Functionality in Copyright Law : CJEU decision in Brompton Bicycles

Share

In this post, I would like to discuss a recent judgment of the Court of Justice of the European Union (CJEU) in Brompton Bicycle (C-833/18). This judgment is relevant in the context of Section 52(1)(w) of the Copyright Act which provides as follows:

The following acts shall not constitute an infringement of copyright, namely:-

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.”

I request all the readers to go through Prashant’s post before reading this post. The Indian jurisprudence has not yet comprehensively dealt with the functionality facet of Copyright Law. [For those who are interested in reading more about this, they can read this article even though it is authored primarily in the US context.]

                                               CJEU in Brompton Bicycle (C-833/18)

[Image from here] Issue: Whether a ‘work’ (here of a foldable bicycle), whose shape is necessary to achieve a technical result, can be excluded from copyright protection under Articles 2 to 5 of the Directive 2001/29/EC, also known as the Infosoc Directive.[1]

Judgment:

Concept of Copyrightable Work

The concept of a copyrightable ‘work’ entails two factors:

i) an original subject matter which is the author’s own intellectual creation: The first criterion is satisfied if the subject-matter reflects the personality of its author and as an expression of his free and creative choices.[3]

ii) the expression of that creation [2] : The second criterion is satisfied if the subject matter can be identified with sufficient precision and objectivity.[4]

The Relationship between Shape and Technical Result

As regarding the assessment whether a particular shape is necessary to achieve a technical result, the CJEU clarified the following: i) the existence of alternative shapes to achieve the same technical result will not be a deciding factor;[5] ii) the intention of the alleged infringer in achieving that technical result is irrelevant;[6] and iii) for determining the considerations which led to the choice of a particular shape of the product, the following can be considered: a) effectiveness of the shape in achieving that technical result and b) the existence of an expired patent on the same process for achieving the technical result.[7]

Conclusion

Based on these factors, the CJEU concluded that the copyright protection “applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality […].”[8]

As far as the given fact situation is concerned i.e. whether a foldable bicycle is a copyrightable work or not, the CJEU observed that the shape appears necessary to obtain a certain technical result i.e. the folding of the bicycle into three positions and where one position allows it to be kept balanced on the ground.[9] The referring court has to determine whether the bicycle is an original work resulting from intellectual creation.[10] However, the CJEU cautioned that the copyright protection cannot be extended to a work when its shape is dictated solely by its technical functions.[11]

Comments

Going by this judgment, despite the nexus between the shape and the technical result, copyright protection can be extended to that shape provided the shape of the product is an original work resulting from intellectual creation. I had earlier discussed the fundamentals of copyright law (author’s rights system v. copyrights system). As you can see, the reasoning reflects the features of author’s rights system i.e. the author – work relationship.

Secondly, in the context of Section 52(1)(w), how do you assess the reasoning of CJEU? In other words, in the context of Section 52(1)(w), can copyright protection be denied when the shape of a product enjoys even a minimal nexus with the functionality of the product despite it being an original work resulting from intellectual creation? For the benefit of readers, I am reproducing Section 52(1)(w):

The following acts shall not constitute an infringement of copyright, namely:-

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.”

I am of the view that the copyright protection can be denied only when the shape has a purely functional component. The test is whether it can be considered as an original work resulting from intellectual creation and not whether it has a functional component. This can be, however, debated.

[1] Paragraph 19 of Judgment

[2] Paragraph 22 of Judgment

[3] Paragraph 23 of Judgment

[4] Paragraph 25 of Judgment

[5]  Paragraph 35 of Judgment

[6] Paragraph 35 of Judgment

[7] Paragraph 36 of Judgment

[8] Paragraph 38 of Judgment

[9] Paragraph 29 of Judgment

[10] Paragraph 30 of Judgment

[11] Paragraph 33 of Judgment

Leave a Reply

Your email address will not be published. Required fields are marked *