AG Szpunar advises CJEU to rule that copyright protection in designs simply arises when they are original

G-Star Elwood,
a style of jeans that G-Star claims
Cofemel to have copied
in the background Portuguese proceedings

At what conditions can a design be protected by copyright? Is it compatible with EU law that a certain national law requires a design to be a 'work of art', an 'artistic creation' for copyright to vest in it?

As IPKat readers may know, this is a question that - prima facie - might seem easy to answer (see Article 17 of the Design Directive) but that - substantially and because of earlier decisions of the Court of Justice of the European Union (CJEU), notably the one in Flos - is not so straightforward.

In Flos, in fact, the CJEU held that EU law prohibits Member States from denying copyright protection to designs that meet the requirements for copyright protection - including designs other than registered ones (subject to Article 17) - and suggested (although rather ambiguously) that Member States cannot set any particular requirements as to how protection is achieved. 

In this sense, the implication may be that - if a design is eligible for protection under the InfoSoc Directive and is, as such, original in the sense clarified by the CJEU - then Member States cannot deny such protection.

Such reading of the Flos case is the one that - rather concisely - Advocate General (AG) Jääskinen proposed in Titus Donner: 

the judgment in Flos indicates that the items here in issue, although unprotected under Italian copyright law during the relevant period, were entitled to protection under EU copyright law [para 31].

Now, the issue of copyright protection of designs is back at the CJEU. As this blog reported last year, the Portoguese Supreme Court referred a case - Cofemel, C-683/17 - asking clarification on this point, and more specifically:

1) Does the interpretation by the Court of Justice of the European Union of Article 2(a) of [the InfoSoc Directive] preclude national legislation — in the present case, the provision in Article 2(1)(i) of the Código de Direitos de Autor e Direitos Conexos (CDADC) — which confers copyright protection on works of applied art, industrial designs and works of design which, in addition to the utilitarian purpose they serve, create their own visual and distinctive effect from an aesthetic point of view, their originality being the fundamental criterion which governs the grant of protection in the area of copyright?

2) Does the interpretation by the Court of Justice of the European Union of Article 2(a) of [the InfoSoc Directive] preclude national legislation — in the present case, the provision in Article 2(1)(i) of the CDADC — which confers copyright protection on works of applied art, industrial designs and works of design if, in the light of a particularly rigorous assessment of their artistic character, and taking account the dominant views in cultural and institutional circles, they qualify as an ‘artistic creation’ or ‘work of art’?

This morning AG Szpunar issued his Opinion [not yet available in English], in which he confirmed that copyright protection for designs should arise when the originality requirement is fulfilled, without taking into account any additional criteria.

Let's see how the AG reasoned.

Cumulation of IP rights

The AG started by noting that, despite the protection of works of applied art being " as old as intellectual property in general", it is not something that has been devoid of issues: "it still faces difficulties in finding its own space within the system of intellectual property" [my translation from Italian]. 

The result has been that systems of sui generis protection have appeared, though never with an exclusive character, so that cumulation of protection has been possible. With particular regard to protection by means of copyright, the conflict with the principles of free competition has meant that the former has been often dependent on the design displaying a high level of artistic value. Theories like the Italian «scindibilità» and German «Stufentheorie» are examples of this, and so was the limited term of protection afforded under UK law by the (defunct, post-Flos) section 52 of the Copyright, Designs and Patents Act.

This said, the fact that an object also has a utilitarian function does not rule out copyright protection per se. As such, the choice of EU legislature to cumulate a sui generis protection regime with copyright, in accordance with the French theory of unity of the art, "does not appear to be out of place".

Jeans? A perfect hiding spot!

Notion of 'work' under EU law in CJEU case law

The AG began his substantive analysis with the notion of 'work'. While no legislative definition was provided of it in the InfoSoc Directive - probably because no universally acceptable definition could be agreed by the individual Member States - it was unavoidable that a referral to the CJEU would be made on this at some point [see here]. 

The CJEU has held that the «result of an author's own intellectual creation» is the main element in the definition of 'work'. This definition has been subsequently refined: the author's personality must be reflected in the creative result and the work must result from the making of 'free and creative choices'. Also, it is required that the subject matter at issue be identifiable with sufficient precision and objectivity.

