The Advocate General (AG) recently delivered his opinion in the Brompton bicycle case (C-833/18), which concerns the availability of copyright protection especially where there has been previous patent and design protection for a product.

The product in question here was Brompton's well-known folding bike which has been marketed since 1975. The request for a preliminary ruling arose out of copyright infringement proceedings in Belgium involving Brompton and a Korean company, Get2Get. Get2Get argued that copyright does not subsist in Brompton's bicycle, as its shape and features are dictated by purely functional considerations.

The availability of copyright and its interplay with other rights has been considered in a number of recent CJEU decisions, most notably Cofemel (see our article here). That important case made clear that:

• copyright protection is available for all original designs irrespective of aesthetic value
• a work is not original if it has been determined by technical considerations, rules or other constraints which leave no room for creative freedom, and
• design right and copyright protections are not mutually exclusive, both pursuing fundamentally different objects, so protection can be cumulative.

This opens the door for copyright to be available for a much broader range of designs and "works" than was previously thought to be the case. It has already been applied by the UK Intellectual Property Enterprise Court in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148.

The AG's opinion in Brompton bicycle is largely consistent with the CJEU's ruling in Cofemel. The AG advises the CJEU to rule that:

• copyright protection should not be available for exclusively functional shapes, and
• the fact that a patent has existed for the product in question should not automatically preclude copyright protection (although a registered patent may serve to identify technical constraints which dictated the shape of the product in question and the result intended).

However, the AG then goes on to consider what factors should be taken into account in determining whether a product is exclusively functional, opining that:

• In order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.
• Where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.

If followed by the CJEU, the AG's opinion will be broadly welcomed. The factors to be taken into account in determining "functionality" are broadly consistent with the factors brands lawyers will be familiar with considering when determining whether functional shapes are registrable as trade marks.

One notable difference between the AG's opinion and Cofemel, however, is that the AG considers the subjective intention of the creator of the work to be important in determining whether it achieves an exclusively technical result. This does not seem consistent with the CJEU's decision in Cofemel, which focused on whether a work meets the requirements for "originality" – an objective factor. It will be interesting to see what the CJEU makes of this point when it delivers its judgment in Brompton Bicycle. Either way, it seems that the CJEU has opened the door for the much longer term of copyright protection to be available for a broader array of works including works which have functional elements.