Can functional shapes be protected under copyright?
By Antonella Balbo.
Copyright law is essential for protecting creative works such as literary, artistic, and musical works. However, is copyright an option to protect functional shapes, when they can no longer be protected under industrial property law?
When an invention complies with the requirements of novelty, inventive step, and industrial applicability, providing a new way of doing something or offering a new technical solution to a problem, it can be protected as a patent. This grants exclusive rights over the invention to the holder of the patent for a period of 20 years. However, intellectual property law allows the protection of functional shapes applied to trade or industry, under copyright law. So, while industrial law requires absolute and worldwide novelty to grant patents, copyright requires originality.
That said, can functional shapes that offer a technical solution be protected under copyright for being original?
Let’s think about the Brompton[1] case, a case recently analyzed by the Court of Justice of the European Union (CJUE). Brompton Bicycle Ltd. is a UK-based company that produces folding bicycles and was the holder of a patent (EP0026800) for their bicycle’s folding mechanism, which’s main feature is its three positions: unfolded, stand-by and folded. After the protection period, this patent fell into the public domain in 2017. Following its expiry, a Korean rival company (Get2Get) started producing and selling similar-looking folding bicycles in Belgium and named them “Chedech”, which led to Brompton suing Get2Get for copyright infringement.
Brompton claimed that the design of their folding bicycle was protected under copyright law.
Argued that there are other bicycles on the market which fold into three positions and are different in appearance from their own. Additionally, they invoked the non-pecuniary rights to the bicycle due to the 1975 design for the folding bicycle, which gave it the Brompton name. According to the plaintiff, the appearance of the bicycle demonstrates the existence of creative choices on their parts and, therefore, originality.
Get2Get countered that the appearance of their bike was dictated by its technical solution and that it deliberately adopted the folding technique because that was the most functional method. And for that reason, it can only be protected under patent law and not under copyright. They further argued that, since the patent had expired, the characteristics of the bicycle would be part of the State of the art.
A functional shape may be original and creative, as may be any other work that can be protected under copyright. However, it is necessary to consider the concept of separability, which states that if a shape has functional and non-functional elements, the latter may be protected under copyright, but when the object has a technical function only, it may not be protected under the sphere of intellectual property.
It may be argued that granting copyright protection to technical solution shapes may go against the public interest, as it would limit competition and innovation. It is an undiscussed fact that granting exclusive rights to the holder of a patent is aimed at striking a balance between public and private interests. Inventors are rewarded by the fact that they alone derive an economic benefit from their inventions, for a specific period of time, which stimulates competition in the field of technology. And the public interest is offset by the fact that that creation becomes widely known upon the expiry of the patent.
Considering the above, going back to the Brompton case, the High Court in Belgium ruled that the shape of the folding bicycle was primarily functional. Therefore, it was not eligible for copyright protection. Notwithstanding the fact that Brompton appealed the decision, the Court of Justice of the European Union (CJEU) issued a judgment stating that copyright protection cannot be granted to functional shapes if the shape is solely dictated by function, even if creative and original.
Thus, after exposing the two positions that sustain the debate, the CJEU referred the case to the competent judicial Courts to render a final decision on whether originality and creativity are present in the controversial bicycle. Overall, the going discussion is far from being over. Anyhow, this ruling is seen as an important clarification of the scope of copyright protection and could have implications for future cases.
For further information please contact: abalbo@ojambf.com
[1] Case C‑833/18, SI, Brompton Bicycle Ltd. v. Chedech / Get2Get
