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In his opinion on the Brompton case (case C-833/18 – SI, Brompton Bicycle Ltd. v Chedech/Get2Get), Advocate General Campos Sánchez-Bordona found that works with a form that is necessary to perform a technical function are not covered by copyright protection.
The dispute arose around a folding bicycle created by Mr. SI in 1975, christened the “Brompton”, and that Brompton Ltd. began selling in 1987. That company held a patent on the bicycle’s folding mechanism that entered the public domain at the end of its protection period. That was when the Korean company GET2GET began to sell a bicycle model with a folding system that was extremely similar to that of the Brompton.
Mr. SI and Brompton Ltd. sued GET2GET for copyright infringement. In its response, the respondent argued that the design of its bicycle was imposed by the desired technical solution.
In this context, the jurisdictional body requested a preliminary ruling on whether EU law should be interpreted as excluding works from copyright protection if their shape is necessary to perform a technical function, and in particular if the following factors need to be addressed to hold that this need exists: (i) the existence of an expired patent on the mechanism for performing the technical function, (ii) the possibility of performing the same technical function in other ways, (iii) the alleged infringer’s intention to perform the technical function, and (iv) the shape’s effectiveness in obtaining the function.
The advocate general began by noting that works of applied art with shapes that are exclusively dictated by their technical function as a decisive factor cannot be protected by copyright. He thus concluded that when the functional elements of a work of applied art take precedence over its artistic elements, making the latter irrelevant, a copyright cannot be applied because: (i) the design would be dictated by technical reasons, and therefore, (ii) there would be no space for the creative freedom required for all products.
The advocate general then assessed the impact of each of the four factors above in determining whether a certain shape is necessary to perform a technical function:
- With regard to the existence of an earlier patent on the folding system in dispute, he noted that even though it does not entail the prevalence of industrial property rights, it does constitute proof indicating that the patented shape and the proposed functions are related. He added that the description of the patented item and of its functionality may be highly illustrative for determining whether the technical function is a decisive factor for the patent’s design.
- With regard to the possibility of performing the same function with other forms, the advocate general believes that the existence of alternative solutions is irrelevant (and he thus referred to the analysis by Advocate General Saugmandsgaard Øe in the Doceram case). He began by applying the causality theory, whereby the intended technical function must be proven to be the only factor determining the form of the creation. He then referred to the “multiplicity of forms theory” to stress that, if the previous factor has been proven, then the existence of alternative designs to perform the technical function will be “an additional assessment criterion.”
- With regard to the alleged infringer’s intention to achieve a technical function, the advocate general believes that someone who uses a patent that has come into the public domain would logically do so to perform the function it offers. He also showed that the intention that needs to be studied is not that of the alleged infringer, but rather that of the inventor or designer when conceiving the work. If the inventor or designer had no creative intent, then any aesthetic assessments of the industrial product would merely be tributes to an industrial product.
- With regard to the effectiveness of the shape in achieving a technical result, the advocate general believes that it may be assumed. If the shape of the inventor’s product was not suitable for attaining the desired functionality, then the requirement of industrial application would not have been met.
The advocate general thus reached three clear conclusions: (i) works of applied art with forms determined exclusively by their technical function cannot be protected by copyright; (ii) to determine whether a product’s appearance is dictated exclusively by its function, it is necessary to assess as many objective factors as are relevant in each case; and (iii) if that assessment concludes that the product’s form is predicated exclusively on its technical function, then it is irrelevant whether the design can be attained using other alternatives.
Authors: Álvaro Bourkaib and Paula Conde
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