Designs capable of classification as ‘works’ as long as they meet the two cumulative conditions for copyright protection

C-683/17

Cofemel v G-Star Raw

Copyrights: Object of protection

12 Sep 2019

the matter at hand

In a dispute between the Dutch company G-Star and the Portuguese clothing company Cofemel, G-Star accused Cofemel of infringing the copyright subsisting in a jeans design known as the ‘ARC’ design and a design for sweatshirts and tee-shirts known as the ‘ROWDY’ design. The action was upheld in the first instance and also partly in appeal, in both instances on the ground that the ARC and ROWDY designs constituted works entitled to copyright protection. In the appeal before the Supremo Tribunal de Justiça (Supreme Court, Portugal), however, that court considered that there was no consensus in Portuguese case-law and legal theory as to whether copyright protection extends to works of applied art, industrial designs and works of design in the same way as to literary and artistic works, and in particular as to whether a prerequisite for the protection of such works is the existence of a specific degree of aesthetic or artistic value. In these circumstances, the court referred questions to the ECJ.

the judgment of the ecj

The ECJ starts by recalling its settled case-law, most notably Infopaq (C-5/08), Painer (C-145/10) and Levola (C-310/17), according to which the concept of ‘work’ in Articles 2(a), 3(1) and 4(1) of the Copyright DirectiveDirective 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 constitutes an autonomous concept of EU law which must be interpreted and applied uniformly, requiring two cumulative conditions to be satisfied, namely first, that there exist an original subject matter, in the sense that the subject matter is the author’s own intellectual creation, and second, that classification as a work is reserved to the elements that are the expression of such creation (paragraph 29). Based on an interpretation of the Designs Directive, the Copyright DirectiveDirective 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 and the Berne Convention, the ECJ rules that the specific protection for designs under the Designs Directive and the protection ensured by the Copyright DirectiveDirective 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 may be granted cumulatively to the same subject matter. Consequently, designs are capable of classification as ‘works’ as long as they meet the two cumulative conditions for copyright protection.

As to the relevance of a ‘specific degree of aesthetic or artistic value’, the ECJ holds that “the aesthetic effect that may be produced by a design is the product of an intrinsically subjective sensation of beauty experienced by each individual who may look at that design”. Such effect, being subjective, does not permit a subject matter to be identified with sufficient precision and objectivity, as required pursuant to Levola (C-310/17), and does not make it possible to determine whether that subject matter constitutes an intellectual creation reflecting the freedom of choice and personality of its author, as required pursuant to Painer (C-145/10) and Renckhoff (C‑161/17).

The ECJ concludes that it follows “that the circumstance that designs such as the clothing designs at issue in the main proceedings generate, over and above their practical purpose, a specific and aesthetically significant visual effect is not such as to justify those designs being classified as ‘works’ within the meaning of Directive 2001/29” (paragraph 55).

commentary

This judgment confirms that works of applied art are subject to the same standard of originality as other types of works. For the Netherlands, this brings nothing new, as this was already generally accepted under national case law, but for jurisdictions like the United Kingdom and Germany, which traditionally apply different standards to the protection of such works, this judgment may entail a real game-changer. Meanwhile, it does seem that the ECJ takes the view that the standard for protection under copyright law is higher than the standard applicable to designs. In paragraph 50, for example, the ECJ notes that “the protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that merits being classified as works” and in paragraph 52, the ECJ continues that “although the protection of designs and the protection associated with copyright may, under EU law, be granted cumulatively to the same subject matter, that concurrent protection can be envisaged only in certain situations.”