Can copyright protect technical products? Brompton provides some answers

9 minute read
16 June 2020

Brompton Bicycle Ltd v Chedech/Get 2 Get (C‑833/18) (Brompton) is the latest in a string of recent decisions (most recently Cofemel (C‑683/17) and Edinburgh Woollen Mill v Response Clothing) regarding the overlap between copyright and design law. We discussed the impact the of the Cofemel and Edinburgh Woollen Mill decisions in our article for Managing IP.

Each of these decisions states that the key requirements for a work to obtain copyright protection are that the work is original in the sense of being the author's own intellectual creation and that this creation is expressed in some form. Commentators have queried whether this opens the floodgates for designers to claim copyright in products, rather than being limited to only literary, dramatic, musical and artistic work, and whether design right protection will now become irrelevant.

In this article, we explore the details of the Brompton Bicycle v Chedech case, the court's decision and what this means in practice for designers when looking at how copyright might help protect 3D products even where they achieve a technical result.

Case summary

This case was initially brought before the Belgian Companies Court. Brompton Bicycles Ltd (Brompton Bicycles) manufactures an iconic folding bicycle design, which has three positions: a folded position, an unfolded position, and a stand-by position where the bicycle stayed balanced on the ground. Brompton Bicycles previously held a patent for this invention, but it had since expired. Chedech also manufactured a folding bicycle.

Under Belgian law, when a creation is expressed in a particular shape and is original, it is protected by copyright law. This means that many utilitarian objects can be subject to copyright protection. As such, Brompton Bicycles claimed that Chedech's product infringed its copyright in its folding bicycle. In defence, Chedech claimed that the appearance of the bicycle was dictated by its technical function, so could not be protected by copyright. Brompton refuted this position, claiming that the different positions created by the folding bicycle could be achieved using different shapes.

The Belgian Companies Court referred the following question to the Court of Justice of the European Union (CJEU):

  1. Are products whose shape is necessary to achieve a technical result excluded from copyright protection?
  2. When assessing whether a shape is necessary to achieve a technical result, is the court required to consider:
    1. the existence of other possible shapes;
    2. the effectiveness of the shape in achieving the result;
    3. the intention of the infringer to achieve the result; and
    4. the existence of an earlier patent right.

The court re-iterated its decision in Cofemel, that the only requirements for a work to achieve copyright protection are that:

  1. The work is original in the sense that it is the author's own intellectual creation; and
  2. The author's creation is expressed.

When assessing originality, the concept of the author's own intellectual creation requires the work to reflect the author's personality and to be an expression of the author's free and creative choices. The court therefore held that if the shape of the work has been dictated solely by technical considerations, it cannot be an original work, as no room is left for the author's creativity. In these circumstances, the work is not protected by copyright.

The Court held, however, that copyright protection does arise if, despite the technical considerations, the author is still able to express their creativity and personal choice in the shape created.

When looking at whether a shape is necessary to achieve a technical result as part of the assessment of originality, the court held in reference to the criteria listed above that:

  • the existence of other possible shapes is not decisive;
  • the intention of the infringer is irrelevant; and
  • the existence of an earlier patent, and the effectiveness of the shape in achieving the technical result, are only relevant to the extent that they help to determine why the author chose the shape that they did.

Is this helpful to designers in real life?

The decisions in Brompton, Cofemel and Edinburgh Woollen Mill are not based on new law. Instead, they are based on the requirements for copyright protection as set out in the InfoSoc Directive (2001/29/EC), which was enacted in 2001. Under the terms of the InfoSoc Directive, if a work is original and has been expressed or recorded in some form, it is entitled to copyright protection. In some cases, designers will therefore have cumulative protection under both design and copyright law.

Under the current wording of the Copyright Designs and Patents Act 1988, in the UK, a work must fall into one of the categories listed in the act in order to qualify for copyright protection. This is at odds with the developing CJEU interpretation of the InfoSoc Directive and it remains to be seen precisely how the British government and/or courts will resolve the apparent conflict.

Either way, it is unlikely that this will open the floodgates and that many new works will be entitled to copyright protection. Instead, it is perhaps more likely that we will see a gradual shift by the courts when assessing what can be classed as a literary, dramatic, musical or artistic work.

As mentioned above, Brompton Bicycles previously had a patent for its invention of the folding bicycle. Patent rights grant the inventor a monopoly over that invention for a fixed period of 20 years. However, if the Belgian court now finds that the Brompton folding bicycle design is original and protected by copyright, then Brompton Bicycles will enjoy extended protection for the shape of its bicycle. It is unclear whether the UK courts will be willing to adopt the same position.

When assessing whether technical products should be afforded copyright protection, the European court has clearly taken aspects of design law into consideration. In Brompton, when querying whether the bicycle should be excluded from copyright protection - to the extent that there are technical considerations at play - the Belgian court referred to the decision in Doceram; a designs case that itself adopted the previous UK position on aspects of designs that were technical.

The designs law position is that if a design is solely dictated by its technical function, then it is excluded from protection. This isn't determined by reference to whether there are other ways of achieving the same result, but rather where there were aesthetic considerations when designing the particular technical aspect. If not, then something is excluded from protection for being solely dictated by function. For copyright, and to maintain the distinction between designs and copyright that the CJEU in Cofemel professed was very important, we will have to see how many works are now deemed to be sufficiently "original" to justify copyright protection. We would not be surprised if the definition of "original" is adapted over coming cases.

With Brexit looming, Community Unregistered Design Right (CUDR) protection will cease to apply in the UK after 31 December this year (to be replaced by a local version that will only apply if the first disclosure was in the UK). If CUDR protection falls away for designs first disclosed in the EU (which is still subject to the ongoing trade negotiations), it is possible that designers looking to protect their products from infringement could seek to rely on copyright instead. This would provide designers with unregistered rights that cover features such as surface decoration, colour and the material used, and serve as a replacement at least in relation to some designs.

Although this area is ripe for reform and clarification, it is unlikely that any legislative changes to the UK copyright regime will be made any time soon. Until then, it remains unclear whether, and to what extent, designers can claim copyright in their products. Although it may be that more designers are willing to try to pursue a copyright claim - indeed, the recent decisions are certainly designer / proprietor friendly - designs (both registered and unregistered) will still play a key role in the protection of products.

Registered designs continue to provide clarity and certainty around the design claimed, along with certainty of the date on which the right arises, mitigating some of the problems that arise when trying to rely on unregistered rights. Meanwhile, UK unregistered design right continues to be a flexible right that protects designs and can be more focused on the infringement in question.

One day, we expect that designs and copyright in the UK will be overhauled, but in the meantime, there are lots of options for designers to consider if faced with a copy of their work, which can only be a good thing.

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