The Cofemel decision well beyond the ‘simple’ issue of designs and copyright

G-Star Elwood,
a style of jeans that G-Star claims
Cofemel to have copied
in the background Portuguese proceedings
As announced on The IPKat, last week the Court of Justice of the European Union (CJEU) issued its much awaited judgment in Cofemel, C-683/17 [not yet available in English]. It ruled that, as far as designs are concerned, no other requirement is mandated for copyright protection to arise under the InfoSoc Directive, but the sufficient originality of the design at issue. 

Earlier case law 

The ruling is not surprising, considering earlier CJEU case law, most notably the decision in Flos, C-168/09. This was a reference from Italy 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. The Italian approach to copyright protection of designs has been traditionally rooted within 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 of the Design Directive) – and suggested that Member States cannot set any particular requirements as to how protection is to be secured. 

The implication of all this appeared to 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 a reading of the Flos case is the one that, long before the Opinion of Advocate General (AG) Szpunar in Cofemel [Katpost here], AG Jääskinen had proposed in Donner, C-5/11 (at [31]): 
[T]he 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. 
The Flos decision has given rise to contrasting interpretations, and in the UK – for instance – it culminated in the repeal of section 52 of the Copyright, Designs and Patents Act 1988

In all this it is worth noting that the ‘seeds’ of both Flos and Cofemel were sown long before these cases were decided. 

As early as Infopaq, C-5/08, in fact, the CJEU removed the possibility of envisaging different standards of protection for different subject matter. If a work falls within the scope of application of the InfoSoc Directive, then protection only arises upon satisfying the requirement that it is its ‘author’s own intellectual creation’, that is the result of ‘free and creative choices’ (FAPL, C-403/08 and C-429/08) and something that carries the ‘personal touch’ of the author (Painer, C-145/10). As recently summarized by the Court in Funke Medien, C-469/17 (at [23]), 
[I]t is for the national court to ascertain whether […] the author was able to make free and creative choices capable of conveying to the reader the originality of the subject matter at issue, the originality of which arises from the choice, sequence and combination of the words by which the author expressed his or her creativity in an original manner and achieved a result which is an intellectual creation (see, to that effect, judgment of 16 July 2009, Infopaq International, C‑5/08, EU:C:2009:465, paragraphs 45 to 47), whereas the mere intellectual effort and skill [is] not relevant in that regard (see, by analogy, judgment of 1 March 2012, Football Dataco and Others, C‑604/10, EU:C:2012:115, paragraph 33). 
The Cofemel decision 

In its Cofemel judgment, the CJEU proceeded along the very lines set by these earlier rulings. It may be worth noting that the Judge Rapporteur was Mr Malenovský, ie the same judge who – besides acting as rapporteur in over 50% of the copyright referrals today, was also the rapporteur in Infopaq

The key question referred by the Portuguese Supreme Court was whether EU law (specifically: Article 2(a) of the InfoSoc Directive) prevents Member States from granting copyright protection to designs subject to requirements other than originality, eg, a high level of artistic value, as per the traditional Italian scindibilità and German Stufentheorie). 

In order to answer, the CJEU moved from the notion of ‘work’ in Article 2(a), and recalled that this – like all those concepts that do not refer to the laws of individual EU Member States – is an ‘autonomous’ notion of EU law, which requires uniform interpretation across the EU. The Court referred to both Infopaq and the recent judgment in Levola Hengelo, C-310/17 [Katpost here] (at [33] and [35]-[37]) to note that the notion of work presupposes the fulfilment of two cumulative requirements: 
  1. It implies the existence of an original object, in the sense that said object is the intellectual creation of its author in the sense clarified above. This means that the originality criterion “is not satisfied when the setting up of the database is dictated by technical considerations, rules or constraints which leave no room for creative freedom” (Football Dataco, C-604/10, at [39]); 
  2. The notion of work is reserved to those elements which are the expression of such creation. As the CJEU stated in Levola Hengelo, this necessarily implies that the subject matter “must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form” (at [40]). There should be “no element of subjectivity –– given that it is detrimental to legal certainty –– in the process of identifying the protected subject matter” (at [41]). 
"Mirror, mirror on the wall,
who's the fairest of them all?":
a question that no longer needs to be asked
post-Cofemel ...
Also considering a fundamental rights angle (Article 17(2) of the EU Charter of Fundamental Rights), the CJEU noted that “it does not follow that said objects or categories of objects shall all benefit from an identical protection” (at [38], my own translation from Italian). So, in this sense, in line with the Berne Convention (which does not preclude rights cumulation), different ‘objects’ might fall under the InfoSoc Directive, the Design Directive, and/or the Community Design Regulation, which pursue fundamentally different objectives. 

