Copyright protection may not be granted to designs on the sole ground that, over and above their practical purpose, they produce a specific aesthetic effect: designs must constitute the expression of original works if they are to qualify for such protection.
From the press release: “The Supremo Tribunal de Justiça (Supreme Court, Portugal) has before it a dispute between Cofemel – Sociedade de Vestuário, SA (‘Cofemel’) and G-Star Raw CV (‘G-Star’), two companies which are both active in the sector of design, production and sale of clothing. The dispute concerns compliance with copyright claimed by G-Star, which accuses Cofemel of producing and selling jeans, sweatshirts and t-shirts copying some of its own designs. The intellectual property protection ensured by EU law benefits, inter alia, works whose authors are granted, under the directive on copyright, the exclusive right to authorise or to prohibit reproduction, communication to the public and distribution. In parallel, other acts of secondary EU law ensure specific protection for designs. Against that background, the Supremo Tribunal de Justiça states that the Código do Direitos de Autor e dos Direitos Conexos (Portuguese Code on Copyright and Related Rights) includes designs in the list of works which may qualify for copyright protection, but does not explicitly clarify what conditions must be satisfied if a particular subject matter, serving a practical purpose, is in fact to qualify for such protection. Since there is no unanimity in Portuguese case-law and legal theory, the Supremo Tribunal de Justiça asks the Court of Justice, in essence, whether the directive on copyright precludes provisions of national legislation whereby that protection is granted if a specific condition is satisfied, namely that designs must, over and beyond their practical purpose, produce a specific aesthetic effect.
The Court answers that question in the affirmative. In that regard, the Court recalls, first, its settled case-law that any original subject matter constituting the expression of its author’s own intellectual creation can be classified as a ‘work’, within the meaning of the directive on copyright. Further, the Court states that a body of acts of secondary EU law establish a specific protection for designs, while providing that that specific protection may apply in combination with the general protection ensured by the directive on copyright. Consequently, a design may, in a particular case, also be classified as a ‘work’. That said, the Court states that the protection of designs, on the one hand, and copyright protection, on the other, pursue different objectives and are subject to distinct rules. The purpose of the former is to protect subject matter which, while being new and distinctive, is functional and liable to be mass-produced. Further, the former protection is applicable for a limited time, ensuring a return on the investment necessary for the creation and production of that subject matter without thereby excessively restricting competition. For its part, the protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that merits being classified as works. In that context, the grant of protection, under copyright, to subject matter that is already protected as a design must not undermine the respective objectives and effectiveness of those two sets of rules, which is why the cumulative grant of such protection can be envisaged only in certain situations. [...]
Consequently, the circumstance that designs produce, over and above their practical purpose, a specific aesthetic effect, does not, in itself, entail that such designs can be classified as ‘works’.”
IPPT20190912, CJEU, Cofemel v G-Star Raw (only available in French)
C‑683/17 - ECLI:EU:C:2019:363