In the Brompton case[1] the CJEU handed down a widely noted decision last June 11 on the protection of functional shapes by copyright, in response to a question for preliminary ruling referred by the court of Liège.

 

 

As a matter of fact, the shape of any product may, in principle, benefit from copyright protection. However such protection applies only to the products or product parts resulting from a “creative effort” (a criterion for copyright protection) and not those which are induced by a function or by a technical result. In that case, the shape does not require creative effort and is not therefore a matter for copyright. It may however potentially be protected by a patent – if the conditions for this are met.

 

What then is the situation for shapes dictated by the result to achieve, but which have nevertheless also benefited from a creative effort?

 

In the Brompton decision specifically, should the shape of the famous folding bicycle of the British trademark be excluded from copyright protection, because it is necessary to achieve a result (to be foldable into three distinct positions)?

 

The question is important since this would amount to excluding ipso facto many everyday objects from the scope of copyright.

 

Furthermore, copyright protection benefits from a longer protection term (in principle 70 years from the death of the author) than a patent (20 years). In the present case, the Brompton folding bicycle had moreover been covered by a patent, now expired[2], which the defendant company had profited from to commercialize its own bicycle, shown below:

[3]

Brompton bicycle

Defendant’s bicycle

 

The Court replied by noting the following analysis criteria:

 

• A shape held to be dictated solely by its function cannot be protected by copyright;
• A shape with a technical result is however not necessarily excluded from copyright protection;
• It is incumbent upon the judge to determine whether the shape constitutes “an original product resulting from an intellectual creation” which will be the case when the author was able to “make free and creative choices allowing the shape to reflect his personality“.

 

In assessing the author’s creative work, a set of indicators should be taken into account, and in particular:

 

• whether a patent had been filed for the shape considered (which was indeed the case here), in order to reveal what the initial intention of the creator had been;
• whether other alternative shapes would enable the same result, which may suggest that the author had choices of shape other than the one he chose, and thus did indeed employ his creative freedom.

 

On the other hand, the CJEU rejected the reference to “the intention of the infringer”, which is a circumstance external to the process of creating the shape.

 

 

Equipped with these particulars, the Belgian lawyers will now have to take up the case again and determine whether or not the Brompton bicycle can actually be protected, before pronouncing as to possible infringement. In Spain in 2010, the Madrid Commercial Court[4] already ruled that the Brompton bicycle could indeed be protected by copyright.

 

 

Two brief comments in relation to that decision:

 

• On the basis of copyright, no court is competent to hand down a Europe-wide ruling on infringement – which would avoid diverging decisions and the burden of conducting multiple lawsuits. It is to be noted on the other hand that in case of infringement proceedings based on an EU trademark, it is possible in some cases to obtain compensation for acts of infringement committed throughout the territory of the EU.[5]

 

• Other principles may enable such an iconic product to be protected, in particular the three-dimensional trademark for shape, which is subject to its own protection criteria – essentially distinctiveness. Such creative character may be acquired either ab initio (for objects whose shapes differ “significantly” from what is usual in the sector), or by sufficient use made of the shape[6].

 

In all cases, detailed analysis and rigorous work have to be undertaken to establish a protection strategy and obtain adequate protection for the object considered. The input of a professional is then necessary, and it would be a pleasure for us to work (in tandem) with you.

 

 

Fabrice Pigeaux has been an Intellectual property attorney for more than 10 years and joined Santarelli in 2016. He assists a very diverse range of clients, both in France and abroad, primarily handling trademark and domain name matters.

 

[1] CJEU, C‑833/18, 11 June 2020, Brompton: http://curia.europa.eu/juris/document/document.jsf?docid=223082&text=&dir=&doclang=EN&part=1&occ=first&mode=DOC&pageIndex=0&cid=14259894

[2] https://worldwide.espacenet.com/patent/search/family/008186442/publication/EP0026800A1?q=pn%3DEP0026800

[3] Photographs taken from the conclusions of the Advocate General in his opinion dated 6 February 2020: http://curia.europa.eu/juris/document/document.jsf?docid=223082&mode=req&pageIndex=1&dir=&occ=first&part=1&text=&doclang=EN&cid=4847398

[4] Decision No. 41/2010 of 10 February 2010, Madrid Commercial Court No. 5, http://www.poderjudicial.es/search/AN/openDocument/7ebb9212340fa287/20130531

[5] Articles 125 and 126 of Regulation (EU) 2017/1001.

[6] Notably, for example, for a vehicle whose renown is no stranger to trademark registration: https://euipo.europa.eu/eSearch/#details/trademarks/018016122