Colin Russell

In a case concerning the Brompton folding bicycle, a Belgian court sought a preliminary ruling from the European Court of Justice (ECJ) on whether the shape of a product, when it is necessary for a technical result, could attract copyright protection.

The Belgian court also asked the ECJ to consider if it should take account of all or any of the four criteria listed in its referral when assessing whether a shape is necessary to achieve a technical result.

Copyright Protection for the Shape of a Product

The ECJ ruled that Directive 2001/29/EC (Copyright Directive) must be interpreted to mean that copyright protection may apply to a product’s shape that is, at least in part, necessary to obtain a technical result, where the product is an original work resulting from intellectual creation.

Keeping in line with its decision in the Cofemel case (C-687/17), the ECJ held that for a product to meet the originality requirement, it is both necessary and sufficient that the author must express their creative ability in an original manner, by making free and creative choices in such a way that the shape reflects their personality.

If the realisation of the product was merely dictated by technical considerations, rules or constraints, which left no room for creative freedom, then the product cannot be regarded as original and copyright protection does not apply.

National Court Discretion

The ECJ confirmed that it is a matter for the national court to decide, on the evidence, whether the author was able to express their personality by making free and creative choices, as well as if, in fact, they did so at the time the subject matter was designed, irrespective of factors that were external and subsequent to its creation.

Other Criteria for Consideration

The Belgian court asked the ECJ to indicate if it should consider four specific criteria to assess whether a shape is necessary to achieve a technical result. In response, the ECJ noted:

• the existence of other possible shapes which allow the same technical result to be achieved is not a decisive factor.
• the existence of an earlier patent should only be considered as a factor to help reveal what was taken into consideration in choosing the shape of the product concerned.
• the effectiveness of the shape should only be considered as a factor to help reveal what was taken into consideration in choosing the shape of the product concerned.
• the intention of the alleged infringer or the original author is not relevant.

Key points from the case

Although this case is not ground-breaking, it is important for several reasons:

• it provides welcome clarification for national judges on the considerations to be taken into account when assessing whether a product’s shape, which was necessary to obtain a certain technical result, allowed for sufficient creative freedom and is therefore eligible for copyright protection.
• the ECJ clarified (in rejecting the opinion of the advocate general) that the designer’s intention is irrelevant in making this assessment.
• Although the ECJ’s ruling in principle is to be welcomed, it is worth noting that unless national courts exercise due caution in applying the ECJ’s guidance on the Copyright Directive one of the unintended consequence could be that everyday products might not only benefit from multiple forms of IP protection they could also be granted automatic and long term protection under copyright law.

• Colin Russell is a trainee solicitor at William Fry.