The Court of Justice of the European Union (CJEU) has held in Brompton Bicycle Ltd v Get2Get (C-833/18) that a functional shape may be protected by copyright if it is ‘original’ in the copyright sense.
The shape at issue was the famous Brompton bicycle, which is designed to assume three positions: folded, unfolded and standby. It had been protected by a patent, which expired. Get2Get then began selling a rival bicycle with a similar ability to assume three folding positions and, crucial to the copyright claim, a similar shape.
Brompton brought an action before the Companies Court in Liège, Belgium, seeking a ruling that Get2Get’s bicycles infringed Brompton’s copyright. Get2Get contended that the appearance of its bicycle was dictated by the desired technical solution, namely to ensure that the bicycle can fold into three different positions and that such a result could not be protected under copyright law.
The Belgian court referred the following two questions to the CJEU.
Must EU law, in particular in Articles 2 to 5 of the EU Copyright Directive (2001/29) – which determines, among other things, the various exclusive rights conferred on copyright holders – be interpreted as excluding from copyright protection works where the shape is necessary to achieve a technical result?
The court held that copyright protection will only be precluded per se where the shape of the product is solely dictated by its technical function. It derived this rule from its previous recent decision in Cofemel (C‑683/17) (12 September 2019). In this case, the court held that two conditions must be satisfied to be a copyright protected work:
- there must be original subject matter (ie, it represents the author’s “own intellectual creation”); and
- the subject matter must be expressed in such a way to make it “identifiable with sufficient precision and objectivity”.
The court observed that there appeared to be no dispute that the Brompton bicycle satisfied the second condition, since the bicycle’s shape was identifiable with sufficient precision and objectivity.
As to whether the shape had the necessary degree of originality, this assessment falls to the national court. The CJEU outlined the principles to be applied, stating that, in order for subject matter to be original, “it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices”. Where the subject matter has been “dictated by technical considerations, rules or other constraints which have left no room for creative freedom” (author’s emphasis), then there will be no protection under copyright. The CJEU stressed that the mere presence of technical considerations will not be a bar per se to copyright protection and the national court must assess “whether, through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality”.
To determine if shape is necessary to achieve a technical result, it was assessed whether account should be taken of the following criteria:
- the existence of other possible shapes, which allow the same technical result to be achieved;
- the effectiveness of the shape in achieving that result;
- the intention of the alleged infringer to achieve that result; and
- the existence of an earlier, now expired, patent on the process for achieving the technical result sought.
The CJEU emphasised that originality is the controlling factor. Consistently with this, it held that:
- the existence of other possible shapes that can achieve the same technical result makes it possible to establish that there is a possibility of choice, but this alone is not decisive in assessing the factors that influenced the choice made by the creator;
- the intention of the infringer is irrelevant; and
- the existence of an earlier, now expired, patent and the effectiveness of the shape in achieving the same technical result should be taken into account insofar as these factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.
Where does this leave bicycles and similar products in the United Kingdom?
Traditionally, designers of bicycles and similar products have looked to patent protection (as did Brompton) and registered or unregistered design rights to protect their creations. The CJEU’s decision certainly leaves the door open for certain types of design in some EU jurisdictions to enjoy copyright protection. This protection clearly has its attractions to bicycle designers, since its duration of the creator’s life plus 70 years far outstrips the duration of patent or design rights.
However, each design must, on its own facts, satisfy the court’s Cofemel test of being both original and a work of sufficient precision and objectivity. These conditions must be met in all EU jurisdictions. The United Kingdom has traditionally imposed a further condition: a work must also fall into one of the recognised, closed categories of original literary, artistic, dramatic or musical works listed in Section 1 of the Copyright, Designs and Patents Act 1988, or else the broader (but still closed) categories of Article 2 of the Berne Convention. This further condition now appears at odds with the second condition in Cofemel and it is not clear how UK courts will resolve this tension between a judgment of the CJEU and UK legislation, particularly in view of Brexit. If UK courts remain loyal to legislation, then it is very difficult to imagine how bicycles could fall into one of the recognised categories (the most promising, if any, would seem to be artistic works, where sculptures and works of artistic craftsmanship are recognised sub-categories).
Given these uncertainties, creators would be advised to continue to seek protection in the form of patents and/or design rights, and to rely on copyright as a fallback in litigation or when patent and design rights have expired only.