Recently, the Dutch Supreme Court has thoroughly examined the copyright protection of consumer items, i.e. objects of craftmanship. In two judgments regarding Stokke’s well-known high chair “that grows with the child”, the existing infringement tests have been re-evaluated and affirmed. Fortunately, there is still a lot to contemplate, because it remains a complicated matter. These judgments provide us with a fine opportunity to elaborate once again on copyright-protection of consumer items.
Where consumer items are concerned it always comes down to the same issue: manufacturer A thinks that the product of manufacturer B is too similar to a product previously produced by A. The crux is how the court must subsequently test this problem objectively. Of course, the court cannot limit itself to merely establishing that they do look very similar.
The Copyright Protection Criterion (Question 1)
To start, the court must assess what exactly is protected. Decades ago, the Supreme Court formulated the copyright protection criterion: does the work have ‘its own original character’ and does the work bear the ‘personal stamp of the maker’? The Court of Justice of the European Union formulated this differently and argued that a copyright-protected work must be the ‘author’s own intellectual creation’. As yet, the Supreme Court conservatively has stuck to its old formula. Through other judgments on petrochemical schemes and perfume formulas we know that elements which only serve a technical effect can never have an ‘original character’ or a ‘personal stamp’ (the problem mainly being the ‘personal stamp’). This does not mean, however, that technical elements remain unprotected altogether. The question is whether there is room for ‘creative choices’ in such technical elements. This is, of course, not always easy to determine. And to make things more complicated: a combination of unprotected elements (which may, for instance, serve a technical effect) may actually be protected, provided that this combination as such has an ‘original character’ and bears the ‘personal stamp’. Naturally, this does not apply if the combination only serves a technical effect. In the end, a consumer item may consist of a whole range of elements, some of which might be protected and some of which might not.
The Infringement Test (question 2)
As a second step the court must assess whether the protected elements of the work have been infringed, which can be a difficult thing to accomplish. According to the Supreme Court, we must compare the overall impressions of both items and subsequently ask ourselves whether these impressions are similar. The problem is that the consumer items cannot just be placed next to one another, because it is very well possible that certain elements are not protected at all (bearing in mind the protection criterion discussed above).
In practice, the answer to both questions offers considerable room for discussion. This also occurs in the proceedings which were instituted by the Norwegian high chair manufacturer Stokke. Stokke is of the opinion that, inter alia, the chairs depicted below (Bambino, Thomas and Carlo) are infringing its well-known Tripp Trapp Chair.
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For the record: The Bambino and the Thomas chair were the subject of the judgment of the Supreme Court of 12 April. The Carlo chair was under fire in the judgment of 22 February. To a certain degree both judgments were about the extent to which characteristic elements of the Tripp Trapp chair (the Stokke design) serve a technical effect and in which manner ‘that-what-is-protected’ must be compared to the alleged infringing chair. The Supreme Court deemed a concrete assessment of these factual points to be something the Court in first instance (and possibly the Court of Appeal) should do. In these cases it was ruled in previous instances that the Bambino was infringing, but the Thomas and the Carlo were not. The Court of Appeal of Amsterdam (in the Carlo case) and the Court of Appeal of The Hague (in the Bambino/Thomas case) came to this conclusion by limiting the scope of protection of the Tripp Trapp chair to the tight sloping/inclined L-shaped structure. The other elements were found to be dictated, for instance, by ergonomics, safety and firmness and therefore only serve a technical effect.
Stokke did not agree and appealed to the Supreme Court. In short, Stokke was of the opinion that in the disputed judgments too little creative choices were found in the design and that in the comparison of the overall impressions (see step 2 above) only the inclined L-shaped structure was mistakenly focused on.
The Supreme Court
The Supreme Court thought it all rather clear and concluded, after summarizing twenty years of case law in this field, that elements with only a technical effect, thus without creative choices, are not protected. These elements cannot be brought within the scope of protection either under the guise of the comparison of overall impressions:
“The fact that when determining the overall impression of a consumer item, the non-copyright-protected features cannot be thought away does not make this any different. However, apart from the above-mentioned case of an original combination, they should not play a role in the similarity question.”
The Supreme Court repeated that a combination of unprotected technical elements is only protected if the combination as such has an original character and bears the personal stamp of the author. A clear judgment; in both cases the Courts of Appeal ruled correctly by only comparing the overall impressions on the basis of the inclined L shaped structure. In practice, this test will probably still lead to many questions: when is an element actually only aimed at obtaining a technical effect, therefore being without any creative choices, and when does a combination of technical elements itself meet the copyright protection criterion?
Incidentally, both judgments also contain interesting bonus material. The Supreme Court literally concluded that there was no reason to assume that the old ‘original character’- and ‘personal stamp’ – criterion would not meet the European standard (‘own intellectual creation’) as regards consumer items. This seems to imply that the Supreme Court wants to hold on to the old formulation. In addition, the Supreme Court rejected the so-called ‘dilution of copyrights’. In one of the judgments the alleged infringer argued, briefly put, that the chairs of Stokke had been imitated so much that now a style had been developed that could not be monopolized any further. In the infringer’s theory, this could happen if a copyright holder does not take sufficient action against third parties who also use the design, as a result of which the design has become, as it were, common property. Notwithstanding the fact that Stokke is known for the active enforcement of its rights, the Supreme Court deemed that copyright law does not offer room for this.
Supreme Court 12 April 2013, LJN BY1532 (Stokke/Fikszo) and Supreme Court 22 February 2013 , LJN BY1529 (Stokke/H3)