The Brompton Bicycle decision of the ECJ – copyright protection of technical shapes
Judgment of the European Court of Justice of 11 June 2020 (C-833/18 – Brompton Bicycle v. Chedech/Get2Get)
In a preliminary ruling procedure, the ECJ clarified the copyright protection of utility articles with regard to a folding wheel. In doing so, it allowed an overlap of copyright and patent protection in certain cases.
Initial legal dispute:
The so-called Brompton bicycle is a folding bicycle which has the special feature of being able to assume three different positions: a folded position, an unfolded position and an intermediate position which allows the bicycle to remain balanced on the ground. The company under English law, Brompton, whose founder is SI, has been marketing this folding bicycle since 1987. Originally, this Brompton bicycle was protected by a patent.
The company Get2Get also markets a folding bike. This is very similar to the Brompton bicycle and can also take the three different positions.
SI and Brompton then sought legal protection at the Tribunal de l’entreprise de Liège (Liège Enterprise Court, Belgium) in 2017. However, the patent by which the folding bike was originally protected had expired in the meantime. The plaintiffs now claimed copyright protection and sought a declaratory judgment that the bicycles of Get2Get violated Brompton’s copyright and SI’s moral rights.
Get2Get, however, was of the opinion that the appearance of the bicycles they distributed was conditioned by the technical solution of ensuring that the bicycle could take up three different positions. Against this background, the appearance was to be protected only by patent law and not by copyright.
The plaintiffs, on the other hand, argued that the three positions of the Brompton bicycle could be achieved by shapes other than those intended for this bicycle by its creator, so that the shape of the Brompton bicycle also enjoys copyright protection.
The Enterprise Court of Liège suspended the proceedings and referred questions to the European Court of Justice for a preliminary ruling. In its judgment of 8 March 2018 (C-395/16 – DOCERAM) on design law, the Court of Justice interpreted Article 8(1) of Regulation No 6/2002 as meaning that, in order to assess whether the appearance of a product is exclusively dictated by its technical function, it is necessary to determine whether that function is the sole factor determining that characteristic. Accordingly, features were not protectable under design law if they were objectively chosen solely on the basis of technical considerations. Since that judgment was delivered in the field of design law, it is questionable in this case, according to the Enterprise Court of Liège, whether a similar solution should not be reached in the field of copyright if the appearance of the product for which copyright protection is sought is necessary to obtain a precise technical result.
Questions referred for a preliminary ruling:
The Enterprise Court of Liège referred the following questions to the ECJ for a preliminary ruling:
- Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?
- In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:
- The existence of other possible shapes which allow the same technical result to be achieved?
- The effectiveness of the shape in achieving that result?
- The intention of the alleged infringer to achieve that result?
- The existence of an earlier, now expired, patent on the process for achieving the technical result sought?
Decision of the ECJ:
The ECJ answered these questions to the effect that Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for in those articles applies to a product whose shape is necessary, at least in part, to obtain a technical result, if that product is an original work of intellectual creation, because, by choosing the shape of the product, the author of the work expresses his creative capacity in an independent manner by taking free and creative decisions, so that that shape reflects his personality.
Accordingly, the Court of Justice focuses primarily on the creative scope of the creator in the choice of appearance. First, it explains in general terms that the term “work” has two components. On the one hand, it must be an original, which is the author’s own intellectual creation. On the other hand, such a creation must also be expressed. The second criterion did not play a role in the proceedings because the bicycle as an object can easily be identified sufficiently precisely and objectively.
The Court of Justice considers it to be solely decisive for the existence of an original if an object reflects the personality of its author by expressing his free creative choices. On the other hand, the European Court of Justice considers that an original is not present if technical considerations, rules or other constraints no longer leave the author any room for exercising his artistic freedom. According to the Court, an object which satisfies the requirements of originality can be protected by copyright even if its creation was determined by technical considerations. However, the technical considerations must not have prevented the author from reflecting his personality in that object by expressing his free creative choices.
Whether the creator had a choice with regard to the form of the object despite its technical function is irrelevant to the question of originality, because it does not follow from this, from which factors the creator let his choice be guided. In other words, it is not decisive for the assumption of a copyright that the creator had a choice of form at all, but that he expressed a free creative decision with his choice. For the same reason, the existence of an earlier patent is usually not to be taken into account, since it does not follow from this either what the creator was guided by in his choice of form.
The decision of the ECJ on the Brompton bicycle shows that copyright protection of utility articles is still possible under certain circumstances, even if a patent protection has already expired. The decision therefore strengthens the owners of protective rights. However, it must be proven that the shape of a product is not exclusively determined by its technical function and that the technical considerations did not prevent the author from making a free creative decision and expressing his creative capacity in the object in such a way that his personality is reflected in it.
Dr. Nadine Bertram, LL.M.
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