Abstract of machinery with blue tint.

Wheely good news for product designers?

17 June 2020. Published by Ben Mark, Partner and Alessandro Cerri, Associate

In Brompton Bicycle, C-833/18, the CJEU has confirmed that copyright can subsist in designs that are shaped to achieve a certain technical result, provided certain conditions are met.

Background

The case concerns the iconic Brompton folding bicycle (the Brompton).

The Brompton was created in 1975 and has been sold, in its current form, since 1987. It has become a firm favourite with commuters due to its compact size and famous folding mechanism. The mechanism, which was previously protected by a patent, facilitates the Brompton being folded into three positions: folded; unfolded; and 'stand-by'. The latter enables the bike to stay balanced, on the ground, unsupported.

In recent years, Korean sports equipment company, Get2Get began marketing its own foldable bicycle, dubbed the "Chedech" (the Chedech). The Chedech bears a striking resemblance to the Brompton and folds into the same three positions.

In November 2017, Brompton sought a ruling from the Companies Court of Liege, Belgium, that the Chedech infringed the copyright in the appearance of the Brompton.

In its defence, Get2Get argued that the Chedech's appearance was dictated by its desired function (i.e. that the Chedech had to look a certain way, in order to fold into three positions). In those circumstances, Get2Get said that the Brompton could be protected by a patent but not under copyright law. Brompton disputed this, saying that the three folded positions could be achieved through the use of differently shaped components: as such, the appearance of the Brompton could, and indeed did, attract copyright protection.

The Liege Court stayed the Belgium proceedings and referred two questions to the CJEU. Most interesting was the question of whether EU law had to be interpreted as excluding works whose shape is necessary to achieve a technical result, from copyright protection.

Judgment

The CJEU held that in accordance with "settled case-law", a work only has to meet two conditions, to be protected under EU copyright law, namely:

  1. originality of subject matter which is the author’s own intellectual creation; and
  2. the expression of the creation referred to in (1).

The CJEU's judgment leans heavily on its previous decision in Cofemel v G-Star Raw, which we covered in an earlier post.

If originality is satisfied, the CJEU held that it must follow that the subject matter is 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."

In plain language, even if the appearance of an original work has been dictated by its technical features, it will nevertheless attract copyright protection, unless those features have forced its author down a specific path, leaving no space for creative freedom. Where the shape of a product is solely dictated by its technical function however, the CJEU made clear that it cannot be covered by copyright protection.

In the present case, the CJEU noted that the shape of the Brompton appears necessary to obtain the technical result of folding the bike into three positions, one of which allows it to balance on the ground. Ultimately, it will be for the referring Court to decide whether, in spite of this, the Brompton is an original work, resulting from intellectual creation.

Comment

It seems that EU law is now 'settled' on the fact that designs, even functional ones, can benefit from copyright protection, as long as they are 'works' for the purposes of EU copyright law. The duration of copyright (70 years from the end of the year in which the author dies, for artistic works) considerably exceeds that of other intellectual property rights. As such, the apparent scope, which the decision appears to create, for technical objects to attract copyright protection, will be welcomed by product designers.

It remains to be seen however, if and how the decision will be implemented at Member State level (particularly in the UK, post-Brexit).

Images of the Brompton and the Chedech were reproduced in the Advocate General's non-binding opinion on the matter and can be viewed here.