Swedish court requests CJEU to clarify notion of ‘author’s own intellectual creation’ when assessing EU originality standard

When assessing whether a work of applied art affords exclusive rights granted through copyright, what factors should be considered? Should the originality requirement focus on factors related to the creative process and the author’s account of the actual choices that they made, or rather factors concerning the work itself and the final result of the creative process?

All this is at the centre of a fresh referral that the Swedish Patents and Market Court of Appeal (case PMT 13496-22, only available in Swedish) has just made to the Court of Justice of the European Union (CJEU) in the context of copyright infringement proceedings between a Swedish furniture company, Asplund (the Claimant), and a leading Swedish retail chain for furniture and home furnishing, MIO (the Respondent).

Background

Both the Claimant and Respondent sold dining tables. The Claimant launched its dining table in 2018 as part of its ‘Palais Royal’ furniture collection, which also won numerous awards. In 2020, the Respondent started manufacturing and selling dining tables as part of its ‘Cord’ furniture series with inherently similar characteristics to those of the Claimant’s dining table:

Respondent's table                 Claimant's table

In 2021, the Claimant filed a lawsuit against the Respondent, claiming that the Respondent infringed its copyright by copying its own dining table. The Respondent submitted that the Palais Royal dining table would not be protected by copyright since it is not sufficiently original. The design was largely attributable to functional and technical considerations and based on simple variations of previously known designs that are part of the general design repertoire.

The Swedish Patents and Market Court (first instance) held that the shape of the dining table was the result of the author’s own intellectual creation and therefore sufficiently original. The claim to copyright infringement prevailed and that court prohibited the Respondent from further manufacturing, marketing, and selling its dining table. The Respondent subsequently appealed the decision to the Swedish Patents and Market Court of Appeal, which has decided to stay the proceedings and refer the following questions to the CJEU [please note that the referral is not yet available on the Curia website so the translation from Swedish is mine and may not be accurate]:

1. In assessing whether a work of applied art warrants protection within the meaning of Articles 2–4 of Directive 2001/29/EC, how should the examination be conducted and what factors should be considered in answering the question of whether the work reflects they author’s free and creative choices? In this context, should the test for originality focus on factors related to the creative process and the author's account of the actual choices made in creating the work, or on factors concerning the work itself and the final result of the creative process, and whether the work itself expresses an artistic effect?

2. If a work of applied art reflects the personality of the author by expressing their free and creative choices, what significance does it have if:

a) the work in question consists of common shapes/elements?

b) the work in question builds on and constitutes a variation of a previously known design or an ongoing design trend?

c) identical or similar works have been created before or – independently and without knowledge of the work claimed to be protected as a work – after the creation of the work in question?

3. How should the assessment of similarity be conducted and what degree of similarity is required when assessing whether an allegedly infringing work falls within the scope of protection and infringes on the exclusive rights of the work that belong to the author? In this context, the question particularly concerns whether the assessment should focus on whether the work is recognizable in the allegedly infringing work of applied art or whether the allegedly infringing work of applied art gives the same overall impression as the work, or what else should the assessment focus on?

4. In the question of whether an allegedly infringing work of applied art falls within the scope of protection of a work and infringes on the exclusive right to the work, what significance does:

a) the degree of originality of the work have for the scope of protection of the work?

 

b) the fact that the work and the alleged infringing work of applied art consist of common elements or builds on and constitutes variations of a previously known design or an ongoing design trend?

c) the fact that other identical or similar works have been created before or – independently and without knowledge of the work – after the creation of the work?

Comment

Readers who follow all things copyright will promptly detect that this case is a follow-up to Cofemel [IPKat here] and Brompton Bicycle [IPKat here], with the latter trying – ultimately in vain – to get some further clarity from the CJEU on how to assess originality, including in relation to works of applied art. The IPKat will follow this referral and report on relevant updates in due course.