Opinion A-G on copyright protection of a folding bicycle dictated by its technical function

Case C- 833/18: Brompton Bicycle v Chedech. Opinion A-G Campos Sánchez-Bordona.

Copyright. The referring court must determine whether a bicycle whose folding system was protected by a patent which has now expired can be classified as a work eligible for copyright protection. According to the advocate-general, that court in particular seeks to determine whether such protection is precluded where the shape of the object “is necessary to achieve a technical result” and what criteria it must use when conducting that assessment. In the opinion the Cofemel case (IPPT20190912) and the Doceram case (IPPT20180308), amongst others, are discussed. In quotes:

"62. The Court has previously addressed that issue in relation to the protection of copyright in computer programs. (36)

65. It can be inferred from those rulings that, as a general rule, works (objects) of applied arts whose shape is dictated by their function cannot be protected by copyright. If the appearance of a work of applied art is exclusively dictated by its technical function, as a decisive factor, it will not be eligible for copyright protection. (40)

76. In the light of those arguments, which I believe it is appropriate to apply by analogy to these proceedings, it is possible to respond to the referring court. That court appears to state that the appearance of the bicycle at issue was necessary to achieve the technical result, (54) which is a finding of fact that it alone can make. If, by that assertion, the referring court means that the relationship of exclusivity between appearance and functionality, to which I referred above, exists, the answer to the first question must be that it is not possible to grant copyright protection.

83. The judgment in DOCERAM, which accepted, in essence, the Advocate General’s Opinion (the referring court cites that judgment and the Opinion of the Advocate General), (57) ruled on the matter in the following terms:

– ‘In order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard’. (58)

– However, there is nothing to prevent the court from taking into account the possible ‘existence of alternative designs which fulfil the same technical function’. (59) The latter is not, therefore, a conclusive factor but merely an additional assessment criterion.

84. A reading of that judgment emphasises, therefore, the fact that alternative solutions are not decisive when it comes to assessing the relationship of exclusivity between the features of appearance and the technical function of a product. However, that does not mean that any effect of such alternative solutions may be dismissed as a factor capable of affording room for intellectual creativity which leads to the same technical outcome.

87. In any event, from a perspective linked to the interpretation of the rule, rather than its application to a given situation, what matters is to recall that, for the Court of Justice, the answer to this part of the second question can be deduced from the judgment in DOCERAM.

88. The approach set out in relation to designs can be applied, mutatis mutandis, for the purpose of determining the level of originality of ‘works’ with an industrial application whose creators seek to protect them by copyright.

90. The fact that the intention of achieving a technical result can be assessed by evaluating the relationship between shape and functionality is a different matter. Logically, the producer of an object protected by a patent which has fallen into the public domain would have no aim other than obtaining the desired technical outcome. (63)

100. Lastly, I should add that the possible refusal to grant copyright protection would not preclude reliance on other provisions laid down to combat slavish or parasitic imitations. As the Commission stated at the hearing, although the legislation on unfair competition has not been fully harmonised at EU level, (67) it is capable of offering remedies for that undesirable situation. (68)

102. In the light of the foregoing considerations, I propose that the Court of Justice should reply to the Tribunal de l’entreprise de Liège (Companies Court, Liège, Belgium) in the following terms:

‘(1) Articles 2 to 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society do not provide for copyright protection of creations of products with an industrial application whose shape is exclusively dictated by their technical function.

(2) In order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.

(3) Where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.’"

Read the opinion here.