Those cycling aficionados out there among you will be familiar with the iconic and premium market Brompton folding bicycles beloved of commuters. Most people will recognise a Brompton when they see one as its folds down into a very compact shape due to its three folding positions design.
Brompton has been on the market since 1987 and its patent has expired. The path had opened up for competitors to enter the market with bicycles with three folding positions designs.
Brompton brought proceedings in Belgium against Get2Get, a Belgian distributor of a Korean brand Chedech cycles, which manufactures a folding bicycle bearing a striking resemblance to the Brompton and which also has three folding positions. Brompton sought to take advantage of recent developments in the interpretation of the EU law of copyright in its bid to prevent the distribution of the Chedech copycat product and has recently obtained a favourable ruling from the European Court of Justice (CJEU) in its quest to do.
As Brompton’s patent had expired, it based its claim on copyright infringement under EU law which grants the author of an original literary or artistic work protection for the unauthorised reproduction of the work, including objects made to the design of the work. Shapes which are necessary to obtain a technical result are excluded from copyright protection and there is no design right protection in features of appearance of a product which are solely dictated by its technical function.
The Belgian Court referred a series of questions for the CJEU to determine. Principle among them was whether works whose shape is necessary to achieve a technical result are excluded from copyright protection?
The Court of Justice started from first principles noting that for work to be protected as copyright, it must be original. The concept of originality requires that the work reflects the personality of its author and amounts to expression of the author’s free and creative choices. However, where the creation of the work leaves no room for creative freedom because its creation is dictated solely by technical considerations, it doesn’t meet the necessary requirements to be original and is not protected. On the other hand, where there is room for creative freedom allowing the author to reflect his personality, even within the confines of the constraints necessary to achieve the technical results, copyright protection can apply.
The Belgian Court also asked the Court of Justice to determine the effect of an earlier expired patent on copyright protection. The Court of Justice held that the existence of an earlier expired patent did not prevent the work from being protected by copyright. The relevance of patent protection was only in respect of assessing the factors in choosing the shape of the product concerned and whether, in doing so, the author still had scope for exercising his own creative freedom.
The case has been sent back to the Belgian Court to make a decision on the facts as to whether the designer of the Brompton bicycle had sufficient creative freedom within the design constraints to allow Brompton to successfully claim copyright protection. It remains to be seen whether Brompton will be able to tell Chedech to get ‘on its bike’ out of the lucrative folding bike market.
It’s likely that this CJEU’s decision in the Brompton case will be followed in the UK. That decision is significant for those owners of intellectual property rights, such as patents and design rights in products which have expired. They may now be able to rely on copyright protection to pursue claims for infringement if they can establish that their designs which have been copied involved an element of creative freedom and expression within the technical confines of the chosen design.
