Shapes and designs can be protected in a multiplicity of ways under EU law, potentially as copyright works, designs (registered or unregistered), or trade marks. Aspects may be patentable. Which form of protection applies in a given case and the extent to which more than one form of protection may be available are complex issues which rightsowners and the courts are constantly grappling with. The CJEU's recent decision about copyright law and Brompton Bicycles therefore comes as a welcome note of clarity.

The central question was whether copyright protection could apply to a product whose shape is, in part, necessary to obtain a technical result. The CJEU's answer was that a shape dictated by technical function did not attract copyright. Copyright could subsist if, by choosing the shape, the designer had "expressed 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".

Facts

The product in question was Brompton's folding bicycle (below left), which folds into three different positions. The request for the CJEU arose out of copyright infringement proceedings in Belgium involving Brompton and Get2Get, a company which markets a bicycle which is visually similar to the Brompton Bike and folds into the same three positions (below right).

Brompton argued that Get2Get's bicycle infringed their copyright. Get2Get disagreed, arguing that copyright does not subsist in Brompton's bicycle as its shape and features are dictated by purely functional considerations.

Questions referred and the Advocate General's Opinion

The Belgian Court referred two questions to the CJEU. The CJEU amalgamated those questions into the single question of whether copyright protection applies to a product whose shape is, at least in part, necessary to obtain a technical result.

We have written previously about the Advocate General's Opinion published in April 2020. The CJEU largely followed that Opinion, though was less definite about the importance of the designer's intention. Nevertheless, the Court made it clear that getting inside the designer's mind is crucial.

Judgment

In line with the CJEU's judgment in Cofemel (C-683/17), the Court explained that copyright subsistence has two conditions. Firstly, it entails an original subject matter which is the author's own intellectual creation. Secondly, it requires the expression of that creation in a sufficiently identifiable way. Here, only the first question arose, and the Court explained the questions which need to be considered in determining that:

• Timing: The relevant time period for examining whether the design was the author's own intellectual creation was when the product was designed. Anything subsequent was irrelevant. For the design to be regarded as original, the subject matter must reflect the personality of its author, as an expression of their free and creative choices. 
• Functionality: The functionality of the design was central to the question of determining originality. Importantly, the Court held that functional designs could nevertheless amount to an "original work resulting from intellectual creation." A design will not be regarded as original where its realisation has been dictated by technical considerations which have left no room for creative freedom. If it is impossible to separate the design and the idea, copyright will not subsist. Even if there are a number of shapes which can achieve the same technical result, that will not of itself mean that the resulting work attracts copyright. 
• Room for originality among technical considerations: The CJEU held that, in light of the above, a subject matter may be regarded as original even though its realisation has been dictated by technical considerations, provided that those technical considerations have left room for creative freedom. The existence of an earlier (now expired) patent on the process for achieving the technical result and a shape's effectiveness in achieving that result,should be considered only in so far as they make it possible to reveal what the creator considered when choosing the shape of the product. In the CJEU's view, the shape of the Brompton bicycle was necessary to obtain a technical result, namely that it may be folded into three positions. However, it was for the Belgian court to ascertain whether, in spite of this, it was an original work resulting from intellectual creation.

Consequences

This is an important judgment that helps provide a clear way through part of the maze of laws around protection of shapes. In particular, the guidance that a functional article may be protected by copyright casts doubt on laws of EU Member States which suggest that it is a binary position and that functionality negates the possibility of copyright protection. 

It also provides useful guidance about which evidence will be important – namely, that it is all the factors which went into the designer's design choices when those were being made.