame in their design in order to allow the bicycle to fold (Figure 1). The defendant, Get2Get Chedech ("Get2Get"), a South Korean company, began to market their own foldable bicycle in Belgium (Figure 2).
Brompton asserted that the Get2Get bicycle copied the shape and appearance of its iconic bicycle design and subsequently brought a claim against Get2Get for copyright infringement before the Belgian Court. In its defence, Get2Get claimed that the appearance of the Get2Get bike did not amount to infringement of copyright on the grounds that the bicycle designs were "dictated by the technical constraints involved in producing a foldable bike" and that the designs were "the most functional method" for creating a folding bicycle. In reply, Brompton asserted that its bicycle design was original since there was sufficient freedom of design and that this was supported by the fact that a number of other folding bicycles available on the European market did not bear such substantial similarities to the shape and appearance of the Brompton bicycle.
The Belgian Court stayed proceedings and made a reference to the CJEU to clarify whether copyright protection under EU law (including the InfoSoc Directive (Directive 2001/29)) extended to products whose shape, at least in part, is necessary to obtain a technical result. The following questions were referred to the CJEU:
(1) whether EU law must be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result; and
(2) in assessing whether a shape is necessary to achieve a technical result, should the following factors be considered:
(i) existence of other possible shapes that would allow the same technical result to be achieved;
(ii) effectiveness of the shape in achieving that technical result;
(iii) the intention of the alleged infringer to achieve that result; and
(iv) existence of an earlier, now expired patent on the process for achieving the technical result sought.
This reference was against the background of the Court's earlier decision in a designs case (DOCERAM (C-395/16)) in which it held that: in order to determine whether the features of appearance of a product are exclusively dictated by technical function for the purposes of design protection law, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.
In its decision of 11 June 2020, the CJEU followed its earlier decision in COFEMEL C-683/17, in taking a broad view of what may be a work for the purposes of copyright protection. A work must be "identifiable with sufficient precision and objectivity" and be an expression of the author's own intellectual creation.
The Court held that copyright protection is, in principle, available to products whose shape is, at least in part, necessary to obtain a technical result, insofar as that product is "an original work resulting from intellectual creation, in that, through that shape, its author expresses their creative ability in an original manner by making free and creative choices in such a way that the shape reflects their personality". The CJEU further explained that a work would not be "original" where the realisation of the subject matter "has been exclusively dictated by technical considerations, rules or other constraints which have left no room for creative freedoms".
With regards to what factors should be considered by the Court when assessing whether a shape is necessary to achieve a technical result, the CJEU held the following:
- Existence of other possible shapes: the existence of other foldable bicycles, with different shapes that would allow the same technical result, was not a decisive factor in deciding whether the shape of the product was solely dictated by its technical function or whether the author had expressed "creative ability".
- Effectiveness of the shape: the effectiveness of a shape in achieving a technical result should "be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.” Moreover, it will be a matter for the referring Court to take account of all the relevant aspects "as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product."
- Intentions of the alleged infringer: the intentions of the alleged infringer are irrelevant when considering whether the shape of a product would be exclusively dictated by the technical function of the product.
- Existence of earlier patent rights: the existence of an expired patent was considered to be relevant but only to the extent that the expired patent could assist judges in determining why a specific shape was chosen by its creator.
The opinion of the CJEU will be subject to the interpretation of national courts across the European Union. The Belgian Court will now have to determine whether the Brompton bicycle design is primarily dictated by the bicycle's requirement to fold and if the design amounts to an "original work".
Following the Brompton and Cofemel cases, product designers should seek to include demonstrable creativity in their designs that can be clearly distinguished from functionality in order to increase the likelihood of certain elements of the design (e.g. the shape) being protected by copyright. This is a positive step for creative businesses, particularly early-stage businesses that may not have the capital required to pay the fees to apply for and maintain registered IP rights (e.g. patents; registered designs). In addition, sophisticated businesses that previously benefitted or currently benefit from the protection of registered IP rights, will now potentially have another form of protection to prevent unscrupulous third parties from misappropriating their designs.
In light of the above, companies should continually consider whether their product designs are solely governed by a particular function and keep a log of the design and creative process in order to demonstrate the artistic and design considerations that have contributed to the design, shape and appearance of the final product.
Uche Eseonu , Trainee in the IP Group, contributed to the writing of this article.