Copyright protection of designs

According to AG Szpunar [correctly], the notion of 'work' as thus defined applies to all works. In addition, the InfoSoc Directive does not contain any indication that a distinction could be made between different types of works based on their artistic value.

According to the Italian, Czech and British Governments, however, such a requirement is envisaged in Article 17 of the Design Directive and Article 96(2) of the Community Design Regulation. Both of them would be lex specialis in relation to the InfoSoc Directive.

The AG disagreed with this position, for the following reasons.

First, Article 17 of the Design Directive only concerns registered designs. As such, Article 96(2) of the regulation would be more of an appropriate reference. However, this provision makes Member States' discretion dependent on the lack of EU harmonization, as is confirmed by Recital 32 therein. According to the AG, it is "clear" that after the realization of said harmonization - by means of the InfoSoc Directive - Member States have lost the freedom afforded under Article 96(2). 

The fact that the regulation was actually adopted a few months after the InfoSoc Directive does not mean anything: the text of what is currently Article 96(2) was already present in the first proposal of 1993. Furthermore, while the deadline for national transpositions of the InfoSoc Directive was 22 December 2002, the regulation entered into force in March 2002. As such, when the regulation entered into force, the harmonization brought about by the InfoSoc Directive had not been completed yet:

[T]he margin of discretion attributed to Member States by Article 96(2) of [the Community Design] Regulation is limited by the obligations as arising from [the InfoSoc Directive]."

The AG also dismissed the argument of British Government that Article 9 of the InfoSoc Directive would leave unprejudiced the application of the Design Directive, including Article 17 thereof. The latter relates to copyright protection, not design protection. These protection regimes are autonomous and the former is not subject to the latter. As such, Article 9 of the InfoSoc Directive cannot be intended as excluding the application of this piece of legislation to designs.

Having reviewed relevant legislative provisions, the AG finally turned to Flos for support to the conclusion that Article 17 of the Design Directive must be intended as a confirmation of the principle of cumulation of protections:

a work of applied art shall not be excluded from copyright protection only because it can enjoy sui generis protection as a design. On the contrary, said provisions cannot be interpreted as derogating to [the InfoSoc Directive] or any other act of the Union that governs copyright.

As such, the InfoSoc Directive prohibits that designs be protected by copyright only when they posses an artistic value that exceeds what is normally required for other types of works.

Is copyright protection without artistic value too much?

The AG also considered the concerns [see also the Opinion of the European Copyright Society in this respect] that excessive protection might be thus granted to designs, and concluded that the "rigorous application" [emphasis added] of copyright by national courts would serve to remedy - considerably - the shortcomings arising from the cumulability of copyright and design protection.

In this sense, the threshold of originality is not particularly high, but it is not "non-existent" either. Furthermore, the idea/expression dichotomy in the field of applied art is capable of reducing the anticompetitive effects of copyright protection. So, for the objects at issue in the main proceedings (sweatshirts, T-shirts and jeans) it should be considered that the same ideas can be expressed in different ways. Finally, the concept of 'overall impression' is not part of copyright:

Copyright thus allows the author of a design to object to the divulgation and use of a design which does not produce a different overall impression only insofar as said author is able to demonstrate that original elements of their design have been reproduced.

Following a claim of protection of a design through copyright, a judge must consider said elements, in order to distinguish between what falls, possibly, within the sui generis design protection and what is protected by copyright, also to avoid, in this way, the confusion between such protection regimes.

Comment

The Opinion of AG Szpunar is well-reasoned and, like it or not, correct from the point of view of how copyright law has evolved, also through the interpretation of relevant provisions by the CJEU.

It is likely that the CJEU will follow his analysis.

Hopefully, the CJEU will also follow his words of caution in maintaining a distinction between the rationale and conditions for the application of certain legal regimes. While a rigorous application of copyright norms is advisable, this is not always what happens in practice. 

It is not uncommon to read judgments that bluntly state that a certain object is expressive enough or original enough to warrant copyright protection, without providing a sufficiently detailed reasoning as to why this is the case ...

Stay tuned for the next episode!