Copyright in designs: G-Stars in their Eyes

The CJEU has ruled on the requirements for copyright to vest in designs and applied art.

Background

There has been some tension between national law and EU law as to whether Member States can require a design to constitute a 'work of art' or an 'artistic creation' in order to also benefit from copyright protection.

In the Flos ruling (C-168/09), the CJEU held that Member States cannot exercise their discretion in setting the conditions for designs to additionally be eligible for copyright protection under national law.

Various Member States (including the Italian, Czech and British Government) suggested that this decision ran contrary to Article 17 of the Design Directive and Article 96(2) of the Community Design Regulation, which effectively state that designs shall also be eligible for protection under the law of copyright of Member States, and that the extent of, and conditions for, cumulative protection shall be determined by each Member State. 

The Member States in question have incorporated into their national law the requirement for a design to have a higher level of artistic quality (e.g. creating a distinct and noticeable visual/aesthetic effect extending beyond the utilitarian purpose of the design) over and above the relatively low level of 'originality' required for a 'work' to attract copyright protection under EU law.

Decision of the CJEU

In the Cofemel case, the Claimant (G-Star Raw) alleged that the defendant (Cofemel) had created clothing which imitated the Claimant's products, namely its "Rowdy" t-shirts and sweat shirts, and its "Rotor" jeans, and that such products ought to be considered to be protected by copyright.

Portuguese law, however, only conferred copyright protection on works of applied art, industrial design and works of design if, upon an analysis of their artistic character and the dominant trends in "cultural and institutional circles", they qualified as an "artistic creation" or a "work of art".

The Portuguese Court of Appeal referred the question of compliance with EU law to the CJEU.

The CJEU held, on 12 September 2019, following the Opinion of AG Szpunar, that the concept of a 'work' must be applied uniformly across Member States, and so the only requirement for designs to enjoy copyright protection is their originality, without any higher test being required by Member States.

There is no conflict with Article 96(2) of the Community Design Regulation, as this provision was only relevant pending harmonisation of the position across all Member States (which the CJEU suggests was the effect of the InfoSoc Directive having been transposed into national law by December 2002).

The CJEU also noted, however, that while the aesthetic effect of a design could not constitute a factor relevant to the determination of whether it constitutes a 'work' (being a subjective criterion), there must have been room for intellectual creation which was not merely dictated by technical considerations. 

Conclusion

It seems that, following this decision, it will be easier for designs to benefit from wider protection (given the longer duration of copyright protection). 

In the UK, there is now a question mark over the compatibility of section 51(1) of the CDPA 1988, which excludes copyright protection for works that record designs for anything apart from artistic works or typefaces, with EU law (subject, of course, to Brexit).

CJEU Judgment in Case C-683/17 Cofemel - Sociedade de Vestuário, SA v G-Star Raw CV (ECLI:EU:C:2019:721)