When does copyright protection arise in works of applied art and industrial models and designs? A new CJEU reference

What is the standard of originality for copyright in works of applied art, and industrial models and designs? Is there an EU rule or can Member States decide to set their own threshold to protection?

This, in a nutshell, is the very interesting and potentially controversial issue that the Court of Justice of the European Union (CJEU) has just been asked to address in a brand-new reference from Portugal, ie Cofemel, C-683/17.

The application of the Portoguese Supreme Court is not yet available on the Curia website, but these are the questions referred (via @titorendas):

At this stage I am not aware of the nature of the Portuguese litigation but - from the way in which the questions are formulated - it would appear that:

(1) The reference is not really about EU law as such, but rather CJEU's interpretation of EU law ("the CJEU's interpretation"). 

(2) This suggests that the reference may be about whether and to what extent the string of CJEU originality cases - in this instance these are likely to be in particular Infopaq, BSA, FAPL, Painer and, above all, Flos - has removed the possibility for Member States to set their own standard of originality for works of applied art, and industrial models and designs.

CJEU-made originality standard

As readers know, EU legislature has harmonized the originality standard to a limited extent, in the sense that relevant directives have touched upon it solely with regard to computer programs (Article 1(3) of the Software Directive), databases (Article 3(1) of the Database Directive), and photographs (Article 6 of the Term Directive). 

In relation to such subject-matter protection arises any time the work in question is sufficiently original, ie it is "its author's own intellectual creation".

Yet, in its landmark Infopaq decision - by attempting to define the concept of reproduction 'in part' within Article 2 of the InfoSoc Directive [ie the same provision that is now at stake in Cofemel] - the CJEU also undertook the de facto harmonization of the standard of originality. 

Dreaming of freedom

By relying on a teleological interpretation of the various EU directives, as well as the Berne Convention, the Court stated in fact that also for works protected under the InfoSoc Directive - which, as such, does not envisage any particular notion of originality - the applicable standard would be that of "author's own intellectual creation".

The Court clarified further the concept of originality in subsequent decisions. In particular, in BSA it held that the standard of originality requires that the author expresses “his creativity in an original manner”. In FAPL it added that originality as author’s own intellectual creation requires exerting “creative freedom”. The CJEU refined further its construction of the standard of protection in its subsequent decision in Painer. There, it held that what is required is for the author “to express his creative abilities in the production of the work by making free and creative choices”, so that he “can stamp the work created with his ‘personal touch’”. 

Member States' freedom in respect of works of applied art, models and designs

For designs that are also eligible for copyright protection, things might seem straightforward. Article 17 of the Design Directive, in fact, provides that:

"A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State."

However, the Flos case has made things rather complicated. 

This was a reference from Italy, essentially asking about the compatibility with EU law of certain Italian provisions that the Court of First Instance of Milan had deemed potentially incompatible with the principle of cumulation envisaged under EU law (for a while the Italian approach to protection was based on the principle of scindibilità (separability)).

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 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]. 

How ... ehm ... original

And by "EU copyright law" what is meant is the InfoSoc Directive. In Flos the CJEU stated in fact that:

"it is conceivable that copyright protection for works which may be unregistered designs could arise under other directives concerning copyright, in particular Directive 2001/29, if the conditions for that directive’s application are met, a matter which falls to be determined by the national court." [para 34].

So?

The Flos decision has given rise to contrasting interpretations [for a thoughtful analysis of the judgment, see here], and led to the repeal of national provisions (including, in the UK, section 52 of the Copyright, Designs and Patents Act).

Hopefully in Cofemel the CJEU will reflect upon the actual breadth and legacy of its earlier case law on originality, which has been arguably prompted by - yes - a significant judicial activism, but an activism motivated and supported by internal market-building concerns. 

While doing so, the Court will also (possibly) answer the questions referred by the Portuguese Supreme Court and clarify the conditions for copyright protection in works of applied art and industrial models and designs. This is not an easy area of IP law, as - across the Atlantic - the recent decision of the US Supreme Court in Star Athletica demonstrates.

More to follow!