On 2 May 2019 the Advocate General Maciej Szpunar presented his conclusions to the European Court of Justice in the case C‑683/17 Cofemel – Sociedade de Vestuário, SA v. G‑Star Raw CV.

The case was referred by the Portuguese Supreme Court of Justice that asked for clarification on the interpretation of the InfoSoc Directive (Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society).

Facts in main proceedings

The request for preliminary ruling of the CJEU originates from the appeal proceedings before the Portuguese Supreme Court of Justice against a verdict of the Lisbon Court of Appeal (268/13.2YHLSB.L1-7, dated 21-02-2017). In its judgment the Court of Appel (CoA) examined whether certain outfit items (sweatshirts, t-shirts and jeans) should be considered works protected by copyright.

The claimant (G-Star Raw CV) alleged that the defendant (Cofemel) was imitating some of its products, namely the G-Star Rowdy model for t-shirts and sweat shirts, and the G-Star Rotor Straight jeans, that should be considered protected by copyright (seen below on the left with the Cofemel product on the right).

Although the judgment received a dissenting vote from one of the three judges, the CoA affirmed that the products in question had an artistic nature thereby confirming the 1st instance decision which had upheld the claim. The CoA said:The innovative and original concept of the pieces of clothing in question establishes an intellectual creation that goes beyond a simple industrial practice, constituting a concept intellectually processed with special and laborious technique, emphasis and imagination, generating a visual effect that is striking from the esthetic point of view.

The degree of overall similarity between the items seems to have impressed the CoA when the court criticized the appellant's argument: “having merely copied the intellectual creation on which others had invested”, now requires a high and highly qualified understanding of the artistic requirement for justifying the clear imitation to which it deliberately and profitably devoted itself”.

Question

The question essentially asked by the Supreme Court is: if a new object was designed mostly for a functional or useful purpose could it be protected by copyright? And if so, are useful articles subject to stricter requirements for copyright protection, namely the level of originality required, in comparison with the purely artistic works?

According to some scholars, the Portuguese law copyright protection for works of applied art is subject to a stricter originality requirement. The law refers specifically that protection is recognized to works of applied arts, industrial designs and design works “which constitute artistic creation” therefore suggesting that only some objects will meet the test.

This question becomes typically relevant in litigation where the claimant’s products lack protection provided by design law, namely through design registration, because such protection is not effective or has lapsed.

Proposed answers

The AG Szpunar concludes that the EU copyright law as interpreted by the CJEU protects works that are original in the sense that the work reflects an intellectual creation of its author and provided that the subject matter at issue is identifiable with sufficient precision and objectivity.

Furthermore he adds that Article 2(a) of the InfoSoc Directive precludes industrial designs from being protected only by copyright if they present an added artistic character, which goes beyond what is normally required of other categories of works. Therefore the AG proposes that the normal originality requirement applies to utilitarian designs or works of applied arts.

Finally, although noting that the finding of a possible infringement, entirely lies within the jurisdiction of the national court, the AG seems inclined to disagree that the G-Star outfit items are eligible for copyright protection. More generally, he noted: in the event of a request for the protection of a design or an industrial model by copyright, the national court must take into account the specific objectives and mechanisms of this right, such as the protection not of ideas but of expressions and criteria for the assessment of a infringement of exclusive rights. On the other hand, the national court can not apply to copyright protection the specific design protection criteria.

The overlaps between design and copyright law in the case of useful articles remain a complex area of intellectual property law. We will wait for the CJEU ruling and the final Supreme Court decision with interest.

António Corte-Real (This email address is being protected from spambots. You need JavaScript enabled to view it.)