The Lisbon Court of Appeal decided an action in which the plaintiff claimed copyright and trade dress protection for a pen, specifically the Stabilo Pen 68.

Citing the interpretation given by the EU Court of Justice in the the Cofemel judgement, the Court of Appeal found that copyright protection could not be recognized since the Stabilo Pen 68 was not considered an original work, in the sense of being an intellectual creation of their author.

The facts

Schwan - Stabilo Schwanhausser Gmbh & CO KG filed an action against Branco e Negro, Lda and Clave Denia, SA regarding the sale of certain pens in their online and physical Ale Hop shops. The plaintiff claims infringement of copyright on the Stabilo Pen 68 and unfair competition (based on product imitation and parasitic competition), seeking the prohibition of sales and damages.

The Stabilo Pen 68 is a coloring felt-tip pen marketed since 1968. It has a hexagonal shape and white edges, with the cap and the color of the wider sides of the pen matching the coloring color and alternating with the white stripes.

The defendant submitted that the claims are groundless since the plaintiff has no intellectual property rights and there was no unfair behavior. The IP Court agreed with the defendant and rejected the claims.

The Stabilo Pen 68

  The defendant’s products

Court of Appeal

On appeal Schwan - Stabilo alleged that the absence of any form of industrial property right protecting the format and/or appearance of the Stabilo Pen 68 such as a 3D mark or a design right, does not exclude the possibility of copyright protection in accordance with the Cofemel judgment of the Court of Justice.  The appellant mentioned in particular that the distinctive white edges of the Stabilo Pen 68 are the result of a “creative exercise and freedom” and not functional characteristics.

The higher court confirmed the findings of the 1^st instance IP Court.

Cofemel

The Court of Appeal started by noting that the Portuguese legislature established the principle of cumulation of copyright law protection and design law protection, replicating in part article 17 of the Directive 98/71/EC thus leaving, to doctrine and case-law, the task of interpretation in accordance with the Court of Justice decisions namely the Flos case (C-168/09), the Infopaq International case (C-05/08) and the Cofemel case (C-683/17).

The court noted also that according to the Cofemel case, designs may benefit from copyright protection only if they are classified as “works” for the purposes of Directive 2001/29/EC, which implies two cumulative requirements: (i) it must be an original object, in the sense of being an intellectual creation of the author himself, reflecting his personality, expressing his free and creative choices; (ii) it must be an object identifiable with sufficient precision and objectivity. The CJEU stressed that the protection of designs, on the one hand, and the protection conferred by copyright, on the other hand, pursue fundamentally different objectives and are subject to different regimes and which are not mutually excluded, so that the fact that a design generates an aesthetic effect does not in itself make it possible to determine whether that model constitutes an intellectual creation which reflects the freedom of choice and personality of its author. The court conluded that “it has therefore become clear that not every design may benefit from the protection of copyright, but only those which, in the light of copyright, can be classified as works".

Thus the court considered that notwithstanding the visual and aesthetic effects that characterize the Stabilo PEN 68  (arising from their shape, colors and, in particular, the white stripes), the pens in question are not original, in the sense of being an intellectual creation of the author, reflecting his freedom of choice, his personality, his particular perception of the world, nature and things, expressed (with precision and objectivity) through the creative act, transcending the mere utilitarian perspective.

Trade dress and unfair competition

The court accepted that in general the imitation of the external characteristics of a product, that is, its visual presentation (including “words, pictures, colours and shapes”), may amount to unfair competition because it may be a free ride on the competitor's image, able to create confusion in the mind of the public.

However in the presente case, the plaintiff’s products have other features that prevent any possibility of confusion namely the word mark (STABILO) engraved on the pens themselves and on their packaging. This and their writing characteristics allows sufficient differentiation for consumers. Furthermore the plaintiff was unable to obtain registration of a 3D mark since EUIPO considered that the visual appearance of the pens – namely the hexagonal shape and the white lists – are not sufficiently different from other pens on the market. Consequently all claims were rejected.

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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.

Conclusion

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.

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