The Court states that works whose shape is necessary to achieve a functional technical result may be protected by copyright to the extent that it is original

Background of the case

A reference for a preliminary ruling has been submitted to the Court of Justice of the European Union in the context of a dispute between, SI and Brompton Bicycle Ltd (‘Brompton’) and Chedech/Get2Get (‘Get2Get’) concerning an action for infringement of copyright brought against the latter.

Brompton has been marketing a folding bicycle since 1987, being the special feature that it can adopt three different provisions, which was initially protected by a patent which has now expired.

The defendant company, Get2Get, markets a very similar bike which as well can adopt the three positions mentioned in the preceding paragraph.

In November 2017, the applicant filed a lawsuit for copyright infringement, requesting Get2Get to cease marketing and withdraw the product. At first instance (the Tribunal de l’enterprise de Liège), and before deciding on the dispute, it raised the following questions for a preliminary ruling 

  1. Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?
  2. In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–        The existence of other possible shapes which allow the same technical result to be achieved?

–        The effectiveness of the shape in achieving that result?

–        The intention of the alleged infringer to achieve that result?

–        The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The decision states that it is true that the shape of the bicycle is necessary to obtain a certain technical result, namely the ability of the bicycle to adopt three positions, one of which enables to remain in balance on the ground.

It is also pointed out that, if the shape of the product is dictated solely by its technical function, it cannot benefit from the protection granted by copyright.

Furthermore, it is stated that the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, it is not decisive in assessing the factors which influenced the choice made by the creator. Likewise, the intention of the alleged infringer is irrelevant in such an assessment.

In order to clarify whether the item is protected by copyright, this Court has stated that the referring body is the competent one to assess whether the creation is original. Consequently, the answer to the questions referred for a preliminary ruling is that Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.

Judgment of the Court (Fifth Chamber) of 11 June 2020, Case C-833/18