Introduction
Last June 11th represented an important date for all copyright enthusiasts and for the experts in this field of law.
On such date, the European Court of Justice has issued a judgment of considerable interest in relation to a point of law raised in the course of a counterfeiting action of the well-known bicycle model commenced by Brompton Bicycle Ltd against the Korean company Chedech/Get2Get before the Liège Business Court (Belgium).
Background
The English company Brompton Bicycle Ltd had patented the well-known folding bicycle model in 1975, protecting the distinctive feature that allows the product to take three different positions, namely: (i) folded position, (ii) open position and (iii) intermediate position (which allows the bicycle to remain balanced on the ground).
However, once the 20-year period had expired and Brompton’s industrial property rights over the bicycle folding mechanism had expired, other companies, such as Get2Get, started to offer products with the same characteristics on the market. As a result, Get2Get was sued by Brompton, which claimed that its copyright on the product had been infringed and, consequently, asked the Belgian court to order Get2Get the withdrawal of the bicycle model it had marketed from all the stores.
In its defense brief, the latter argued that the particular aspect of its product was attributed by the technical solution sought, which was capable of enabling the bicycle in question to take the three different positions and that, therefore, such an aspect could not be protected by copyright law since its protection was exclusively provided by patent law.
On the contrary, the applicant replied that the three positions of the Brompton bicycle could be obtained through different shapes, others than those identified for that bicycle by its creator and that, therefore, its shape could be protected under copyright law due to that creative characteristic.
Therefore, the Liège Business Court having found that under Belgian law any creation which expresses itself in a particular form and which is original is protected by copyright law, appealed the European Court of Justice to demand whether such protection should be excluded if the shape of the object is “necessary to achieve a technical result” and what criteria should apply for the purposes of that assessment.
In addition, the Belgian court submitted a further question to the ECJ, asking whether the following criteria should be taken into account for assessing the requirement of a given shape in order to obtain a technical result:
- the existence of other possible shapes achieving the same result;
- the effectiveness of the shape to achieve that result;
- the willingness of the alleged infringer to achieve that result;
- the existence of an earlier patent, later expired, on the procedure for achieving the technical result pursued.
Analysis of the judgement
The Court of Justice, appointed by the Belgian judge, has issue an historic decision stating that the shape of a product can be protected under copyright law even if it is partially intended to obtain a technical result.
Specifically, the ECJ moved from the notion of work, as defined in Articles 2 and 5 of Directive 2001/29, in order to establish that it necessarily consists of two elements:
- the originality, which implies that the work is an intellectual creation belonging to its author, and
- the free and creative expression of the author of the work in a factual reality.
Therefore, with reference to the first element, the ECJ found that a work can be considered original even in cases where its creation was dictated by technical evaluations, in all those cases where it reflects the personality of its author, showing the latter’s free and creative choices.
On the contrary, it has been specified that, in accordance with settled case law within the Court, in all those cases where the creation of a work has been exclusively determined by technical considerations, rules or other constraints which leave no room for creative freedom, it cannot acquire the status of a work and therefore it cannot enjoy the protection granted by copyright law (as stated in Cofemel – Sociedade de Vestuário SA v. G-Star Raw CV, C‑683/17[1]).
In reaching those considerations the Court did not follow, first of all, the theory of the multiplicity of forms, observing that, for the purposes of establishing the originality of a given work, it cannot be regarded as a straightforward factor the consideration that the same technical result can also be achieved through different shapes of the product.
With regard to the second element, the Court also stated that the concept of “work” in Directive 2001/29 necessarily implies the existence of an object which can be identified with sufficient precision and objectivity (see Cofemel above).
It follows that an object which satisfies the requirement of originality will be eligible for protection under copyright law, even if its creation was determined by technical considerations provided that such determination did not prevent the author from reflecting his or her personality in that object by showing free and creative choices.
Likewise, as also stated in Article 2 of the WIPO Copyright Treaty, the criterion of originality cannot be met by those components of an object which are solely characterized by their technical function since, otherwise, it would be possible to monopolize ideas to the detriment of technical progress and industrial development.
