IP Insight – Brompton Doesn’t Fold Before Court of Justice
IP Insight: functional shapes and copyright. Written by Charlie Bond and Razvan Popa.
Case C-833/18 SI, Brompton Bicycle Ltd v Chedech/Get2Get EU:C:2020:461 (11 June 2020)
IP Insight is a series of blogs by Virtuoso Legal, intellectual property specialists. This case concerns functional shapes and copyright.
Written by Charlie Bond and Razvan Popa.
On 11 June 2020, the Court of Justice issued its long-awaited decision relating to functional shapes and whether they can be protected under copyright law.
The case concerned the folding Brompton bicycle developed by the British company Brompton Bicycle Limited. The Brompton bicycle was protected by a patent which expired in 2017, at which point Get2Get started selling its Chedech bicycle. The two bicycles are very similar, both in terms of their folding mechanism, and visually, as you will see below:
[For those reading this article on Lexology, please click read original to see the image in question].
Companies Court – Liege
On 21 November 2017, Brompton brought proceedings in the Companies Court in Liege, Belgium against Get2get claiming copyright infringement and seeking an order stopping Get2Get selling their competing product.
Unsure as to whether practical objects can be protected by copyright, the Companies Court referred two questions to the Court of Justice of the European Union:
- Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?
- In order to assess whether a shape is necessary to achieve a technical result, must account 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?
- The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’
Attorney General’s Opinion
AG Campos Sanchez-Bordona stated that, as a general rule, under the Copyright Directive if a work is dictated by its technical function, it cannot be eligible for copyright protection. However, if there are only a few functional aspects, copyright may subsist in the work. Applying the above to the current case, the AG stated that if the shape of the bicycle is necessary to achieve a technical result, it cannot benefit from copyright protection.
Referring to the second question, AG Campos stated that the existence of the patent is important when it comes to the functionality of the work, but it does not automatically make the work excluded. The Attorney General rejected the multiplicity of shapes theory, whereby the availability of other shapes that allow the necessary technical result means that a single shape may not be considered necessary to achieve that technical result. In addition, they found that the intention of the infringer is not relevant, but the intention of the designer is.
The Attorney General’s opinion clarifies important points, including that the existence of other possible shapes should not be an essential factor in confirming copyright subsistence in a work. However, the opinion also contains many points that seem to contradict earlier decisions such as Doceram and Cofemel.
The Court of Justice did not refer to any of the points mentioned by AG Campos, and in fact, went against some of the Attorney General’s recommendations.
Firstly, the CJEU held that the InfoSoc Directive through Articles 2 to 5 does not exclude works whose shape is necessary to achieve a technical result. According to the court, provided a work satisfies the originality requirement, it can be protected regardless of the fact that its realisation has been dictated by technical considerations.
When looking at the second question and its sub-questions, the court stated that the existence of other shapes might show that there is a possibility of choice, but this should not be decisive when assessing the originality of a work. The intention of the infringer is irrelevant in such assessment and, interestingly, the court kept silent as to whether the designer’s intention should be considered. The court also stated that the existence of a patent should be considered, but only to show what was considered when choosing the particular shape of the product.
The court concluded:
“Articles 2 to 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.”
Our Insight - Brompton Bicycle and Copyright
This decision does not necessarily present new law, but it clarifies that companies may be able to rely on copyright to protect a product that was, but no longer is, protected by a patent. This presents a fairly significant extension on the time period a product can be protected given copyright generally subsists for a significantly longer duration than patents. This also means that companies should be more vigilant than ever in keeping records of copyright creation and ownership so that they can be easily enforced.
From the perspective of companies that have a strategy of making products previously protected by patents, they should beware of their potential liability under copyright law.
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