Copyright clarification from Europe’s top court

Where does design stop and art start? And how should the resulting works be legally protected?

These are questions that intellectual property laws have been struggling with for over a century. A recent judgment provides some clarity as to the approach that should be taken in Europe, potentially strengthening the hand of designers.

Copyright v design right

Typically, artistic works and the appearance of functional products have been protected by different types of intellectual property.

A functional product’s appearance is protectable through design rights. In Europe, the right which affords the longest duration of protection (up to 25 years) is the EU Registered Community Design. Upon registration of the design, this offers a monopoly right over the appearance of a product. Protection extends to products which do not produce a substantially different impression on the informed user.

Copyright, on the other hand, is generally thought of as protecting artistic works. Copyright is not a monopoly right. It only restricts copying and cannot be enforced against works of independent creation. Copyright arises without registration. In Europe copyright extends for the life of the author plus 70 years. Copyright might therefore offer a work protection for well over a hundred years from the date of its creation.

So far, so straightforward. However, at the intersect of art and design complications arise. Take a one-off chair, crafted by hand. It is a work of art, capable of copyright protection? On what basis should its artistic merit be assessed? Is the designer’s background or intention relevant? What if the one-off chair is subsequently mass produced? And can the chair be protected simultaneously by both design rights and copyright?

In light of recent developments, a consensus may now finally begin to emerge on these issues in Europe.

“European” copyright

Unlike some intellectual property rights, copyright is not fully harmonised across Europe. Whilst international conventions have resulted in all European countries’ copyright protection meeting minimum standards, individual countries have historically adopted different criteria as regards the types of work that can qualify for copyright protection and the standards required to qualify as a copyright work.

For instance, the UK has specific types of artistic works which are capable of qualifying for copyright protection (graphic works, photographs, collages, work of architectures, or works of artistic craftsmanship). Other countries’ copyright laws are open-ended in the types of work they might cover.

Equally, the threshold for copyright protection differed. In the UK the test was one of “sufficient skill and labour”, whereas other European countries tests related to “intellectual creations” or “original character”.

Whilst there is no harmonised “European copyright” per se, there has been some European legislation that addresses certain aspects of copyright. For more than 10 years, the CJEU has handed down a series of decisions which have sought to harmonise copyright protection across the countries of the European Union based on this legislation.

However, there remained a significant diversity of approaches across Europe as to the copyright protection afforded to designs.

The CJEU’s latest intervention

The latest development concerning copyright protection is the CJEU’s decision in Cofemel (C-683/17), handed down on 12th September.

The Cofemel judgment originated from a dispute between Cofemel and G-Star Raw in Portugal. The case concerned the possibility of copyright subsisting in the designs of G-Star Raw’s jeans and t-shirts. In essence, the question facing the CJEU was whether member states of the European Union had the freedom to choose the threshold which works of applied art, industrial designs and works of design should meet if they were to qualify for copyright protection.

The CJEU’s judgment in Cofemel now makes unambiguously clear that the requirements to be a “work” in which copyright can subsist are the same for functional products as they are for all other relevant works. The requirement is that the work be “the author’s own intellectual creation”, reflecting the personality of its author and expressing their free and creative choices.

Importantly, the judgment makes clear that an assessment of artistic merit or aesthetic impression is not part of the requisite test. Any assessment of artistic merit was considered to be too subjective and uncertain to provide sufficient legal certainty.

A revolution in industrial copyright protection?

In some European jurisdictions the implications of this decision may be far-reaching.

For instance, Italian courts have, in recent years, adopted a test based on the artistic value of the design when considering copyright subsistence in designs. This was often informed by the recognition of the design by cultural institutions, such as museums. This had the consequence that historic designs were more likely to qualify for copyright protection than newer designs.

Even more out of step with the CJEU’s decision is the existing approach of the UK courts. They would only allow copyright protection if the design in question qualified as a “sculpture” or “work of artistic craftsmanship”. Articles that do not neatly fall into these categories would be denied protection. For instance, in one well-known case, the design of the Star Wars Storm Trooper helmet was considered to be neither a sculpture nor a work of artistic craftsmanship. Accordingly, it could not qualify for copyright protection in the UK.

Both countries’ existing approaches (and those of many other member states) would appear to be inconsistent with the CJEU’s decision.

Or more of an evolution?

At first blush, this judgment might appear to significantly broaden the scope of what is protectable by copyright and open the door to copyright in the designs of everyday objects. However, the reality is likely to be more nuanced, for two reasons:

• First, the CJEU explained that where the product has been designed around technical considerations that leave no margin for creative freedom the product would lack the necessary originality to be a copyright work.
• Second, while the CJEU explicitly stated that products can be protected by both copyright and design rights, it also took the opportunity to distinguish between the purpose of the two intellectual property regimes. The CJEU approved the notion that overly broad copyright protection could undermine design rights and, if it afforded an extensive duration of protection to trivial objects, erode the value of copyright itself. Accordingly, the CJEU made clear that copyright protection should not be available for all products.

Need to revisit

Member states’ existing approaches to copyright protection at the interface of design law will have to be revisited after this latest CJEU decision. Existing national legislation will need to be read in accordance with the Cofemel decision or, if that is not possible, we can expect national legislation to be amended to align with it.
Consequently, product designs which may previously have failed to qualify for copyright protection in some jurisdictions should be on a much firmer footing across Europe. We can expect the limits of what is protectable by copyright to be tested in the Courts in the years to come.