Copyright: protection of designs as copyright works

By Audrey Horton

03-2020

The European Court of Justice (ECJ) has considered the extent to which designs could be protected as copyright works.

Background

Recital 60 of the Copyright Directive (2001/29/EC) (the Directive) states that the protection provided under this Directive should be without prejudice to national or Community legal provisions in other areas. Article 2(a) of the Directive (Article 2(a)) requires EU member states to ensure that authors have the exclusive right to authorise or prohibit reproduction of their works.

In Infopaq International A/S v Danske Dagblades Forening, the ECJ held that the storing and printing out of 11-word extracts from newspaper articles amounted to reproduction within Article 2(a) if the elements reproduced were the expression of the author's intellectual creation (C 5/08).

In Painer v Standard Verlags GmbH, the ECJ held that portrait photographs could enjoy protection if they were original in the sense of being the author's own intellectual creation, for example if they showed the photograph's personal flair (C 145/10).

In Levola Hengelo BV v Smilde Foods, the ECJ has held that the taste of a food product could not be expressed in a manner which made it identifiable with sufficient precision and objectivity to be work under the Directive (C 310/17).

Article 17 of the Designs Directive (98/71/EC) provides that a design protected by a design right registered in a member state should also be eligible for protection under the law of copyright of that state as from the date on which the design was created or fixed in any form.

In the UK section 4 of the Copyright, Designs and Patents Act 1988 (CDPA) provides that works of artistic craftsmanship, sculptures or engravings may be protected by copyright as artistic works.

Facts

C and G were involved in the design, production and selling of clothing. G alleged that designs of jeans, sweatshirts and t-shirts produced by C were comparable to G's designs.

G applied for a court order that C cease infringement of its copyright and unfair competition and pay damages. G argued that the clothing designs constituted original intellectual creations and could be classified as works protected by copyright.

The Supreme Court of Portugal referred to the ECJ the question of whether Article 2(a) precluded national legislation which conferred copyright protection on works of applied art, industrial designs and works of design.

Decision

The court held that Article 2(a) should be interpreted as precluding national legislation from conferring copyright protection to designs such as the clothing designs on the ground that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect.

Whether designs are capable of being classified as copyright works within the meaning of the Directive depends on whether they meet the following two requirements:

• They are an original subject matter, in the sense of being the author’s own intellectual creation, reflecting the author's freedom of choice and personality. This requirement will not be satisfied if the realisation of a subject matter has been dictated by technical considerations, rules or other constraints, which leave no room for creative freedom.

• Classification as a work is reserved to the elements that are the expression of that creation.

Subject matter protected as a design are not, as a general rule, capable of being treated in the same way as subject matter constituting works protected under copyright. The EU legislature has however opted for a system in which the protection reserved for designs and the protection ensured by copyright are not mutually exclusive. Therefore, designs are capable of classification as works, within the meaning of the Directive, if they meet the two requirements listed above.

The protection of designs and copyright protection have fundamentally different objectives and are subject to different rules. The purpose of the protection of designs is to protect subject matter which, while being new and distinctive, is functional and liable to be mass produced. This protection is to apply for a limited time, but sufficient to ensure a return on the investment necessary for the creation and production of that subject matter, without excessively restricting competition. The protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that can be classified as works.

The grant of protection, under copyright, to subject matter that is protected as a design must not undermine the respective objectives and effectiveness of those two forms of protection. So, although the protection of designs and the protection associated with copyright could, under EU law, be granted cumulatively to the same subject matter, that concurrent protection can only be in certain situations.

Aesthetic originality does not constitute the central criterion for protection under the Directive. The aesthetic effect that can be produced by a design is the product of an intrinsically subjective sensation of beauty experienced by each individual who might look at that design. That subjective effect does not, in itself, permit a subject matter to be characterised as existing and identifiable with sufficient precision and objectivity, within the meaning of Levola Hengelo. While aesthetic considerations plays a part in creative activity, the circumstance that a design could generate an aesthetic effect does not, in itself, make it possible to determine whether that design constitutes an intellectual creation reflecting the freedom of choice and personality of its author, which is the originality requirement for copyright.

Comment

This decision is interesting with regard to where the line between copyright and design right should lie, particularly in those areas where copyright and design protection might be possible for the same subject matter, such as clothing. It also raises questions about whether the UK's regime, which allows copyright and design protection for certain works such as works of artistic craftsmanship, is consistent with EU law.

While "work of artistic craftsmanship" is not defined in the CDPA, case law suggests that the work must have some aesthetic appeal, a criterion which appears inconsistent with the ECJ's approach in this case. It is unclear whether the decision on these points will lead to any reform of UK law, similar to that of section 52 of the CDPA, the repeal of which the government considered necessary to comply with EU law.

Case: Cofemel - Sociedade de Vestuário SA v G-Star Raw CV C 683/17