A recent ruling by the Court of Justice of the European Union (CJEU) found that designer clothing business G-Star is not entitled to copyright protection for its ‘ARC’ and ‘ROWDY’ clothing designs.

Image credits: www.sgcr.pt and www.aippi.org

The dispute

G-Star and Cofemel are both active in the field of design, production and merchandising of clothing. On 30 August 2013, G-Star applied to the Portuguese court, accusing Cofemel of having infringed its ‘ARC’ jeans designs and ‘ROWDY’ sweatshirt and T-shirt designs (hereafter: the clothing designs). G-Star stated that the aforementioned designs constitute original intellectual creations and therefore should be treated as copyrighted ‘works’. G-Star also relied on Article 2 of the Portuguese Copyright Act which enables copyright protection for designs which constitute artistic creation. In its defence, Cofemel plead that these clothing designs cannot be considered as ‘works’.

The Portuguese court agreed with G-Star on the first instance. However, the Portuguese Supreme Court then referred the case to the CJEU for a preliminary ruling.

Preliminary ruling

The CJEU’s prime consideration was that not all categories of intellectual property rights should enjoy the same protection. The EU legislator distinguished the protection of copyrighted works into the Copyright Directive, and the protection of designs in the Community Design Regulation and the Designs Directive. In the latter regulations it is explicitly stated that a design – protected by design rights – can also be protected by copyright.

Under EU law, each Member State may determine the extent and conditions of such (copyright) protection itself, including the required level of originality. Portugal, as a member of the European Union, has implemented the aforementioned regulations in its national legislation, as, for example, in Article 2 of its national Copyright Act. However, Portuguese law does not indicate the level of originality required to qualify certain designs as works.

On account of the above-mentioned, the core question of the preliminary ruling was, whether national legislation may define its own requirements of copyright protection of designs, since according to the interpretation of the Copyright Directive by the CJEU, copyright protection is solely reserved for works which conform to European harmonised standards.

Harmonised standards

Article 2 (a) of the Copyright Directive obligates Member States to provide authors the exclusive right to authorise or prohibit the reproduction of their work. Whether an author can enforce this right depends on whether its work meets the requirements of a ‘work’ as described in the Copyright Directive and its interpretation in case law. Therefore, designs should meet the same requirements before they can enjoy copyright protection.

Based on previous case law, a design could enjoy copyright protection if it is an intellectual creation, based on free and creative choices by the maker and when it can be identified with precision and objectivity.

Purpose of protection

In its judgment the CJEU ruled that granting copyright protection to a design-protected object cannot result in damaging the purpose and effectiveness of these two forms of protection.

Design protection aims to protect objects that are not only new and individualised, but also have a utilitarian (serving for general use) character and are intended to be produced on a large scale. The Advocate General added, in his opinion, that they may also have certain original aesthetic features that deserve protection. The duration of a design right is limited, because it is based on the period necessary to render the investments needed for the creation and manufacture, without impending the competition excessively.

The duration of protection of copyright, on the other hand, is considerably longer. Which is why it is solely reserved for objects that deserve to be classified as work which conform to the uniform interpretation (as discussed earlier in this article). A copyrighted design could lead to an excessive duration of protection, resulting in legal uncertainty. Competitors would not be able to foresee whether a design right is expired or whether it is also protected by copyright.

In view of the above, the CJEU argues that copyright protection of designs can only be considered in certain situations.

Aesthetic effect

Article 2 of the Portuguese Copyright Act enables copyright protection for designs which constitute artistic creation. In its judgement the CJEU stated that an artistic creation leads to an aesthetic effect.

The usual meaning of the concept of aesthetics is that the aesthetic effect is the result of an intrinsic subjective sensation of beauty. Therefore, the CJEU considers that this subjective effect makes it impossible in itself to conclude that there is a precise and objective identifiable object. In that respect, the fact that a design generates an aesthetic effect automatically makes it impossible to determine whether the design is an intellectual creation that reflects the freedom of choice and the personality of its author. According to the CJEU, the requisite originality a design needs to be copyrighted is therefore not fulfilled.

Requirements not met

The CJEU ruled that copyright protection can only be considered in certain situations and is solely reserved for objects that deserve to be considered as works. Besides that, the protection may not result in unfair competition. This means a design could enjoy copyright protection: as it is an own intellectual creation based on free and creative choices by the maker, when it can be identified with precision and objectivity and when the purpose of protection justifies the extended duration. The CJEU also added that, if a national law requires some sort of ‘aesthetic’ value for a design to be eligible for copyright protection, this would contradict the requirement of objectivity as mandated under EU law.

It must therefore be concluded, on the basis of all of the foregoing considerations, that national legislation may not define its own requirements of copyright protection of designs. Copyright protection has harmonised standards, therefore no other (national) requirements are needed.

In this case the CJEU ruled that the clothing designs of G-Star do not meet the requirements and therefore cannot be classified as copyrighted works.