News & Views

The Complex Relationship Between Design and Copyright Protection Clarified

5 December 2019

Author: Anna Räty

The CJEU’s Cofemel Judgment

Unlike much of the other intellectual property rights legislation, copyright legislation is still largely unharmonised within the European Union.  However, certain EU legislation does exist, and the case law of the Court of Justice of the European Court of Justice (the “CJEU”) has played a central role in the founding and steering of the European Union copyright regime. A recent judgment clarifying the relationship between copyright and design protection was given by the CJEU on 12 September 2019 in the Cofemel case (C-683/17).

The parties involved in the case are both active in the field of design, production, and sale of clothing. In the dispute, the plaintiff, G-Star, claimed that certain clothes designed and sold by Cofemel were in fact copies of G-Star’s designs, which, it maintained, constituted original intellectual creations that qualified as copyright-protected works. Cofemel, on the other hand, considered that such designs could not constitute “works” that qualify for copyright protection.

The Portuguese Supreme Court referred the case to the CJEU to clarify whether the applicable Information Society Directive prevents Member States from granting copyright protection to designs on grounds other than originality. An example of such other grounds can be found in the Portuguese Copyright Law, which requires designs to produce an “aesthetic effect” in addition to originality in order to qualify for copyright protection. Such additional requirements have also been implemented in some other Member States’ copyright legislation, and, for instance, Italian copyright legislation has an additional requirement of “artistic value”.

Criteria for Qualifying as a “Work”

To answer the question, the CJEU analysed the matter by focusing on the concept of copyright-protected “work”, which the CJEU stated must be considered an autonomous concept under EU law, wherefore it must be interpreted uniformly across the Member States. The CJEU ruled that in order to qualify as a work, it must have a combination of the following two cumulative elements:

  1. The object of protection must be original, which means that it must derive from the intellectual creation of its author.
  2. Only elements that can be regarded as expressions of such intellectual creation can be classified as works.

Hence, if there has been no room for the author’s freedom of creation, and the object is determined by technical considerations or constraints, the object cannot be regarded as original enough to constitute a work eligible for copyright protection.

Moreover, the CJEU held that the existence of an object of protection must be identifiable with sufficient precision and objectivity, and all subjective elements that might be harmful to legal certainty must be excluded from the process. Thus, the requirement of precision and objectivity cannot be met when such identification is based on the subjective experience of a person. This is because the “aesthetic effect” of an item may differ for each person considering the aesthetic characters of the item.

The fundamentally different objectives of copyright and design protection were also considered in the judgment. Design protection aims to protect objects that are novel and that have individual character, and that are suitable for practical use and mass production. This also justifies the more limited duration of protection when compared to copyright protection, which is reserved for “works” and which confers protection for a longer time period. Thus, granting copyright protection to a design should not result in compromising the objectives and effectiveness of these fundamentally different forms of protection. Therefore, dual protection should only be possible in certain limited circumstances.

After careful consideration of these aspects, the court held that if a design meets the abovementioned two-step criteria, it may also be considered a copyright-protected work.

Impacts of the Judgment

The judgment brings about predictability especially for the fashion industry in the EU, as the practice has been quite scattered on the national level. In the context of designs, it is now confirmed that the additional national requirements are not in line with the EU-wide concept of a copyright-protected work. The only acceptable requirement of copyright protection for designs is the originality of the design at hand.

In practice, the judgment may clarify and lower the threshold for fashion and design items’ copyright protection especially in those Member States that have their own additional requirements for copyright protection, including certain key Member States in the field of fashion, such as Italy and Germany. On the other hand, as other requirements for copyright protection are now clearly prohibited, the threshold of originality may now play a more central role in the evaluation of whether an object meets the requirements of the copyright protection.

What will be particularly interesting is the interpretation of the originality of fashion items and other items of utilitarian purpose, where the creation process is often subject to certain technical restrictions.