Opinion of Advocate General Campos Sánchez-Bordona delivered on 6 February 2020.

• Jurisdiction: European Union
• Date: 06 February 2020
• Court: Court of Justice (European Union)

Provisional text

OPINION OF ADVOCATE GENERAL

M. CAMPOS SÁNCHEZ-BORDONA

delivered on 6 February 2020(1)

Case C‑833/18

SI,

Brompton Bicycle Ltd.

v

Chedech / Get2Get

(Request for a preliminary ruling from the Tribunal de l’entreprise de Liège (Companies Court, Liège, Belgium))

(Reference for a preliminary ruling — Intellectual and industrial property — Patent law — Designs — Regulation (EC) No 6/2002 — Harmonisation of certain aspects of copyright and related rights — Directive 2001/29/EC — Scope — Cumulation of rights — Utilitarian and functional object — Concept of ‘work’ — Appearance dictated by the technical function of the object — National court’s assessment criteria — Conflicting interests — Proportionality — Folding bicycle)

1. The dispute before the referring court is between the creator of a folding system for bicycles (and the undertaking which manufactures the bicycles) and a Korean company which produces similar bicycles and which the former accuses of infringement of its copyright.

2. The referring court must determine whether a bicycle whose folding system was protected by a patent which has now expired can be classified as a work eligible for copyright protection. In particular, that court seeks to determine whether such protection is precluded where the shape of the object ‘is necessary to achieve a technical result’ and what criteria it must use when conducting that assessment.

3. Although the reference for a preliminary ruling is concerned with the European Union provisions on copyright, it has a bearing on a matter (the compatibility of typical copyright protection with the protection derived from industrial property) on which the Court of Justice has recently ruled. (2)

I. Legal framework

A. International law

1. Berne Convention (3)

4. In accordance with Article 2(1) and (7):

‘(1) The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as … works of applied art …

…

(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic work.’

2. TRIPS Agreement

5. Under Article 7:

‘The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations’.

6. In accordance with Article 26:

‘1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

…’

7. Article 27 provides:

‘1. … patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. …

…’

8. Article 29 reads:

‘1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date …

…’

B. EU law

1. Directive 2001/29/EC (4)

9. Recital 60 states:

‘The protection provided under this Directive should be without prejudice to national or Community legal provisions in other areas, such as industrial property, data protection, conditional access, access to public documents, and the rule of media exploitation chronology, which may affect the protection of copyright or related rights.’

10. Articles 2 to 4 require Member States, inter alia, to ensure that authors have exclusive rights to authorise or prohibit reproduction of their works (Article 2(a)), to authorise or prohibit communication to the public of their works (Article 3(1)) and to authorise or prohibit distribution of their works (Article 4(1)).

11. Article 9 (‘Continued application of other legal provisions’) provides:

‘This Directive shall be without prejudice to provisions concerning in particular patent rights, trade marks, design rights …’

2. Regulation (EC) No 6/2002 (5)

12. Recital 10 is worded as follows:

‘Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. …’

13. Recital 32 reads:

‘In the absence of the complete harmonisation of copyright law, it is important to establish the principle of cumulation of protection under the Community design and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred’.

14. Article 3(a) defines the term ‘design’ as:

‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.

15. Article 8 states:

‘1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

…’

16. Article 96 (‘Relationship to other forms of protection under national law’) provides in paragraph (2):

‘A design protected by a Community design shall also be eligible for protection under the law of copyright of Member States as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State’.

3. Directive 2006/116/EC (6)

17. Article 1(1) (‘Duration of authors’ rights’) provides:

‘The rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public.’

II. Background to the dispute and the questions referred for a preliminary ruling

18. In 1975, Mr SI created a design for a folding bicycle, which he named Brompton.

19. The following year, Mr SI founded Brompton Ltd. for the purpose of marketing his folding bicycle in collaboration with a larger undertaking which would deal with manufacturing and distributing the bicycle. Mr SI did not find any undertakings that were interested and therefore he continued to work alone.

20. In 1981, Mr SI received his first order for 30 Brompton bicycles, which he manufactured with an appearance that was slightly different from the original.

21. After that, Mr SI expanded his company’s activities to increase awareness of his folding bicycle design which, since 1987, has been marketed in the following form:

22. Brompton Ltd. was the holder of a patent for its bicycle’s folding mechanism (the main feature of which is that it has three positions: unfolded, stand-by and folded); that patent later fell into the public domain. (7)

23. Mr SI also asserts that he holds the economic rights arising from the copyright in the appearance of the Brompton bicycle.

24. The Korean company Get2Get, which specialises in the production of sports equipment, produces and markets a bicycle which also folds into three different positions (Chedech) and is similar in appearance to the Brompton bicycle:

25. Brompton Ltd. and Mr SI took the view that Get2Get had infringed their copyright in the Brompton bicycle and, therefore, they brought an action against that company before the referring court, from which they sought, in essence: (a) a ruling that Chedech bicycles, irrespective of the distinctive signs affixed to those bicycles, infringe Brompton Ltd.’s copyright and Mr SI’s non-pecuniary rights in the Brompton bicycle, and (b) an order to cease the activities which breach their copyright and to withdraw the product from the market. (8)

26. Get2Get submitted that the appearance of its bicycle was dictated by the technical solution sought and that it deliberately adopted the folding technique (previously covered by Brompton Ltd.’s patent, which subsequently expired) because that was the most functional method. Get2Get maintains that that technical constraint dictates the appearance of the Chedech bicycle.

27. Brompton Ltd. and Mr SI countered that there are other bicycles on the market which fold into three positions and are different in appearance from their own, from which it follows that they have copyright over their bicycle. The appearance of the bicycle demonstrates the existence of creative choices on their part and, therefore, originality.

28. In those circumstances, the referring court has referred the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must EU law, in particular Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright...