Bird & Bird IP team successfully represents Brompton Bicycle - CJEU rules that functional shapes are eligible for copyright protection if they are original works

06-2020

International law firm Bird & Bird's IP team has successfully represented Brompton Bicycle before the CJEU where it was found that functional shapes are eligible for copyright protection if they are original works.

The judgment originated from a referral for a preliminary ruling made by the Tribunal de l’entreprise de Liège (Belgium) in the context of proceedings that Brompton Bicycle had brought against Korean company Get2Get, claiming infringement of copyright in the shape of its iconic folding bike.

In response to Brompton Bicycle's claim, Get2Get submitted that the appearance of the claimant’s product would be dictated by the technical function sought and that it would deliberately adopt the folding technique because that is the most functional method. In turn, Brompton Bicycle submitted that other shapes are present on the market and this would demonstrate the originality of its product: free and creative choices were made in the realization of its bike.

The Belgian court stayed the proceedings and asked the CJEU to clarify whether copyright protection under Directive 2001/29 (the InfoSoc Directive) applies to a product whose shape is, at least in part, necessary to obtain a technical result.

The CJEU held yesterday in a seminal ruling that copyright protection is available to products whose shape is, at least in part, necessary to obtain a technical result, in so far as "that product is an original work, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".

The CJEU did not followed the AG stating in its opinion.

The Bird & Bird team was led by Belgian partner Benoit Van Asbroeck, who was assisted by Associates Guillaume de Villegas and Auriane Schockaert.

Benoit Van Asbroeck, partner at Bird & Bird says: "We are delighted by the ruling and in particular that the CJEU did not follow the opinion of the AG who considered that when the intention of a designer is to have its original design massively produced it could not be eligible for copyright protection. The AG considered further that granting copyright protection to industrial design is disproportionate towards the limited duration of protection of patents and design and models. Fortunately the CJEU disregarded this attempt to limit the cumulation of IP rights. Finally the AG was suggesting that only decorative non-functional parts of an industrial design could benefit from copyright protection. In other words minimalist designs would not be protected anymore by copyright. Fortunately the CJEU did not go that route. Thanks to this seminal ruling companies like Brompton focusing on original industrial designs will be able to continue to take action against copycats of their products and secure their further development which plays a key role in the European economy".