In its decision of September 12, 2019, the Court following the earlier opinion of Advocate General Szpunar ruled that copyright protection may be applicable to designs when the sole originality requirement is fulfilled, without taking into account any additional criteria.
Concerning the facts, the dispute involves the companies Cofemel and G-Star, both active in the sector of design, production and sale of clothing. G-Star accused Cofemel of producing and selling jeans, sweatshirts and t-shirts copying some of its own designs.
The intellectual property protection ensured by EU law benefits works whose authors are granted, under the copyright directive, the exclusive right to authorise or to prohibit reproduction, communication to the public and distribution. Other legislative texts ensure a specific protection framework for designs. The Union legislator has in fact opted for a system whereby design protection and copyright protection are not exclusive of each other, as permitted by the Berne Convention.
The Portuguese jurisdictions seized with the case have submitted a preliminary ruling to Luxembourg, having doubts concerning the interpretation and the scope of the Portuguese Code on Copyright and Related Rights, which includes designs in the list of works which may qualify for copyright protection, but without explicitly clarifying what conditions must be satisfied with if a particular subject matter, serving a practical purpose, is in fact to qualify with such protection.
In its reply, the Court ruled that the only requirement for copyright protection to be applicable at designs is: the condition of originality. In other words, a design can be considered as a « work » if it fulfils the general requirements for copyright protection.
The concept of « work » constitutes an autonomous concept of Union law which must be interpreted and applied uniformly and which requires the combination of two cumulative elements. Firstly, an original object, an intellectual creation specific to its author. Secondly, an element that is the expression of such a creation (see established case-law ECJ, 16 July 2009, Infopaq International, C-5/08 and CJEU, 13 November 2018, Levola Hengelo, C-310/17).
For an object to be granted as original, it is both necessary and sufficient for it to reflect the personality of its author, by demonstrating the latter’s free and creative choices (see established case-law ECJ, 1 December 2011, Painer, C-145/10 and CJUE, 7 August 2018, Renckhoff, C-161/17). A contrario, cannot be considered as a “work” the creation of an object that has only been driven by technical considerations, rules or other constraints, leaving noroom for creative expression to its author (see ECJ, 1 March 2012, Football Dataco and Others, C-604/10).
According to the Levola Hengelo decision, the notion of « work », necessarily implies the existence of an identifiable object with sufficient precision and objectivity. However, does not meet the requirement of precision and objectivity required an identification based essentially on the intrinsically subjective sensations of the person who perceives the object in question.
In the present case, the Court explains that the aesthetic aspect of a design does not constitute a factor that is relevant for the determination of whether that design can be classified as a ‘work’, since such an aesthetic aspect is the result of an intrinsically subjective sensation of beauty experienced by each individual who may look at the design in question.
Consequently, the circumstance that designs produce, over and above their practical purpose, a specific aesthetic aspect, does not, in itself, entail that such designs can be classified as ‘works’.
Raymond BINDELS
Milan DANS