How original is a cat litter tray?

This Kat’s attention has recently been drawn to a Kat-focused ruling: that of design and copyright protection of a cat litter tray. Resolved by the first instance Community design court in Brussels, this case tackled issues such as forum shopping and cumulation of rights in a work of applied art (case A/22/02872).

Background to the dispute

The litigation was initiated by Savic, a Belgian producer of pet products. Savic owns two Community designs for cat litter trays, marketed as Nestor (002090365-0001, to the right) and Nestor Corner (002472472-0002).

Savic sued Plana, a Slovenia-based distributor of pet products, together with Petsolutions, a Belgian wholesaler of pet products. Savic alleged that two of Plana’s products, Ella Comfort (see how it looks here) and Ella Comfort Corner, were infringing its design rights and copyright in the Nestor and Nestor Corner. Savic also claimed that Plana’s and Petsolutions’ actions constituted unfair competition. Plana filed a counterclaim asking the court to invalidate Savic’s designs.

Jurisdiction

Savic filed its lawsuit against Plana and Petsolutions before the first instance Community design court in Brussels, Belgium.

Pursuant to Arts. 80-82 Regulation (EC) No 6/2002, each Member State (MS) of the European Union (EU) designated a limited number of first instance and second instance courts that are competent over infringement of Community designs.

For a pan-EU jurisdiction, the plaintiff must bring its infringement lawsuit before the Community design court of the MS where the defendant is domiciled or, if it is not domiciled in any of the MS, in any MS in which it has an establishment. Subsidiarily, the lawsuit shall be filed in the MS of the plaintiff, then in Spain. If the defendant files a counterclaim for invalidity of the Community design, the same court will have jurisdiction. Other Community design courts would only have jurisdiction over the infringement committed in their MS.

Following the rules described above, a pan-EU design lawsuit against the Slovenian Plana should have been filed in Slovenia. Yet, the Belgian court considered itself competent over the design claims against Plana. This is because the court did have jurisdiction over the Belgium-based Petsolutions, which resold pet products from various producers, including Plana. The Belgian court found that design claims against both defendants were closely related, and it thus had jurisdiction to rule on infringement of the two Community designs in the territory of all EU MS.

For the copyright and unfair competition claims, the court’s jurisdiction was found to be limited to the Belgian territory.

Design infringement

By way of counterclaim to Savic’s design infringement allegations, the defendants argued that the Savic’s Community designs were invalid as being dictated solely by their technical function (Art. 8 Regulation 6/2002), not being new (Art. 5 Regulation 6/2002) and not having individual character (Art. 6 Regulation 6/2002).

The court started by addressing the technical functions claim. To decide on the functionality of the designs’ features, the court applied the principles established by the Court of Justice of the European Union (CJEU) in Doceram [commented by The IPKat here].

The Belgian court identified features of both Nestor and Nestor Corner designs that were not dictated solely by their technical function. For instance, the slopping line of the Nestor cat litter box showing a twist in the middle, or its circular shaped and integrated handle do not fall under the functionality prohibition. The Belgian court applied the General Court’s ruling in Lego [see also a comment here], according to which a design that has non-functional features cannot be invalidated under Art. 8 Regulation 6/2002. The two Community designs should thus be deemed valid in this regard.

The court then addressed novelty and individual character claims. Relying on the prior art cited by Plana, the court found that the Nestor design lacked individual character and Nestor Corner lacked novelty. The two Community designs were thus declared invalid and – as a result – Savic’s design infringement claims were dismissed.

Copyright infringement

As stated, Savic also claimed that Plana’s products infringed its copyright in the Nestor and Nestor Corner cat litter boxes. Here, the court applied the CJEU’s rulings in Cofemel and Brompton Bicycle on copyright protection of works of applied art [see here and here for The IPKat’s analysis]. According to the CJEU’s case-law, a work of applied art may be protected by copyright provided it is original in the sense of being the author’s own intellectual creation. It shall reflect the author’s personality and their free and creative choices.

To assess the cat litter trays’ originality in copyright terms, the Belgian court decided to borrow from its earlier design analysis. The court reasoned that if a design lacks individual character (and even more so, if it lacks novelty), its designer did not contribute or insufficiently contributed free and creative choices. Thus, the resulting work was deemed unoriginal and unprotectable by copyright. Savic’s copyright infringement claims were thus also rejected.

The court dismissed the unfair competition claims too.

Comment

For this Kat, the main conclusion of this case is that both design and copyright laws are still partially unharmonised in the EU (this, despite the CJEU’s best efforts).

One example is how differently the national courts approach design functionality, even post-Doceram. This might explain the forum shopping of the plaintiff who, in the case of Plana, should have seized the Slovenian courts.

Even more surprising is the judge’s view on the interdependence between “individual character” in design law and “originality” in copyright law. As reminded by Advocate General Szpunar in Cofemel, the two areas of law are autonomous and the protection of works of applied art by copyright does not depend on design rights.

This Kat is curious to see whether this ruling is appealed and, if so, whether it brings us a request to the CJEU for a preliminary ruling.