Can copyright protect the shape of a bicycle? We examine the latest European Court of Justice ruling concerning the iconic Brompton Bicycle, on the application of copyright law to “functional” three dimensional shapes.
Spoiler alert: the court ruled that copyright can subsist in a product with a functional shape dictated by technical purpose, so long as the choice of shape is also an original expression of an author’s creative ability and personality.
An interesting take away is that the court was willing to confer copyright protection in relation to an industrial, technical product design, and with it, the longer term of IP protection provided under copyright law. However, what does this mean? Read on to find out.
The case originated from the Belgian Tribunal de l’entreprise de Liège, which referred the question to the CJEU.
The background can be summarised as follows:
The folding technique utilised by the bike had originally been protected by a patent owned by Brompton Bicycle
On expiry of the patent, a Korean company, Get2Get, began manufacturing its own version of the bike, the Chedech, prompting Brompton Bicycle to initiate proceedings against them for copyright infringement. The two bicycles are shown below.
Spot the difference?
Why copyright? Well in short, no other form of IP protection was available. The patent which had previously prevented the functional mechanism from being copied had expired, as had the time limit for claiming unregistered design rights. Trade mark protection was also unavailable because a shape which is dictated by technical result is excluded from protection.
In the EU, copyright can be used to protect three dimensional shapes, although in the past, this has typically only applied to creations such as sculptures.
For an object to be protected by copyright in the EU it must be “original”. This means that it must be an expression of an author’s own intellectual creation, being a result of free and creative design choices which reflect the personality of the creator. Copyright infringement occurs when a third party copies the whole or a substantial part of the copyrighted material.
Get2Get argued that the shape and appearance of both bicycles was dictated by practical function (i.e. the ability to fold three ways) and technical considerations such that there was no scope for creative freedom and therefore it did not meet the originality test to be protected by copyright and there was no infringement.
The CJEU found that, while the shape of the bike may have been designed to achieve a mechanical, technical purpose, this did not preclude it from also enjoying copyright protection.
The question of whether, through the choice of shape, the designer of the bike had expressed any creative skill in an original fashion was at the discretion of the national Belgian court to decide, having regard to the following considerations:
If a shape is entirely determined by technical considerations or restrictions such that there is no opportunity for an author to express creative freedom, or scope so limited that the idea and its expression are indistinguishable, copyright is unlikely to subsist.
If alternative shapes can achieve the same technical effect there is likely to have been an element of choice in design.
The effectiveness of the shape in achieving a certain technical result and an expired patent may be considered only in terms of understanding the design process in selecting the shape or appearance of the work.
The intention of the designer or the alleged infringer is irrelevant to considerations regarding originality.
Does the decision have an impact on copyright protection for 3D designs in the UK? Typically, copyright protection in the UK is primarily available for two dimensional works only (with certain notable exceptions such as “work(s) of artistic craftsmanship”).
The most famous recent example is the case of Lucasfilm v Ainsworth, where the Supreme Court held that the original helmet from the Star Wars film franchise did not qualify for copyright protection as it was “functional” rather than artistic.
However, the Brompton Bicycle decision appears to be consistent with a recent string of more recent rulings in the EU. Last year’s European judgement in the Cofemel case confirmed that products may benefit from both copyright and design right protection and that originality is the key requirement for copyright to subsist in designs (with aesthetic effect not always being necessary).
This ruling was applied for the first time in an English Court by HHJ Hacon in the Intellectual Property Enterprise Court, in the case of Response Clothing v Edinburgh Woollen Mill, which conferred copyright protection on a three dimensional fabric design as a work of artistic craftsmanship.
Lastly, the decision also carries implications from an overlap of IP rights perspective. Copyright protection arises automatically from creation without any need for registration and has a much longer term than other types of IP right, typically subsisting for a period of 70 years after the death of the author. The judgment is good news for designers in the manufacturing industry, who may now be able to more easily prevent copycats by establishing copyright infringement where other types of IP protection such as trade marks, patents or designs are not available, less favourable, or have expired.
Copyright rides to the rescue!
If you have any questions about these issues in relation to your own organisation, please contact a member of the team or speak to your usual Fox Williams contact.
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