The law on copyright in shapes has been recently clarified in the Brompton Bicycle case, Case C-833/18 (SI, Brompton Bicycle Ltd v. Chedech/Get2Get, [2020], CJEU, Case C-833/18). This request for a preliminary ruling from the Companies Court of Liège, Belgium to Court of Justice of the EU (CJEU) concerned the Brompton Bicycle, a folding bicycle which was created in 1975, and in relation to which Brompton Ltd was the holder of a patent for its bicycle’s tripartite folding mechanism (a folded position, an unfolded position and a stand-by position enabling the bicycle to stay balanced on the ground), which patent which has now expired.
Get2Get, the defendant in the case, started making a bicycle (the Chedech bicycle) which is visually similar to the Brompton bicycle and also folds into the same three positions. In 2017, Brompton brought an action against Get2Get for copyright infringement, amongst other precautionary measures, including the withdrawal of the product from the market. Get2Get argued that no copyright subsists because the shape or appearance of the bicycle is solely dictated by the function of the product, and therefore such appearance could be protected only under patent law. Brompton in turn argued that the three positions can be obtained in a manner different to that given to the bicycle by its original creator, and therefore the shape is subject to copyright.
The Belgian Companies Court highlighted that Belgian law recognises the Multiplicity of Shapes theory, meaning that a shape is not considered necessary to achieve a technical result if there is proof that other possible shapes are available which allow the same technical results. The Belgian Court referred to the CJEU for a preliminary ruling on the question as to whether the Infosec Directive (Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (InfoSec Directive) must be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result. It also asked whether the assessment of a shape is necessary to achieve a technical result, should be based on the following criteria; (i) existence of other possible shapes; (ii) effectiveness of shape; (iii) intention of infringer; (iv) the existence of earlier expired patent on the process for achieving the technical result.
The CJEU tackled the two questions together and started the discussion by dialling back to the basics of copyright law - what constitutes a ‘work’ subject to copyright? In this regard, it referred to many of its past decisions which now constitute settled caselaw, including the 2019 Cofomel judgment (Cofomel – Sociedade de Vestuário Sa v. G-Star Raw CV,[2019], CJEU, Case C-683/17), and established that a work is that which (i) is original; (ii) is an expression of the author’s own intellectual creation; and (iii) must be identifiable with sufficient precision and objectivity. The Court stressed however, that if the work is dictated by technical considerations, rules or other constraints which leave no room for the author to exercise his creative freedom, then the work cannot be said to be to possess originality. Conversely, therefore, if there is room for such creative freedom, then the work can be said to be original and thus eligible for copyright protection.
The Court established that the Brompton bicycle is identifiable with sufficient precision and objectivity, and therefore the question remained for the Belgian Companies Court to decide on whether the bicycle constitutes an original work resulting from intellectual creation. It highlighted that since copyright cannot be extended to ideas (‘Copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such’, Art. 2 of the WIPO Copyright Treaty), it can only be said that the expression is dictated by technical considerations which have leave no room for creative freedom when the idea and its expression become indissociable.
In addition, the CJEU rejected the Multiplicity of Shapes theory and also the intention of the alleged infringer as being relevant criteria in the assessment of the choices made by the creator. The Court stipulated that the existence of a prior patent is only an indicative factor and not a determinative factor in the consideration as to what contributed to the choice of the shape of the product. It also continued to state that in order to assess whether the Brompton Bicycle is an original creation, the Belgian Companies Court should only take in account the aspects as they existed when the product was designed, and therefore not take into consideration any other factors which are external to and subsequent to the creation of the folding bicycle.
This judgment presents a correct and logical application of precedents of copyright principles, particularly that of the idea/expression dichotomy and the concept of originality, and happily enough, refrains from making dangerous analogies between copyright law and the law on trade marks or designs, for example. In fact, it confirmed that just because a product was subject to one type of intellectual property protection in the past, it does not exclude protection by another right.
This decision also confirms that if local creatives can show that the shape of their product is an original expression of their creativity, they can protect their products from copying by third parties, despite the fact that the product’s shape is necessary to obtain a technical result. One last question remains…so is the Brompton Bicycle an original work protected by copyright? We shall have to wait for the Belgian Companies Court’s decision on remand.
Sarah Cannataci, Associate at Fenech & Fenech Advocates.