According to the latest ruling of the CJEU, the fact that the shape of a product is dictated by the desire to achieve a specific technical function should not per se rule out eligibility for copyright protection if the design of the product is also the result of the author’s personal choice
The Court of Justice of the European Union (the “CJEU”) has played a fundamental role in shaping copyright protection in the EU. In a significant number of cases, the CJEU has been presented with the same basic question: When should a work be eligible for copyright protection?
With the decision in case C-833/18 SI, Brompton Ltd. v. Chedech/Get2Get, the CJEU added a few criteria that can be used to understand whether a work is protected under EU Copyright Law. This followed another recent ruling—the Cofemel decision (also discussed here).
Brompton Bicycle: The main proceedings
Brompton Ltd. is an English company that created and patented a bicycle-folding mechanism (the main feature being that it allowed a Brompton bicycle to have three positions: unfolded, standing, and folded). The patent has expired, meaning the mechanism is now in the public domain.
The Korean company Get2Get manufactures and markets a bike (the Chedech bicycle) that has the same folding mechanism as the Brompton bicycle and a very similar appearance in terms of design.
Brompton alleged that Get2Get infringed its copyright and brought an action against that company before the referring court (the Companies Court in Liege, Belgium), seeking, in essence, (i) a ruling that Chedech bicycles infringe Brompton’s copyright, and (b) an injunction that all infringing activities by Get2Get cease, and the Chedech bicycle be withdrawn from the market.
Get2Get argued that the appearance of its bicycle was imposed by the specific technical solution, and that it deliberately adopted the folding mechanism (previously covered by Brompton’s patent) because it was the most appropriate method for manufacturing a folding bicycle. In other words, according to Get2Get the technical constraint dictated the appearance of the Chedech bicycle.
Brompton contended that there were other folding bicycles on the market that differed in appearance from the Brompton bicycle. Since different shapes are, in fact, possible—irrespective of the implementation of the folding mechanism—the plaintiff argued that the Brompton bicycle is protected by copyright, and therefore that the company owned exclusive rights to the relevant design. In fact, the appearance of the Brompton bicycle is an expression of original and creative choices made by the plaintiff.
In this context, the Belgian court decided to stay the main proceedings and submit the following questions to the CJEU for a preliminary ruling:
(1) whether EU law, in particular Articles 2–5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (the “InfoSoc Directive”) should be interpreted as excluding from copyright protection works whose shape is necessary to achieve technical results; and
(2) whether in assessing the relevance of a shape to achieve technical results, the following criteria may be helpful: a) the existence of other possible shapes that offer the same technical results; b) the effectiveness of the shape in achieving such results; c) the intention of the infringer to achieve such results; d) the existence of an earlier patent, now expired, on the process to achieve the technical results.
The first question referred to the CJEU: the concept of “work,” the requirement of originality, and the exclusion from copyright protection of works whose shapes are dictated by technical considerations
According to Articles 2–5 of the InfoSoc Directive, authors are protected against any unauthorized act of reproduction, communication to the public, or distribution to the public of their works.
According to the relevant case law of the CJEU, the concept of “work” requires (i) an original subject matter that is the author’s intellectual creation, and (ii) the expression of such creation. For a subject matter to be original, it is both necessary and sufficient that it reflects the personality of its author, as an expression of their creative choices. As a result, when subject matter has been dictated by technical considerations, it cannot be deemed original, so it does not constitute a work and thus is not eligible for copyright protection. In fact, Article 2 of the WIPO Copyright Treaty provides that copyright protection does not extend to ideas. Protecting ideas by copyright would lead to the creation of monopolies on ideas and ultimately prevent technical and industrial development. So, whenever the expression of the author is dictated by the technical function of their creation, such creation cannot be eligible for copyright protection.
However, a subject matter composed of both technical and creative elements can still be deemed a work of authorship protected under EU Copyright Law. The CJEU held that in the present case, the shape of the Brompton bicycle does appear essential to achieving a technical result (that is, making the bicycle foldable and self-standing). However, the CJEU pointed out that it is for the referring court to ascertain whether, despite such technical considerations, the Brompton bicycle is an original work of authorship, protected under the Copyright Law (that is, whether the design of the bicycle at hand is solely dictated by said function, or is the result of a personal choice of the author).
The second question referred for the preliminary ruling
The CJEU held that the first criteria pointed out by the referring court—the existence of other possible shapes capable of achieving the same technical results—is not decisive in assessing the factors that influenced the choice made by the creator. As for the fourth criteria—the existence of an earlier patent now expired—the CJEU held that it should be taken into account only if, through the analysis of the patent, it is possible to establish what was taken into consideration when choosing the shape of the product concerned.
As for the other two criteria listed by the referring court, the CJEU did not provide a specific answer. It merely dismissed the third criteria—the intention of the alleged infringer to achieve technical results—as irrelevant. In this respect, however, Advocate General Sanchez-Bordona in his opinion suggested that it would be more useful to explore the inventor’s intention, rather than the intention of the person who reproduces the invention. Doing so would make it possible to understand better whether the inventor was really seeking to create an original work of authorship or was simply seeking to develop an original industrial product. As for the second criteria, the Advocate General opined that the referring court did not provide enough information to grasp the exact meaning of this part of the question.
Considering the aspects highlighted in the decision in question, the CJEU concluded that it is up to the referring court to ascertain whether the Brompton bicycle is a creative work and therefore eligible for copyright protection, as doing so would require a substantive assessment that can only be carried out by the court having jurisdiction on the merits of the case.
In this context, the CJEU stated that Articles 2–5 of the InfoSoc Directive must be interpreted as meaning that copyright protection applies to a product whose shape is, at least in part, necessary to fulfill a technical requirement only if that product is still an original work of authorship because, through the choice of that particular shape, the author expresses their creative ability.
 In the Cofemel case, the CJEU held that “Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the grounds that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect.”
 See Cofemel, C-683/17.