All this said, however, if a design falls within the scope of the InfoSoc Directive, then the only requirement for copyright protection under this piece of legislation is that the design is a ‘work’ fulfilling requirements 1. and 2. above. 

The Court also added that, if a national law were to require some sort of ‘aesthetic’ value for a design to be eligible for copyright protection, this would contradict the requirement of objectivity as mandated under EU law. 


The Cofemel judgment is yet another landmark ruling of the CJEU with far-reaching consequences, both for designs and other ‘objects’ protected by copyright. 


As far as designs are concerned, the judgment brings to its natural consequences the evolution already signalled by earlier case law: copyright protection simply arises upon fulfilment of the originality requirement. Nothing further is required. 

Whilst this ‘throws out of the window’ those national approaches that have traditionally made copyright protection dependent on an artistic, aesthetic, etc value, it also makes it clear that the assessment of originality is to be a thorough one. In this sense, national courts will need to identify what makes a design an original work, also bearing in mind the CJEU’s considerations re technical features. 

For those countries with an extra set of criteria that need to be fulfilled for a design to be eligible for copyright protection, the judgment clearly mandates a change of approach. 

... as is the question of artistic intention
(and value!)
Other works

Moving on to other copyright subject matter, the implications of Cofemel are equally profound. 

First, the judgment suggests that only the objective criteria indicated therein need to be satisfied: hence, there is no (longer) room for any requirement of artistic value or intent, as is instead still the case in certain jurisdictions. So, if we take the UK, the category of works of artistic craftmanship needs to be seriously re-considered. Furthermore, approaches like the one adopted by the UK Supreme Court in Lucasfilm (the Stormtrooper Helmet case) in relation to artistic works appear even more questionable than what could have possibly been the case so far. 

Second, in line with earlier case law up till the Levola Hengelo ruling, Cofemel indicates that exhaustive lists of protectable subject matter (as is the case of, eg, the UK) are really incompatible with EU law. Protection only arises when there is a work in the sense clarified by the Court: no other requirements are needed. And, in line with the point above, copyright protection cannot arise at different conditions depending on the ‘category’ the object at issue belongs to. 

Finally, as a follow up to Levola Hengelo, the Cofemel decision also questions the fixation requirement. It is true that the Berne Convention leaves it to individual signatory countries to decide on their own approach to fixation, but is that true also for EU Member States? It appears that the answer is in the negative: what EU law or, rather, the CJEU approach to EU copyright, requires is a harmonized approach to fixation across the EU. This means that there cannot be different choices are regards and understandings of fixation: the approach should be uniform across the EU and be the one mandated in Levola Hengelo and Cofemel.

[This contribution was first published on the Bird & Bird's DesignWrites blog: follow it for updates on relevant developments in the design and copyright world!]
The Cofemel decision well beyond the ‘simple’ issue of designs and copyright The Cofemel decision well beyond the ‘simple’ issue of designs and copyright Reviewed by Eleonora Rosati on Tuesday, September 17, 2019 Rating: 5

1 comment:

  1. I'd be interested in your thoughts on how the second (new) part of the definition of a "work" - i.e. that it should be identifiable in a precise and objective manner - is likely to operate on the dividing line between protectable and non-protectable designs. How would you identify - objectively and precisely - those aspects of something functional, like a chair, say, which are to be considered a work?


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