In a decision with potentially far-reaching consequences for design-led industries, the Court of Justice of the EU has held that EU Member States' laws cannot impose a requirement that designs (in this case of jeans and t-shirts) have an aesthetic effect in order to attract copyright protection. Instead, the same objective standard set out in the EU legislation and case law must be applied to all types of copyright works.
Currently, some EU countries make it harder for designs to attract copyright protection by imposing a requirement of aesthetic effect or artistic quality, perhaps reflecting concerns that granting lengthy protection to functional designs may hinder innovation. Now that the CJEU has ruled out this approach, there are likely to be a number of implications. In particular, copyright protection brings with it certain benefits over design rights: there is no requirement for the work to be novel, there is no requirement of registration (as there is for certain types of design rights), and the term of protection is significantly longer. If a particular design can benefit from copyright protection (in addition to design right protection), the owner of the rights in that item has a much greater ability to protect and enforce its rights.
Clothing designer G-Star RAW CV alleged that another designer, Sociedade de Vestuário SA (Cofemel), had copied its designs for jeans and t-shirts and had therefore infringed G-Star’s copyright in those designs in Portugal. Cofemel argued that the designs were not eligible for copyright protection under Portuguese law, which requires designs to be of a certain aesthetic quality.
The Portuguese Supreme Court referred the following question to the CJEU in order to help it make a decision: does EU law (specifically Article 2(a) of the InfoSoc Directive) allow EU Member States to set standards of protection for certain categories of works which are different to those provided for by EU law?
In short, the CJEU's answer was no. Member States are not permitted to set a standard higher than that provided for by the relevant EU legislation.
Article 2(a) of the InfoSoc Directive provides that Member States must allow authors of "works" to prevent others from reproducing those works. "Works" is not defined in the Directive. However, the appropriate standard to apply has been set out by the CJEU in several earlier decisions which make it clear that the following criteria must be fulfilled:
- A “work” must be original in the sense that it is an intellectual creation of its author. This means that it “reflects the personality of its author”, demonstrating his or her “free and creative choices”. However, where the expression of the work is determined by technical considerations, rules or other constraints, and there is no room for creative freedom, an item will not have the necessary originality.
- The subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity (as determined by the CJEU in its recent Levola decision concerning the taste of cheese). There should be no element of subjectivity (such as aesthetic value).
In not departing from its earlier case law, the CJEU’s decision is perhaps of no great surprise. However, the earlier cases did not comment explicitly on whether individual Member States can impose their own, different criteria for works to qualify as copyright work. The CJEU has now put down a very clear marker that this is not permitted.
What is the impact of the decision?
Copyright protection for designs
This decision is likely to make it harder for designs to be denied copyright protection, whether to prevent double protection through design rights and copyright, or otherwise. For example, this will impact on the UK's law relating to "works of artistic craftsmanship", and the approach the UK Courts have taken to 'utilitarian objects' and sculptures (as in the Lucasfilm Stormtrooper helmet case, where protection as a sculpture was refused). Satisfying a court that a design is the “intellectual creation of its author” would seem easier than establishing that it has aesthetic value. This may lead to more design-led businesses looking to rely upon copyright to protect their designs.
However, the assessment of originality for copyright remains a rigorous one and it may be difficult, for example, in some cases to demonstrate that a particular design was not constrained by technical considerations (and left no room for creative freedom). Further, it is worth noting the CJEU's requirement that the subject matter must be “expressed in a manner which makes it identifiable with sufficient precision and objectivity”. This may be relied upon to challenge copyright protection in cases where it is too difficult to identify a specific design in which copyright is being asserted.
There will need to be some further clarity from the Courts on both protection and infringement (and potentially, amended legislation). In the short term, it will be interesting to see whether the Portuguese court concludes that G-Star's jeans and t-shirt are protected by copyright (and, if so, whether that copyright is infringed).
Although the Cofemel case focuses on copyright in a functional item, the CJEU’s decision does not just relate to designs, but applies to all types of “works” capable of protection by copyright.
In particular, it may lead to a revisiting of the traditional 'closed list' approach of UK copyright law where the legislation splits protectable works into categories including literary, dramatic, musical and artistic works, each with their own criteria. Under the 'closed list' approach, a work must fall within one of these categories in order to attract protection. However, the Cofemel decision (and Levola before it) are likely to render the very idea of requiring a work to fall into a defined category to be contrary to EU law: copyright protection arises if the requirements set out in the Directive are satisfied. Therefore, presumably it will be possible to assert copyright in any type of material, provided of course that the requirements are satisfied – irrespective of whether they fall within a particular category or not. The boundaries of copyright protection are likely to shift substantially as a result.