The judgement of the Court of Justice of the European Union (CJEU) issued on 12 September 2019 in case C-638/17 (Cofemel — Sociedade de Vestuário SA v G-Star Raw CV) ruled that a national legislation cannot grant protection under copyright to models such as items of clothing that beyond their utilitarian purpose produce a specific visual aesthetic effect.
The ruling addresses the complex overlaps between design and copyright law in the case of useful articles in a referral from the Portuguese Supreme Court previously reported here.
In the question answered by the CJEU the Portuguese Supreme Court asked if Article 2(a) of Directive 2001/29/EC precludes a national legislation — in the present case, the provision in Article 2(1)(i) of the Portuguese Copyright Code — that confers copyright protection on works of applied art, industrial designs and works of design which, in addition to the utilitarian purpose they serve, create their own visual and distinctive effect from an aesthetic point of view.
In a nutshell the court said: yes it does because an aesthetic effect is intrinsically subjective and therefore the design or models in question do not meet the conditions that must be satisfied for subject matter to be classified as a ‘work’, namely sufficient precision and objectivity.
The European concept of protected ‘work’
In line with former case law the CJEU started by mentioning that in view of the need for a uniform application of EU law and the principle of equality, the concept of ‘work’ protectable under copyright law must normally be given an autonomous and uniform interpretation throughout the European Union.
Two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of Directive 2001/29
1) First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation – it is the intellectual creation of the author if it reflects his personality and expresses his free and creative choices in the production of that work.
2) Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29. This implies that the subject matter at issue is identifiable with sufficient precision and objectivity (case Levola Hengelo, C‑310/17, par. 40).
Principle of cumulation, law diversity and competition
The CJEU referred that the European legislator has opted for a system whereby the protection afforded to designs and copyright is not mutually exclusive. This means that a principle of 'cumulation' of the protection of designs on the one hand with copyright protection on the other applies. Consequently the CJEU does not exclude that models or designs may be considered works if the 2 cumulative requirements are met.
However the protection of designs or models aims at objects (products) that, although new and individualized, are utilitarian and can be mass produced. This protection is intended to be applied for a limited but sufficient period to enable the recovery of the investments made in the creation and production of such objects without, however, hindering competition excessively. As to the protection associated with copyright, whose duration is very significantly longer, is reserved for objects that deserve to be qualified as ‘works’.
For these reasons, granting copyright protection to an object protected as a design or model cannot undermine the respective purposes and effectiveness of those two types of protection.
It follows that, although protection of designs and protection associated with copyright may, under Union law, be accorded cumulatively to the same object, such cumulation may be permitted only in certain situations.
The essence of the judgement is that utilitarian objects, such as clothing, even one that has a striking aesthetic effect, is not endowed with originality that deserves copyright protection. The aesthetic effect results from a “subjective sensation of beauty experienced by each person looking at that model” the CJEU considered. Consequently, such an effect of a subjective nature cannot in itself characterize the existence of an identifiable object with sufficient precision and objectivity.
Nevertheless our reading is that the CJEU has welcomed the Advocate General's warning about the harmful consequences of excessive copyright protection of designs or models.
By stressing the different purposes of design or model laws protecting current and mass-produced utility objects, and the copyright laws protecting original ‘works’ and by considering that cumulative protection can only be allowed in certain situations (par. 52), the CJEU has in fact limited future application of copyright protection for utilitarian designs or models.