Thoughts on the Judgment of the Court of Justice of the European Union from June 11, 2020 (CJUE, 11 juin 2020, C-833/18, SI, Brompton Bicycle Ltd c/ Chedech/Get2Get).
This case revolves around a conflict between a folding bicycle designer (SI), the company that he created for its marketing (Brompton Bicycle) and a Korean company (Get2Get) that sold a product similar to this folding bicycle (under the Chedech brand). The bikes are similar in the fact that they can be arranged in three different positions: folded, unfolded and an intermediate position enabling the bike to remain balanced on the ground.
Sources : Copyrighted free use, https://commons.wikimedia.org/w/index.php?curid=421822
The Brompton folding bike, sold in its current form since 1987, was protected by a patent, which has since expired. SI and Brompton are no longer able to use the monopoly right given by the patent – which is time-restricted – and decided to adapt their strategy by invoking the copyright protection.
SI and Brompton thus asked the Tribunal de l’entreprise de Liège (Belgium) to confirm that the Chedech bikes infringe:
-the copyrights of the Brompton Bicycle company;
-the moral right of SI (meaning the right of every author to be recognized as the creator and of its creation to not be modified).
The complainants thus asked for their opponent’s product to stop being sold and for the Get2Get company to pull the Chedech bike off the market.
As part of this infringement case, the Tribunal de l’entreprise de Liège asked the Court of Justice their stance on the potential accumulation of a patent protection, a design and model protection, and a copyright protection for technical function innovations. The Tribunal asked the following two preliminary questions:
‘(1) 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?
(2) 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?’
The Tribunal de l’entreprise de Liège noted that a previous ruling was made on the impossibility to model protect the characteristics of a product’s appearance that are there exclusively for technical purposes. Which leads us to the conclusion that a model protection is to be excluded when the technical function is the only factor determining these characteristics. The existence of alternative designs and models (and thus of many different forms) is considered as a neutral factor (CJUE, 8 mars 2018, aff. C-395/16, DOCERAM GmbH c/ CeramTec GmbH, ECLI:EU:C:2018:172).
In a very short judging, the Court of Justice puts the two questions together and defines under which conditions a form required to obtain a specific technical result can be considered as a “work” falling under the copyright protection.
According to a constant jurisprudence of the Court, a “work” is made of two cumulating elements (CJUE, 12 septembre 2019, aff. C-83/17, Cofemel, EU:C:2019:721, points 29 to 32) :
-First, it implies an original object which is an intellectual creation belonging to its author. To fit this first condition, it is necessary and enough for the object to reflect the free, creative and personal choices of the author. Correlatively, when the realization of an object has been determined by technical considerations, by rules or constraints that did not leave room to creative freedom, the object will not display originality and will not thus be able to fall under the copyright protection (23-24).
-Secondly, it is necessary for the creation to be identifiable with enough precision and objectivity (25).
So, an identified object fitting the originality criteria can fall under the copyright protection even if its realization was determined by technical considerations, as long as the author was not prevented from expressing their personality in this object, through free and creative choices (26).
The Court adds:
‘In that context, and in so far as only the originality of the product concerned needs to be assessed, even though the existence of other possible forms which can achieve the same technical result makes it possible to establish that there is a possibility of choice, it is not decisive in assessing the factors which influenced the choice made by the creator. Likewise, the intention of the alleged infringer is irrelevant in such an assessment. (35)’
In determining originality, the fact that an object can be presented in different ways (the “shape multiplicity” criteria) or the existence of an expired patent are just factors among others. Just as in the pre-mentioned DOCERAM judgment, many particular aspects of a product, of its production modes or of its specific functions will help jurisdictions in deciding if the choice of the form is dictated only by its technical function or not.
As part of the protection strategies for your innovation, do not neglect any lead: we are here to help you analyse the different options working with the specificities of your project!