Two bicycle companies, Brompton Bicycle Limited and Get2Get, are in dispute at the Belgian Tribunal de l’entreprise de Liège over Intellectual Property (IP) rights subsisting in the shape of the Brompton foldable bicycle.
Brompton’s bicycle was originally created in 1975 and has been sold in its current form since 1987. The company originally had a patent that covered three key positions of the bicycle:
1. The bicycle in a folded position;
2. The bicycle in an unfolded position; and
3. The bicycle in a stand-by position enabling it to stay balanced on the ground.
However, the patent has now expired.
As Brompton could no longer rely on patent infringement, the company decided to take legal action seeking a ruling that Get2Get’s ‘Chedech’ bicycle had flouted copyright that was subsisting in the shape of its foldable bicycle. This is because, subject to being original, copyright can subsist in shapes of products that are necessary to achieve a technical result.
Get2Get argued, in its defence, that the appearance of the bicycle was dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. Get2Get contended that this fell under the remit of patent protection, not copyright.
A referral was subsequently made to the Court of Justice of the European Union (CJEU) from the Tribunal de l’entreprise de Liège seeking clarification on whether copyright does subsist in a product whose shape is, at least in part, necessary to obtain a technical result.
The questions (paraphrased) were as follows:
1. If works whose shape is necessary to obtain a technical result, does this mean that EU copyright law excludes those works from copyright protection?
2. Should the following criteria be taken into account when assessing whether a shape is necessary to achieve a technical result:
- 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 CJEU held that copyright protection is, in principle, available to products whose shape is at least in part, necessary to obtain a technical result. It clarified this by saying:
“[A] product is an original work resulting from the intellectual creation, in that, through that shape, its author expresses his ability in an original manner by making free and creative choices in such a way that that shape reflects his personality”.
It is clear that for the condition of originality to be fulfilled, the subject matter must not be dictated exclusively by technical considerations, rules or other constraints which leave no room for creative freedom. This follows on from the idea or expression dichotomy; in other words copyright protection does not subsist in ideas, but rather, in the expression of said ideas.
Considering this principle further, the Court ruled that: “A subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices”.
The CJEU rejected the idea that the intention of the author is an aspect to be taken into account in considering whether copyright subsists in a particular work. Had it not, this would have been an unwelcome and unnecessary departure from previous decisions. Furthermore, the existence of other IP rights subsisting in a work – in this case patents – does not necessarily preclude copyright protection.
The next step
The referring court will now have to determine whether the Brompton bicycle is a ‘work’ that attracts copyright protection. In doing so, it will have to assess whether the shape of the bicycle is exclusively dictated by technical considerations, rules or constraints.
This case builds upon previous CJEU decisions and highlights the importance of companies to consider copyright protection in addition to patents, designs and trade marks when it comes to products whose shape may be necessary to obtain a technical result.
Copyright has a much longer term of protection than designs and patents and whilst trade marks are potentially perpetual in nature, it is becoming increasingly difficult to obtain trade mark protection for shapes that may be perceived as consisting exclusively of the shape, or other characteristics, of goods which is necessary to obtain a technical result and so, this is another welcome development for designers and potentially a significant one for manufacturers of globally iconic goods.
Copyright can subsist in shapes of products that are necessary to achieve a technical result.