It must be noticed that, in the present case, although the particular shape of the bicycle is necessary to obtain a specific technical result, namely the suitability of that product to take the said three positions, the Court nevertheless does not, a priori, exclude the possibility that the peculiarity, given by the folding mechanism of the bicycle, may become a creative characteristic of the author.
As the matter of fact, in the judgment of last June, the ECJ established that the national Judge will have to assess whether the bicycle in question constitutes an original work resulting from an intellectual creation.
In this framework (also considering that only the originality of the product will have to be assessed), the existence of other possible shapes that would lead to the same technical result will not be considered as decisive in order to assess the factors that guided the choice made by the creator.
Similarly, the willingness of the alleged infringer will have no relevance in the context of such an assessment, whereas the existence of prior patents on the work should be regarded as merely indicative and not decisive for the purposes of its attribution to copyright protection.
Conclusions
The judgment under exam had, without doubt, the merit to apply properly certain key principles of European copyright law, derived from the tradition of common law, namely the dichotomy theory, which separates idea and expression, the originality theory and “merger doctrine”, with reference to the assumption that some ideas can be expressed in a comprehensible way only in one or a limited number of ways.
However, there is still room for some criticisms relating, firstly, to the failure of this ruling to refer to the relevance of the creator’s intentions in the context of his creation, given that, in his conclusions presented at the hearing on 6 February 2020, the Advocate General had stressed its importance for the purposes of identifying the character of the creativity and originality of the work and that the failure to refer to that aspect would contradict what was already stated in Case C-310/17 (i.e. Levola Hengelo BV v. Smilde Foods BV[2]).
A further issue in the judgment under examination should be recognized in its failure to identify an exhaustive list of factors that can provide a parameter in the assessment of the originality of the work in a similar order of cases (as in Doceram[3]).
Consequently, this assessment will be left, on a case-by-case basis, to the national courts of the Member States and, therefore, it could lead to a lack of uniformity with respect to its application.
It cannot be excluded that the Belgian court, which now has to issue a decision, in the light of the Court of Justice’s ruling, may recognize the creativity and originality of the Brompton bicycle and its folding mechanism, given that, in some recent rulings in France on aspects similar to those taken into account by the ECJ in the present case, different type of IPRs have been granted to the holder (e.g. patent and design), since they were not found to be exactly based on the same aspects of the product.
Finally, it is worth noting that, in Italy as well, copyright protection has recently been granted to the shape of a car[4] and a motorcycle[5], as well as to the shape of after-ski boots[6].
We therefore have no other option than to wait for the ruling of the Liège Business Court, aware that the relevance of the ruling delivered by the European Court of Justice will have such an impact that it will determine in any case an evolutionary effect of copyright law in Europe.
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[1] http://curia.europa.eu/juris/liste.jsf?num=C-683/17&language=IT.
[2] http://curia.europa.eu/juris/document/document.jsf?text=&docid=207682&&doclang=EN&.
[3] Court of Justice 8 March 2018 (Second Chamber), Case C-395/16, Doceram GmbH v CeramTec GmbH ECLI:EU:C:2018:172;
[4] Bologna Tribunal 20 June 2019 (order), Ferrari s.p.a. v Design Modena s.r.l., available at https://iusletter.com/wp- content/uploads/Ferrari-250-GTO_prima-automobile-nella-Storia-a-vedersi-garantita-la-tutela-autorale_Tribunale-di- Bologna-ordinanza-del-20-giugno-2019.pdf.
[5] App. Torino 12 dicembre 2018, Zhejiang Zhongneng Industry Group and Taizhou Zhongneng Import and Export Co. v Piaggio s.p.a., Torino Tribunal 6 April 2017, Zhejiang Zhongneng Industry Group and Taizhou Zhongneng Import and Export Co. v Piaggio s.p.a., in Giur. ann. dir. ind. 6528. The matter has been dealt with, from a different angle (a challenge to the validity of the later Community design based on prior Italian designs and trade marks, as well as copyright), by EU General Court 24 September 2019 (Sixth Chamber), Case T-219/18, Piaggio & C. s.p.a. c. EUIPO e Zhejiang Zhongneng Industry Group Co. Ltd.
[6] Milano Tribunal 12 July 2016, Tecnica Group s.p.a. v Gruppo Anniel s.n.c. di Simeoni Anna & C. and Gruppo Coin.