Recent developments in copyright law at the EU level have potentially resulted in greater copyright protection for product designs than was previously the case in many Member States, including the UK. This is good news for designers across the EU. However, copyright protection does not extend to purely functional designs. A recent Court of Justice (CJEU) decision relating to the Brompton Bicycle[i] considered in what circumstances a design is to be regarded as purely functional, with the result that it may now be easier for competitors to copy it.
“solely dictated by technical function”
EU case law makes it clear that a design that is “solely dictated by technical function” does not attract copyright. This is based on the idea that copyright should not allow businesses to monopolise technical solutions – that’s what patents are for. The very clever shape of the Brompton enables it to be folded into three positions, one of which allows it to be kept balanced on the ground. The Court indicated that this could potentially result in it being regarded as a purely functional design that does not attract copyright. But it also made it clear that this was not necessarily the end of the story. Copyright might nevertheless apply to the bicycle if the design displays free and creative design choices by the designer going beyond the purely functional.
What does this mean in practice?
The Court’s decision does not examine the bicycle in detail or come to a final decision about whether the design attracts copyright[ii]. The Court held, however, that the normal copyright originality principles will apply in deciding this matter. This is a low threshold. Potential examples of aspects that could bring copyright into play might be the incorporation of decorative elements or elegant lines of design that, even if they play a functional role, are not necessary to achieve the technical function. Alternatively, some parts of the bicycle may be purely functional while other parts are not.
What if there are other ways of achieving the technical function?
The fact that there is more than one possible technical solution will not result in copyright applying to the design. It may, however, in some cases be a factor that suggests that the design is not, in fact, purely functional.
Where does this leave competitors?
The Court makes it clear that, although the design may attract copyright either in part or as a whole, this cannot prevent third parties using the technical solution itself, even if this is dependent on the shape of the product. Competitors will therefore be free to copy the way the product works, unless this is protected in other ways, for example, by a patent. If the solution has been protected by a patent in the past (as was the case with the Brompton) competitors will normally be free to use the invention after the patent has run out. In order to avoid copyright infringement they will, however, need to carry out a careful analysis to decide whether any aspects of shape adopted are not in fact essential to the technical solution.
Is this affected by Brexit?
Until the end of the transition period on 31 December 2020, EU law (including the Brompton decision) will continue to apply in the UK. After this there is some uncertainty about whether the line of EU copyright decisions leading up to the Brompton decision will continue to apply in the UK. This is particularly because some legislative changes to UK copyright law would need to be made to bring the UK into line with EU law and it is unclear how the UK will take this forward. However, UK businesses trading in the EU27 will continue to be directly affected by this decision in respect of their trade in the EU27.
Tom Lingard