Abstract Pending preliminary reference to the CJEU—C-683/17, Cofemel In the context of proceedings between G-Star RAW C.V. and Cofemel—Sociedade de Vestuário, S.A., the Portuguese Supreme Court has asked the Court of Justice of the European Union (CJEU) whether the originality standard in EU copyright law extends to works of applied art and industrial models and designs. Legal context EU copyright legislation harmonized the originality standard only in relation to specific subject matter, namely computer programs (Article 1(3) Software Directive), databases (Article 3(1) Database Directive) and photographs (Article 6 Term Directive). Works falling under these categories are protected if they are considered original in the sense that they are the ‘author’s own intellectual creation’. In a line of landmark judgments starting from C-5/08, Infopaq, EU: C: 2009: 465, the CJEU developed this vague formula and extended it to all types of copyright-protectable subject matter. Works of applied art and industrial models and designs were—or so it seemed—an exception. Article 17 Designs Directive and Article 96(2) Community Designs Regulation establish the principle of cumulative protection by copyright and design rights. These provisions, however, leave it to national legislators to determine the extent to which and the conditions under which such a protection is conferred, including the required level of originality. Member States thus appeared free to set their own threshold of originality for copyright in designs—a threshold that could require some form of artistry (see, eg, Article 2(10) Italian Copyright Act) and therefore be higher than the ‘author’s own intellectual creation’, which only requires a measure of creative freedom that allows the author to stamp the work with her personal touch (see C-145/10, Painer, EU: C: 2011: 798, para 92). As to Portuguese law, the Copyright and Related Rights Code provides a non-exhaustive list of protectable subject matter, including ‘works of applied art, industrial models or designs and design works that constitute an artistic creation’ (Article 2(1)(i)). This is in consonance with Articles 2(1) and (7) Berne Convention, which instruct Berne Union countries to protect works of applied art, though largely leaving the conditions of protection to national discretion. This apparently peaceful interplay between design and copyright protection was disturbed by the CJEU in C-168/09, Flos, EU: C: 2011: 29. At para 34—going beyond the questions it had been asked—the CJEU stated that ‘it is conceivable that copyright protection for works which may be unregistered designs could arise under other directives concerning copyright, in particular Directive 2001/29, if the conditions for that directive’s application are met, a matter which falls to be determined by the national court.’ This statement has been read as setting the originality standard for unregistered designs at the level of the ‘author’s own intellectual creation’, thus curtailing part of Member States’ freedom that was thought to exist under the EU designs legislation. This understanding seems to have been espoused by Advocate General Jääskinen in C-5/11, Titus Donner, EU: C: 2012: 195, para 31. Facts G-Star is a Dutch urban clothing company established in 1989. It specializes in manufacturing unwashed denim—so-called ‘raw denim’. Cofemel is a Portuguese company established in 1982 that produces and markets clothing, including denim apparel, under the trade mark ‘Tiffosi’. In 2007, designers Rixt van der Tol and Pierre Morisset created the Arc pant on behalf of G-Star, following the company’s 3D construction principles. The pant uses twisted seams, giving it a ‘corkscrew’ effect. In 2010, Ruud de Bruin, one of G-Star’s designers, developed the G-Star Rowdy hooded sweatshirt, which is characterized by a specific colour scheme and front print. G-Star brought proceedings in Portugal against Cofemel on the grounds that some of the latter’s products copy the design of the Arc jeans and Rowdy sweatshirt. In its defence, Cofemel argued that the elements it had allegedly copied—the twisted leg effect in the jeans, and the colours and print in the sweatshirt—represent mere industry trends. Cofemel maintained that: (i) under Article 2(1)(i) Portuguese Copyright and Related Rights Code, designs must be considered ‘artistic creations’ by the relevant institutional and cultural sector in order to be eligible for copyright protection and (ii) the G-Star products at hand failed to meet this demanding standard. Both the first instance court and the court of appeals decided in favour of G-Star, holding that the CJEU case law on originality entailed that Article 2(1)(i) could not make eligibility for copyright protection dependent upon the existence of some reinforced artistic creativity. Cofemel appealed to the Supreme Court, contending that the dispute gave rise to a question on the interpretation of EU law. The court found the decision on the question necessary to enable it to give judgment and decided to seek the guidance of the CJEU. Analysis The Portuguese Supreme Court has referred two questions. The first one asks if the CJEU’s interpretation of Article 2(a) InfoSoc Directive precludes national legislation which confers copyright protection upon works of applied art and industrial models and designs that, going beyond the utilitarian purpose they serve, generate an aesthetically striking visual effect of their own, being their originality the main criterion for the attribution of copyright protection. The second question asks if that case law precludes national legislation that confers copyright protection to those works only if they qualify as ‘artistic creations’ or ‘works of art’, in light of a particularly demanding appreciation that takes into account the prevailing conceptions within institutional and cultural circles. This twofold inquiry probably arises from the fact that there is no consensus in Portuguese scholarship and case law as to the level of originality that is actually required by Article 2(1)(i). In essence, what the Portuguese Supreme Court wishes to know is whether the originality standard that has been horizontally harmonized by the CJEU in Infopaq and its progeny extends to works of applied art and industrial models and designs or whether Member States remain free to set their own—potentially heightened—standard, as initially intended by the EU designs legislation. Cofemel therefore provides the CJEU with an opportunity to clarify the reach of the harmonized originality standard and the meaning of the controversial statement in Flos cited above. Practical significance Broadly put, the CJEU is faced with two options: either it follows the harmonization path, requiring Member States to confer copyright protection to all designs that meet the EU originality standard, or it preserves Member States’ freedom, tolerating higher national standards. The latter, while hard to reconcile with the dictum in Flos, would observe the distribution of powers between the EU and Member States that has been agreed at the political level. The former option, on the other hand, would have radical implications in different respects. First, it would involve a contra legem reading of the EU designs framework, in what may be seen as—rather than mere judicial activism—true judicial reform of legislation. Second, under the EU originality standard most design products—including functional products—would arguably qualify for copyright protection. Unless such designs are considered not to meet the ‘personal touch’ requirement, this could have unwelcome effects on competitiveness in the design industry. The coexistence of different originality standards for copyright in designs may undoubtedly affect the functioning of the internal market. In Cofemel, however, the CJEU will have to carefully balance its desire for greater harmonization against the foregoing—rather troublesome—consequences. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: Mar 8, 2018
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