Copyright protection of designs: the “cofemel” decision and its potential effects
On September 12, 2019, the Court of Justice of the European Union ruled that the only condition for a design to be eligible for copyright protection is its originality, in the sense that it is its author’s own intellectual creation

With the ruling issued on September 12, 2019 in Cofemel, C-683/17 (the “Decision”), the Court of Justice of the European Union (“CJEU”) affirmed that the only condition for a design to be eligible for copyright protection is its originality, so that it shall qualify as a “work” within the meaning of directive CE/2001/29 (the “InfoSoc Directive”), when it is its author’s own intellectual creation and bears his personal touch—as previously ruled in the landmark cases Infopaq, C-5/08 and Painer, C-145/10.

The Decision is the result of a reference by the Supreme Court of Portugal in the context of a pending dispute between two companies, Cofemel Sociedade de Vestuário SA (“Cofemel”) and G-Star Raw CV (“G-Star”), both active in the field of manufacturing and the sale of clothing. According to G-Star, Cofemel had copied some of its jeans, sweatshirt and t-shirt models, thus —inter alia—infringing its copyright, as G-Star argued that these were original creations and, as such, enjoyed protection pursuant to the applicable Portuguese legislative provisions on copyright and related rights.

The demands advanced by G-Star had been upheld in both the First and Second Instance by the competent Portuguese courts, so Cofemel appealed the decision of the Court of Appeal of Lisbon (Tribunal da Relação de Lisboa) before the Supreme Court of Portugal (Supremo Tribunal de Justiça). Before referring the case to the CJEU for a preliminary ruling, the Supreme Court observed that the Portuguese legislative provisions invoked by G-Star in the main proceedings do not clarify what the required degree of originality for designs is in order that they fall within the scope of copyright protection, given the reference in such national provisions to the fact they shall amount to “artistic creations”. In fact, the point is debated among both national case-law and commentators. Here lies the interpretive issue behind the questions referred by the Portuguese court to the CJEU, who went on to ask whether Article 2(1)(a) of the InfoSoc Directive—according to which Member States shall provide the exclusive right to authorize or prohibit the reproduction of their works for authors—should be construed in the sense that it precludes national legislation which, in relation to designs, makes their eligibility for copyright protection subject to the existence of a certain level of aesthetic or artistic value.

In other words, the CJEU has been called to answer whether designs should qualify as creative works due to the mere fact that they are the original intellectual creations of their authors or, instead, if Member States can set out other requirements, so that the fact that designs generate an effect from an aesthetic perspective may be a relevant condition for the access to copyright protection at a national level.

Recalling its own well-settled case-law (inter alia Infopaq, C-5/08 and Levola Hengelo, C-130/17), the CJEU reiterated that any original object should qualify as a “work” within the meaning of the InfoSoc Directive inasmuch as it represents an intellectual creation of its author. The CJEU went on to add that this qualification shall cover the elements of a “work” that are the expression of such creation. When assessing whether a creative work is eligible for copyright protection, any element that thus brings into play a degree of subjectivity in such an assessment shall be avoided, as it would be prejudicial to legal certainty.

Consequently, according to the CJEU, Article 2(1) of the InfoSoc Directive prevents Member States from setting out legislative provisions that require any element other than originality in order for a work to be eligible for copyright protection. For these reasons, in the case referred to above, the CJEU excluded, on the one hand, industrial models and designs being subject to higher scrutiny—meaning that they should not need to have any artistic value to access copyright protection—while, on the other, the mere fact that they may generate a visual impact from an aesthetic perspective is not per se relevant in the assessment of their nature as creative works, that is, of their originality.

The Decision is likely to have a significant impact on Member States whose national legal systems require designs to have something more than “ordinary” originality to be eligible for copyright protection. This is the case of Italy—not without reason, having already referred similar questions to the CJEU in Flos, C-168/09—where Article 2(1)(10) of Law no. 633/1941 on copyright and related rights requires these works to be endowed with an “artistic value” in addition to the generally required minimum level of creativity.

As in Portugal, Italy too has experienced a long and passionate judicial and scholarly debate on the actual meaning of such artistic value and its peculiar role in setting out a field-specific threshold for designs. Now, the Decision should provide further (and more definitive) guidance to national courts—Italian ones included—and should pave the way for wider access and more objective scrutiny when it comes to designs and copyright protection.

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