The Court of Justice of the European Union (‘CJEU’) has ruled that copyright may subsist in a product whose shape is necessary to obtain a technical result, provided that shape is an original expression of the author’s creative ability and personality.
Although its patent protection had long expired, Brompton Bicycle claimed that it owns the copyright in the design of its folding Brompton bicycle and that Korean company Get2Get infringed that copyright in producing its own folding bike.
Get2Get argued that the Brompton bicycle’s appearance could not be protected by copyright, as it is designed in such a way which is necessary to obtain the technical result of the three position folding mechanism.
Brompton argued that there were other bicycles on the market that adopted the folding mechanism while maintaining a different appearance to that of the Brompton bicycle. This demonstrated that Brompton had a creative choice in designing its bicycle.
In a non-binding opinion issued in the case, an advocate general to the CJEU expressed the view that copyright does not apply to designs where the shape of those designs is “exclusively dictated” by their technical function and therefore could not be protected by copyright. However, Brompton did not fold and continued with the case.
The CJEU considered the question of whether copyright protection applies to technical product design relating to the Brompton folding bicycle.
The court accepted that a product cannot be protected by copyright “where the shape of the product is solely dictated by its technical function”. It also accepted that the shape of the Brompton bicycle “appears necessary to obtain a certain technical result”.
However, the CJEU found that the Brompton Bicycle is an original work through which its author, Andrew Ritchie, had expressed his creative ability in an original manner by making free and creative choices in such a way that the bicycle’s shape reflects his personality.
Therefore, the CJEU concluded that copyright may subsist in a product whose shape is necessary to obtain a technical result, provided the shape is an original expression of the author’s creative ability and personality.
This is a welcome decision for all creative and product design businesses as it confirms that you may be able to protect your product from copying, despite your product’s shape being necessary to obtain a technical result. However, you must be able to show that the shape of your product design is also an original work. As a result, if your patented product has expired, in addition to any registered designs you may be able to rely on copyright protection.
A full copy of the judgment can be found here.
Tidman Legal is a firm of specialist intellectual property lawyers based in Edinburgh. We advise clients on all IP rights.