In its judgement of 12 September 2019, the European Court of Justice (“ECJ”) ruled that copyright protection may not be granted to designs on the sole ground that they produce a specific aesthetic effect.

The case concerned two companies active in the sector of design, production and sale of clothing: G-Star Raw CV (“G-Star”) and Cofemel - Sociedade de Vestuario SA (“Cofemel”).

G- Star accused Cofemel of producing and selling jeans, sweatshirts and T-shirts copying some of its own designs. It argued that these latter models of clothing constituted original intellectual creations and that they should be qualified as “works” protected by copyright.

Cofemel defended itself by arguing that the said clothing models could not be qualified as "works" benefiting from such protection.

Due to persistent differences of interpretation, the Supremo Tribunal de Justiça (Portuguese Supreme Court) asked the Court of Justice if the Directive on copyright precludes national legislation from conferring copyright protection to models because, beyond their practical purpose, they produce a specific aesthetic effect.

The Court answered that question in the affirmative.

1. What is a “work” under copyright LAW?

Under Article 2(a) of Directive 2001/29, Member States are required to provide for the exclusive right of authors to authorise or prohibit the reproduction of their works.

The concept of "work" is an autonomous concept of EU law which must be interpreted and applied uniformly and which requires the combination of two cumulative elements.

On one hand, this notion implies that there is an original object, in the sense that it is an intellectual creation specific to its author. For an object to be regarded as original, it is both necessary and sufficient for it to reflect the personality of its author, by demonstrating the latter’s free and creative choices.

On the other hand, the qualification of a “work” is reserved for elements that are the expression of such a creation. Where the creation of an object has been determined by technical considerations, rules or other constraints, which have not left room for the exercise of creative freedom, it cannot be regarded as having the originality necessary to constitute a work. Moreover, the ECJ held that the notion of “work” necessarily implies the existence of an object that can be identifiable with sufficient precision and objectivity.

2. Can models qualify as “works” under Directive 2001/29?

If a design can be qualified as an original subject constituting the expression of its author’s own intellectual creation, it can also be classified as a “work” and be protected by copyright.

3. Is the cumulative grant of protection by design and copyright law the norm?

The Court states that the protection of designs and copyright pursue different objectives and are subject to different rules.

Design protects subject matters that are functional and possibly mass-produced. The protection granted by design law is applicable for a limited time, ensuring a return on investment without excessively restricting competition.

Copyright protects subject matter that merits being classified as works. The duration of protection is significantly greater.

The Court held that the grant of protection, under copyright, to a subject matter that is already protected as a design, must not undermine the respective objectives and effectiveness of those two sets of rules. The ECJ held that the cumulative grant of the protection by design and by copyright can only be granted in certain situations.

4. Is the aesthetic effect sufficient to qualify a design as a “work”?

The Court notes that the aesthetic effect that can be produced by a model is the result of the intrinsically subjective sensation of beauty felt by each person who looks at it. Consequently, this subjective effect does not in itself make it possible to characterise the existence of an identifiable object with sufficient precision and objectivity.

As mentioned previously, the notion of “work” necessarily implies the existence of an object that can be identifiable with sufficient precision and objectivity.

Therefore, the fact that a model generates an aesthetic effect does not in itself make it possible to determine whether it constitutes an intellectual creation reflecting the freedom of choice and personality of its author, and thus satisfying the requirement of originality mentioned earlier.

The ECJ held that the fact that models such as the models of clothing at issue generate, beyond their utilitarian purpose, a visual aesthetic effect is not such as to justify classifying such models as 'works' within the meaning of Directive 2001/29.

In conclusion, the ECJ held that Article 2(a) of Directive 2001/29 must be interpreted as precluding national legislation from conferring copyright protection on models such as the clothing models at issue, on the ground that, beyond their utilitarian purpose, they generate a visual effect of their own which is significant from an aesthetic point of view.