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22 June 2020CopyrightPenelope Thornton and Alastair Shaw

Brompton: is it bad news for the UK?

The Court of Justice of the EU (CJEU) handed down its highly-anticipated judgment in Brompton Bicycle v Get2Get on June 11, 2020, confirming that a partly functional shape is protectable by copyright. The decision adds to a line of CJEU case law harmonising the concept of “work” under EU copyright law, and raises questions about whether current UK copyright law on the protection for functional designs is compatible.

Reference to the CJEU

UK company Brompton Bicycle is the maker of a well-known folding bicycle, the Brompton, which folds into three different positions. The company sued Get2Get, the maker of a very similar folding bicycle, in Belgium for infringement of copyright in the design for the bike.

Get2Get argued that the appearance of the bicycle is dictated by the technical system that allows it to fold into the three positions. Brompton responded with the fact that there are other bicycles on the market which fold into three positions but have a different appearance.

The Companies Court of Liège referred questions to the CJEU on whether copyright protects works where the shape of the product “is necessary to achieve a technical result”, and also the criteria to use when assessing whether a shape is necessary to achieve a technical result.

The decision

In its decision, the CJEU said that a product is protectable by copyright even if the shape is, at least in part, necessary to obtain a technical result. This is as long as the work is original, meaning that, through that shape, the author has expressed their creative ability by making free and creative choices, in such a way that the shape reflects their personality.

On the other hand, as the CJEU already established in the September 2019 Cofemel v G-Star Raw decision, a product whose shape is solely dictated by its technical function is not protectable. In Cofemel, the CJEU said it will be for the national courts to determine whether a product is an original work which reflects the personality of the author.

It did not give much guidance on how national courts should make this assessment but it did say that, as with the folding bicycles, the fact that there is more than one shape which could achieve the same technical result does not definitively mean that a shape is protectable.

Furthermore, the court said that neither the author’s intention when designing the work, nor the alleged infringer’s intention, is relevant to the assessment.

Harmonisation of the meaning of ‘work’

The Brompton decision is in line with a series of recent cases harmonising the concept of “work” under EU copyright law, including Cofemel and the CJEU’s 2018 decision in Levola Hengolo.

In Cofemel, which related to copyright protection for jeans and T-shirts, the CJEU said the concept of “work” requires two conditions to be met: first, that there “exists an original subject matter, in the sense of being the author’s own intellectual creation”; and second, there is an “expression of such creation”.

“The clarification of a harmonised concept of protectable works under EU copyright law, building on the decision in Cofemel, is problematic for the UK’s current regime.”

It said it is both “necessary and sufficient” that the subject matter reflects the personality of the author, as an expression of their free and creative choices. A work will not satisfy the originality criterion when technical considerations, rules or constraints have left no room for creative freedom. So in Cofemel it was held that an additional requirement—that a work generates an aesthetically significant visual effect—is precluded by EU law.

UK and Brexit

The clarification of a harmonised concept of protectable works under EU copyright law, building on the decision in Cofemel, is problematic for the UK’s current regime of a closed list of works. This system limits protection to works which fall within particular listed categories.

Currently, the only category of work which a 3D functional design, such as a bicycle, could fall into is a “work of artistic craftsmanship”. Since these must also have an artistic quality, many functional (including partly functional) designs have been held by the courts not to be protected by UK copyright, but rather by design rights.

The decisions in Cofemel and now Brompton Bicycle call into question the UK’s approach to copyright protection for functional designs. CJEU decisions are binding on the UK until the end of the Brexit transition period, currently set to be the end of 2020, but the UK will have some flexibility thereafter.

It remains to be seen whether the UK will retain its existing regime, which leaves very little room for copyright protection for designs with a functional aspect, or bring it in line with EU copyright law, where there is arguably more scope to argue for protection for designs with a functional aspect.

Penelope Thornton is a senior knowledge lawyer at Hogan Lovells and can be contacted at:  penelope.thornton@hoganlovells.com

Alastair Shaw is counsel at the Intellectual Property, Media and Technology practice at Hogan Lovells. He can be contacted at:  alastair.shaw@hoganlovells.com

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