Cofemel – Sociedade de Vesuario SA v G-Star Raw CV – C-683/17

What has happened?

An important CJEU ruling could mean that copyright protection is available for a broader range of designs than is presently the case. Under the Copyright Directive (2001/29/EC), as interpreted by a number of CJEU cases starting with Infopaq in 2009, for copyright to subsist in a "work", it must be original, meaning that it must represent the author's own intellectual creation, and it must be an expression of that intellectual creation. There is no requirement for the work to have aesthetic value.

Despite this, a number of EU Member States provide that copyright only subsists or is enforceable in designs if they are aesthetic or "works of art". In the UK, for example, designers are limited in their ability to enforce copyright in designs for the shape or configuration of three-dimensional articles except where the design is for an artistic work, typeface or any surface decoration component (section 51 Copyright, Designs and Patents Act 1988 (CDPA)). Without such a provision, copyright in drawings could be used to protect three-dimensional articles such as car exhausts which do not themselves qualify for copyright.

The protection of the shape and configuration of three-dimensional articles raises questions under IP law because there are a number of different types of IP right which could be used to protect them, including copyright, design rights and trade marks. Should any of these rights take precedence such that the others fall away, or can they all apply cumulatively with different criteria for their subsistence and term of protection?

The CJEU's ruling makes clear that design right and copyright protections are cumulative and that the only requirements for copyright to subsist are that the design represents the author's own intellectual creation and that it is an expression of such a creation. Separate, aesthetic, considerations are not relevant. This might open the way for an attack on any national provisions – such as section 51 CDPA – which seek to limit copyright protection for more functional designs. However, it seems unlikely that any such attack could take place quickly enough for it to be effective prior to the expiry of the Brexit transition period. Thereafter, the UK government would have to legislate to repeal or amend section 51 CDPA, which also seems unlikely.

Facts

G-Star Raw sued Cofemel in Portugal for infringement of the copyright in G-Star's ARC brand jeans and ROWDY brand sweatshirts and t-shirts. Portuguese law only confers copyright protection on designs if, upon analysis of the artistic character and dominant trends in cultural and institutional circles, the design qualifies as an "artistic creation" or a "work of art". The question was whether G-Star's clothing met this criterion. The Portuguese appeal court referred two questions to the CJEU centring on whether EU law precludes Member States from providing that copyright only subsist in designs which generate an aesthetic visual effect.

Context

The CJEU has previously considered the interplay between design right and copyright laws. In Flos (C-168/09), it ruled that EU law precludes Member States from denying copyright protection to designs that meet the requirements for copyright protection.

As a result, the UK repealed section 52 CDPA which limited the term of copyright protection to 25 years for artistic works (other than works of sculpture) which had been industrially manufactured. However, it did not repeal section 51 CDPA. A number of EU Member States – including the UK, Portugal, Italy and the Czech Republic – argued that the Flos and Infopaq decisions had to be read alongside Article 17 of the Directive on the legal protection of designs (98/71/EC) and Article 96(2) of the Community Design Regulation (6/2002). Both of these expressly provide that the extent of, and conditions for, cumulative protection are to be determined by each Member State.

Decision

The CJEU held that:

• The only requirement for copyright protection is qualification as a "work" under the Copyright Directive. There will be a "work" if the object is original because it is its author's own intellectual creation and if the work is the expression of such a creation. The work also has to be identifiable with sufficient precision and objectivity.
• Design right and copyright protections are not mutually exclusive, both pursuing fundamentally different objects, so protection can be cumulative.
• The concept of a "work" must be interpreted uniformly across the EU. Articles 17 and 96(2) of the design rights legislation were only relevant pending harmonisation of copyright law across the EU which was achieved by the Copyright Directive.
• A work will be its author's own intellectual creation if it reflects the author's personality and its free and creative choices (this applies previous decisions including Painer).
• However, a work is not original if it has been determined by technical considerations, rules or other constraints which leave no room for creative freedom.
• Where the identification of a work is based on subjective feelings and someone's perception, the precision and objectivity requirements are not met.
• The fact that a work generates an aesthetic effect does not, in itself, make it possible to determine whether it is original or satisfies the identifiability requirement.
• The CJEU suggested that this finding should not allow copyright protection to extend too far and, for example, affect the respective purposes and effectiveness of design right and copyright protection. For example, it recognised that design right is normally applied for a limited period of time which allows recoupment of investment without impeding competition too much.
• Therefore, EU law precludes Member States from providing that copyright only subsists in designs which – beyond their utilitarian purpose – generate an aesthetic visual effect.

What this means for you

The ruling calls into question any provisions of EU Member State national law – including section 51 CDPA – which seek to impose a different test for originality on designs. This could have significant implications for designers across the EU, potentially meaning that the much longer term of copyright protection is available for even functional designs.

However, designers would still have to show that a particular design meets the EU's test for originality, including that the design is not determined by technical features, and that there is expression of that originality (as opposed to just an idea). The ruling also casts further doubt on closed lists of works in which copyright subsists, including in the CDPA (artistic, literary, musical etc). While designers will welcome the decision, its impact in the UK might be limited.