Can a bicycle’s design to be protected by copyright? – the Brompton Bicycle case in the EU

The European Court has ruled in case C‑833/18 Brompton Bicycle Ltd срещу Chedech/Get2Get, which concerns the possibility a bicycle’s design decision to be protected by copyright. The background is as follow:

Brompton, a company incorporated under English law whose founder is SI, markets a folding bicycle, sold in its current form since 1987 (‘the Brompton bicycle’).

The Brompton bicycle, the particular feature of which is that it can have three different positions (a folded position, an unfolded position and a stand-by position enabling the bicycle to stay balanced on the ground), was protected by a patent which has now expired.

For its part, Get2Get markets a bicycle (‘the Chedech bicycle’) which is visually very similar to the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

On 21 November 2017, SI and Brompton brought an action before the Companies Court, Liège, Belgium seeking a ruling that Chedech bicycles infringe Brompton’s copyright and SI’s non-pecuniary rights and, consequently, an order that Get2Get cease its activities which infringe their rights and withdraw the product from all sales outlets.

In its defence, Get2Get contends that the appearance of the Chedech bicycle is dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. In those circumstances, such appearance could be protected only under patent law, not under copyright law.

The applicants in the main proceedings claim that the three positions of the Brompton bicycle can be obtained by shapes other than those given to that bicycle by its creator, which means that its shape may be protected by copyright.

The Companies Court, Liège observes that, under Belgian law, any creation is protected by copyright when it is expressed in a particular shape and is original, which means that a utilitarian object, such as a bicycle, may be protected by copyright. In that regard, although shapes necessary to obtain a technical result are excluded from copyright protection, the fact remains that doubt arises when such a result can be obtained by means of other shapes.

The referring court states that, in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), which was delivered in the field of design law, the Court interpreted Article 8(1) of Regulation No 6/2002 as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

It asks, therefore, whether a similar solution should be adopted in the field of copyright when the appearance of the product in respect of which copyright protection is sought under Directive 2001/29 is necessary in order to achieve a particular technical effect.

In those circumstances, the Companies Court, Liège decided to stay the proceedings and to refer the following questions to the Court of Justice 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 Court’s decision:

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 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.

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