A recent decision of the Court of Justice of the European Union (CJEU) is set to shake up the degree to which product designs are protected by intellectual property rights. The main impacts of this ruling are as follows:
- More product designs may be protected from copying for much longer (as long as seventy years after the death of the author). This could mean that product designs previously thought to be no longer protected are in fact covered by copyright and the owners of those rights could prevent others from copying them. This could be particularly problematic for those operating in areas like reproduction furniture (but beneficial to those holding these rights);
- At the same time, the ruling is helpful because it seeks to harmonise the approach to copyright protection of product design across the whole of the EU. However, as we explain below, this might take some time to play out.
The position on the protection of product designs across the EU has not been uniform. Different EU member states have applied different tests to determine whether copyright protection applies. The case before the CJEU illustrated this. It involved the fashion brands Cofemel (operating under Tiffosi) and G-Star Raw. G-Star Raw alleged that Cofemel was producing jean and t-shirt designs that were the same or similar to G-Star Raw’s in infringement of its Portuguese copyright. In Portugal, for product designs to qualify for copyright protection they have to have artistic merit, which brings in a degree of subjectivity based on the impression the product or design creates on the viewer. Similar additional requirements apply in other EU member states, such as Italy.
The approach in the UK has been that functional designs should find protection under the design law regime, made to encourage investment and innovation by affording the work protection from imitation for long enough to make the investment worthwhile (eg a monopoly right of up to twenty-five years for EU registered designs). In the UK, the bar is set high for functional designs to also qualify for copyright protection – they must fall within the category of “works of artistic craftsmanship” or “sculptures”, requiring a degree of artistic quality or intent. Historically, this category was developed to provide protection for works produced under the influence of the Arts and Crafts movement – think good-looking, well-made objects that could be used in everyday life. Over the years, the UK courts have confirmed that functional works such as hand-knitted woollen sweaters, pottery and dinnerware fall under this heading. In contrast, they have held that items such as a dress, mass produced garment samples, a corkscrew and, most famously in a UK Supreme Court ruling, Star Wars Stormtrooper helmets do not qualify for copyright protection.
In Cofemel (building on earlier CJEU decisions) the CJEU made very clear that EU member states should no longer prevent copyright from applying to functional designs based purely on a lack of aesthetic appeal or artistic skill, deeming this to be too subjective. Instead, the issue should be determined by a common EU-wide objective test of whether the work is “original”. By this the CJEU means whether the functional design is original in the sense that it “reflects the personality of its author” and “demonstrates the author’s own free and creative choices”, rather than necessarily being dictated by the function that the product is designed to perform. This latter point illustrates that, at the same time as potentially liberalising the test for copyright protection, the CJEU is asking the EU member states’ courts to be cautious about not applying the lengthy period of copyright protection in a way which might prove anti-competitive and unduly hinder the creation of new designs which build upon and copy existing ones. We wait to see how that will be interpreted by EU member states’ courts, but there are now likely to be a series of test cases where prior case law cannot be assumed to apply. We are therefore entering a period of some uncertainty around the protection of functional designs whilst this plays out.
Of course, in the UK we also have to consider the impact of Brexit. This may affect the application of the CJEU’s ruling and allow the UK to diverge from it to some extent over time. However, the Cofemel ruling will still affect those UK businesses (and others) which trade into the rest of the EU.
One practical implication is to ensure you keep older product design drawings and other materials evidencing the creation of your designs. You cannot now assume that those products are free of questions of very extensive periods of copyright protection.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Farrer & Co LLP, October 2019