The Court of Justice issued a groundbreaking judgement on the question product design can be protected by copyright.
Protection of product design
The case concerns the protection of the Palais table and a modular furniture system by Haller under copyright law. The Court has previously ruled on the protection of text, photographs and software, uniforming the requirements for protection under copyright law. This time, the case concerns the protection of product design.
Copyright protection
Under the Copyright Act, every “work” by an author is protected. According to the Dutch Copyright Act, copyright is the exclusive right to publish and reproduce a work. The copyright holder can therefore oppose the unauthorised publication, reproduction, adaptation or other reproduction of the work. This form of protection is Europeanly harmonized to a great extent.
When is product design considered a work under copyright law? It is already known from (established) case law of the Court of Justice that is considers free, creative choices that reflect the personality of the creator to be protected under copyright law.
This is essentially a subjective criterion. In this respect, copyright differs from design rights. Under design law, an objective criterion of novelty and individual character for the protection of product design is applied.
Free, creative choices
The question that the Court is now answering is what is meant by free, creative choices. What exactly is the requirement for copyright protection of a “work”? Can factors such as the nature of the work in question (design), technical and functional requirements or other factors also be taken into account? And if the author makes an “adaptation” of an earlier design, is this also protected?
According to the Court's ruling, product design can be protected by both design rights and copyright. These are separate grounds for protection (under 53).
The Court rules that, with regard to protection as a copyrightable work, the originality of works of applied art (which includes product design) must be assessed in the same way as other works (see, inter alia, under 49):
“In order for subject matter to be capable of being regarded as original, it is both necessary and sufficient that it reflects the personality of its author, as an expression of his or her free and creative choices”
and that cumulation of protection under copyright law and design law is possible but “limited to certain situations (…), since an author is deemed to create a unique work bearing the imprint of his or her personality, which, as such, is protected in accordance with Directive 2001/29.”
The question therefore is in how far the object of protection has to be “unique” (see also under 82).
Personality of the author
Specifically ruling on the criteria for protection, according to the judgment, courts must assess whether the object for which protection is sought expresses free and creative choices that reflect the personality of the author.
However, when the realisation of subject matter “has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work”
Objects dictated by technical, ergonomic or safety constraints, or that may result from standards or conventions adopted in the sector concerned, may prevent the author from expressing his personality in the object by making free and creative choices (under 63/64).
According to the Court (under 49): “Where, on the other hand, the manufacture of an object is subject to technical considerations, rules or other constraints which leave no scope for creative freedom, that object cannot be regarded as having the originality required to constitute a work”.
Creative process
With regard to the creative process, the Court ruled that courts in considering whether a work is original ‘must seek out and identify the creative choices in the shape of that subject matter in order to be able to declare it protected by copyright’.
However, the author's intentions lie in the realm of ideas and can therefore only be protected to the extent that the author has expressed them in the work in question. When assessing the originality of an object, the court may take into account the creative process and the author's intention, insofar as these aspects are expressed in the object itself, but it cannot base its assessment decisively on these elements.
Other factors?
According to the Court, other factors may also play a role in addition to circumstances such as the creator's intention during the creative process, namely: the sources of inspiration and the use of shapes that are already available, the likelihood of a similar independent creation, or the recognition of that subject matter in professional circles.
However, these are not in themselves necessary or decisive for assessing the originality of the subject matter for which protection is claimed.
Copyright infringement (in the case of copied product design)
When does copyright infringement occur? Copyright infringement occurs inter alia in the case of a “reproduction”. Such a reproduction may also occur when part of a work is copied.
In order to establish copyright infringement, the referring court must find unauthorised use of at least the original creative elements of the protected work and, to determine whether those elements, “have been reproduced in a recognisable manner in the allegedly infringing subject matter”.
In doing so, the overall impression created is not decisive nor relevant in this regard (under 87 and 92).
The Court also decides that the scope of protection does not depend on the degree of creative freedom of the author.
Furthermore, so-called ‘adaptations’ are also protected under copyright law. In this respect, only the ‘new’ creative elements are original to the derivative work and only the reproduction of those new elements constitutes a possible infringement of copyright.
The burden of proof for pleading an existing similar independent creation seems to rest on the defendant.
All of the above means that, in order to establish a copyright infringement, it is necessary to “determine whether creative elements of the protected work have been reproduced in a recognisable manner in the allegedly infringing subject matter.”
Conclusion
Copyright protection of product design is possible under European copyright law, next to protection under EU design law. For invoking such copyright protection for product design, it is both required and sufficient to determine whether creative elements of the protected work have been reproduced in a recognisable manner in the allegedly infringing subject matter.
