This is essentially the question which the Belgium Companies Court (Tribunal de l’entreprise de Liège) has asked the Court of Justice of the European Union (CJEU). As is customary in these cases, the Advocate General (AG) has given his preliminary opinion, and it’s fair to say that Brompton will not be very happy.
Following the expiry of Brompton’s patent for the bike’s folding mechanism, Korean company Get2Get Chedech began selling similar folding bikes in Belgium. Brompton, feeling aggrieved by such actions, proceeded to sue Get2Get for copyright infringement.
Get2Get argues that the appearance of its bicycle is dictated by technical constraints and that it deliberately adopted the folding technique because that was the most functional method. It therefore follows that copyright does not subsist in the shape of the bicycle. Brompton countered this by arguing that there are other folding bicycles on the market which are different in appearance from its own. The appearance of the Brompton bicycle demonstrates the existence of creative choices on their part and, therefore, originality for the purposes of copyright subsistence.
The Belgium court was unsure as to whether copyright subsists in shapes “necessary to obtain a technical result” and thus referred a series of questions to the CJEU.
Advocate General Opinion
The first question considered by the AG concerned the concept of ‘work’, ‘originality’ and the exclusion of copyright for shapes which are dictated by technical functions.
The AG referred to the landmark case of Cofemel in which the CJEU clarified that a “work” was an autonomous concept of EU law which requires two cumulative conditions to be satisfied. The first being the existence of original subject matter i.e. subject matter representing the author’s own intellectual creation. Second, that classification of a ‘work’ is to be reserved for the elements which are the expression of that creation.
In Cofemel, the court held that original subject matter must reflect the personality of the author as an expression of their free and creative choices. Where subject matter has been dictated by technical considerations which leave no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work. Further, the elements which comprise the protected subject matter must be identified with sufficient precision and objectivity, and cannot be based on subjective considerations such as aesthetic appeal.
The AG therefore inferred from the case law that works whose appearance is exclusively dictated by technical functions are not eligible for copyright protection. However, drawing upon design and trade mark law, he opined that where a design merely has a number of functional aspects, that does not necessarily deprive it of copyright protection. Protection would only be denied where the functional elements of the work predominated over the artistic elements.
Shapes, Intentions and an Expired Patent
The referring court’s second question centred on the applicability of other criteria in determining whether a shape is necessary for obtaining a technical result. The AG was asked to consider the effects of the existence of other possible shapes which allow the same technical result to be achieved. Referring to the earlier case of DOCERAM, he reiterated that the existence of alternative shapes is not decisive in answering this question.
Next the AG considered whether the intention of the alleged infringer to achieve a technical result is relevant. In principle intention is not relevant. However, the AG was of the surprising opinion that the intention of the alleged infringer or the author can be considered by the court, if it sheds light on whether a shape stems from a purely functional or aesthetic decision. Given that the answer to that question will ultimately be based on objective rather than subjective considerations, I doubt that the CJEU will take much notice of the AG’s comments on this point.
Finally, the AG considers the possible effect of an expired patent on the assessment as to whether the shape of the Brompton bike is necessary to obtain a technical result. He opines that this is indeed a relevant factor as it may serve to determine whether there were technical constraints which dictated the shape of the product. The fact that a patent was granted permits the assumption that there is a close relationship between the shape patented and the result intended.
I believe that the CJEU will reach the same conclusion as the AG in this case. The creative freedom for designing a folding bike is naturally limited by the technical constraints of allowing the bike to be used, conveniently folded and stored by its user. If the CJEU agrees, Brompton will almost certainly lose its case in Belgium and barring any other obstacles, Get2Get will be free to continue selling its own similarly folding bicycles. This case serves as a useful reminder of the constraints of copyright protection for functional items.
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