Designs and copyright: judgment of the CJEU

On September 12, 2019, the Court of Justice of the European Union (CJEU) rendered its judgment in response to a reference for a preliminary ruling by the Portuguese Supreme Court regarding copyright protection for clothing designs that generate a specific and aesthetically significant visual effect.

This question arises in the context of a dispute between Cofemel and Sociedades de Vestuario S.A. (“Cofemel”) and G-Star Raw CV (“G-Star”), both active in the sector of design, production and selling of clothing. G-Star accused Cofemel of infringing its copyright on its design by marketing jeans, sweatshirts and t-shirts. G-Star claimed that the clothing constituted original creations that should be classified as works entitled to copyright protection.

In this context, the referring court asks, in essence, about the level of originality required for designs to obtain copyright protection—and in particular whether their specific and aesthetically significant visual effect is a fundamental criterion for granting copyright protection.

In that regard, the CJEU recalls that the protection of designs and copyright protection pursue fundamentally different objectives and are subject to distinct rules. While the purpose of design protection is to protect subject matter which, while being new and distinctive, is functional, the protection attached to copyright is reserved to subject matter that can be classified as works. As stated by the Advocate General in his Opinion (not yet available in English), the concept of “overall impression” specific to designs is not part of copyright (point 62 of the Opinion). Therefore, although both protection regimes be granted cumulatively to the same subject matter, that can be envisaged only in certain situations.

To determine whether the clothing at issue constitute a work entitled to copyright protection, these designs must meet the requirements to be classified as works: (i) the existence of originality; (ii) the distinction between the form of expression and mere ideas.

With respect to the originality requirement, the CJEU points out that it is both necessary and sufficient that the subject matter reflects the personality of its author as an expression of his/her free and creative choices (Renckhoff, C-161/17). However, when the realization of a subject matter is 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” (Football Dataco, C-604/10).

As regards the second condition, the CJEU establishes that the concept of work necessarily entails the existence of a subject matter that is identifiable with sufficient precision and objectivity (para. 32). This is not attained where an identification is essentially based on the sensations—intrinsically subjective—of an individual who perceives the subject matter at issue (see judgment in Levola Hengelo, C-310/17, refusing copyright protection to the taste of a cheese).

According to the CJEU, the aesthetically significant effect generated by a design is a “subjective” sensation, and therefore does not permit a subject matter to be characterized as existing with sufficient precision and objectivity. Nor does it allow to determine whether this design constitutes an original creation reflecting the freedom of choice and personality of its author.

In conclusion, designs cannot be classifed as “works” solely based on their “specific and aesthetically significant visual effect,” but they must meet the requirements applicable to all works, i.e., originality and protection of its form of expression.

By Marta Zaballos