Is a product whose shape is exclusively dictated by its technical function eligible for copyright protection? The recently published opinion of Advocate General Campos Sánchez-Bordona (“AG”) has advised the Court of Justice (CJEU) to rule that it is not.
The question was referred to the CJEU by a Belgian court in the context of copyright infringement proceedings brought by Brompton Bicycle Ltd (“Brompton”) against the Korean company Get2Get Chedech (“Get2Get”), relating to its folding bike.
The folding mechanism of the Brompton bike was previously protected by a patent, which has now expired. In arguing for the subsistence of copyright in its design, Brompton asserted that there are other folding bicycles on the market with a different appearance to its own product. It contended that this in itself demonstrates the originality of the Brompton bike design and that free and creative choices were made in its creation.
However, Get2Get argued that the appearance of the Brompton bicycle was dictated solely by its technical function, and that its own bike looks the way that it does due to the same technical constraints.
The AG addressed the question of whether copyright protection is precluded where the shape of the object is necessary to achieve a technical result, and what criteria should be used when determining whether such protection applies.
Unsurprisingly, the AG advised that if the shape of the relevant product is exclusively dictated by its technical function (i.e. the shape is necessary to achieve a technical result), then it is excluded from copyright protection. The AG noted that the Belgian court had made a finding of fact that the shape of the Brompton folding bike was necessary to achieve the technical result of being a bicycle that could be folded, unfolded, and ridden. As such, the AG advised that copyright could not subsist in the Brompton design.
The AG also provided his views on certain criteria raised as potentially relevant by the referring court. In particular, the AG found that the existence of: (i) an expired patent on the process for achieving the technical result; or (ii) other possible shapes that could achieve the same result, could be relevant but were not determinative of whether copyright subsists.
Further, the AG noted that the intention of the alleged infringer to achieve the same technical result was not relevant although, somewhat controversially, the original designer’s intention could be, as they would have been seeking either to achieve an intellectual creation or to protect and commercialise a product.
Based on previous CJEU case law we believe it is likely that the CJEU will follow the AG’s opinion in reaching its decision. If it does, Brompton’s likelihood of success in the Belgian copyright infringement proceedings will naturally be diminished as it will need to convince the Court that the design is not in fact exclusively dictated by function.
Brompton’s main problem in protecting its bicycle is that patent protection (originally applied for in 1979) has now run out so that third parties are in principle free to copy the way this folding mechanism works. Copyright, with its very long duration of the life of the author plus 70 years, might have provided continued protection against copying for the innovative shape of the bicycle that achieves this technical result. However, based on the AG’s opinion, under EU law this will not succeed in relation to aspects of the shape which are exclusively dictated by technical function.
With Brexit on the horizon, the question arises as to whether the result might be different under UK copyright law. The answer is almost certainly not, although by a slightly different route. Traditional UK copyright law does not exclude functional designs as such. However, under provisions in the UK Copyright, Designs and Patents Act[i] that were introduced specifically in order to limit copyright protection for industrial designs, the 3D shape of the bicycle would not benefit from copyright unless it could be classified as a “work of artistic craftsmanship”, which is very unlikely in respect of a work exclusively dictated by technical function.
[i] S. 51 Copyright, Designs and Patents Act 1988