The existence of an expired patent and the effectiveness of the shape in achieving the same technical result should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.
On 11 June 2020 the Court of Justice ruled on how to assess copyright protection on technical products. The case involves the Brompton bicycle, a rather well known folding bike. It was referred by the Belgian Court of Appeal of Liège to the Court of Justice. The Brompton was formerly protected by a patent that meanwhile expired. Can Brompton still rely on copyright for protection now the patent has expired?
The answer to the question is yes: Brompton may still rely on copyright even if it formerly patented the product, provided however the two conditions for copyright protection are met: first an original subject matter which is the author’s own intellectual creation and secondly the expression of that creation through the subject matter. As regards the first condition of originality, it is necessary but sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices. As regards the second condition, the Court confirmed that copyright entails the existence of a subject matter that is identifiable with sufficient precision and objectivity.
It follows that a subject matter that satisfies these conditions may be eligible for copyright protection even if its realization has been dictated by technical considerations provided the author was not prevented from reflecting his personality in that subject matter, as an expression of free and creative choices. But where the shape of the product is solely dictated by its technical function that product cannot be covered by copyright protection.
In that context, the existence of other possible shapes which can achieve the same technical result makes it only possible to establish that there is a possibility of choice. But it is not decisive in assessing the factors which influenced the choice made by the author. Likewise, the intention of the alleged infringer to achieve the technical result is irrelevant in such an assessment.
It will be for the referring Court of Appeal of Liège to assess whether the folding bicycle at issue is an original creation and is thus protected by copyright. it is true that the shape of the Brompton bicycle appears necessary to obtain a certain technical result, namely that the bicycle may be folded into three positions, one of which allows it to be kept balanced on the ground but in spite of that fact, it is for the court of Appeals of Liège to ascertain whether that bicycle is an original work resulting from intellectual creation.
The Court of Liège is to take into account all the relevant aspects as they existed when the folding bicycle was designed, irrespective of the factors external to and subsequent to the creation of the product. The existence of an expired patent and the effectiveness of the shape in achieving the same technical result should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.
The ruling is in line with a series of former decisions on the interpretation of copyright by the Court of Justice but still offers welcome guidance on the possibility of copyright protection for technical products. It also confirms once again that cumulation of different intellectual property rights (copyright, design, patent and trademark) is possible provided the requirements for each right are met. With a view to cumulation and the longest protection possible, it seems advisable to make the analysis required for each right at the earliest stage possible, even before filing for design and/or patent protection.
30 October 2020