Can bicycle functional shapes be protected with copyright?

pexels-photo-686230The Advocate General of the European Court Campos Sánchez-Bordona has given his opinion in Case C‑833/18 SI, Brompton Bicycle Ltd. v Chedech / Get2Get. This case concerns the following:

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

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.

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.

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:

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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)

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

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:

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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)

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.

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.

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 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 Advocate’s opinion:

‘(1) Articles 2 to 5 of 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 do not provide for copyright protection of creations of products with an industrial application whose shape is exclusively dictated by their technical function.

(2) In order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.

(3) Where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.’