The protection of the design of functional and mass produced products by means of copyright has been one of the most controversial subjects in intellectual property law in Europe (and also in the rest of the world). In some jurisdictions, e.g. in the UK and in Ireland, such works have been discriminated by reducing the term of protection. In many other jurisdictions, the threshold for those works has been much higher than for all other categories of works. While the EU legislator has not been able to clarify the law in this respect for decades, the European Court of Justice has, starting in 2009 with the decision „Infopac“ and followed by the decisions „Painer“, „Football Dataco“, „BSA“, „Flos“, „Cofemel“ and, most recently, with „Brompton“ unified the threshold, the functionality obstacle and the term of protection for the whole EU.
As per 26 June, 2020, the last discrimination against designs with regard to copyright protection in Europe, namely the limitation of the term of protection to 25 years after first marketing, has been abolished with the ending of the transition period of the amended Irish copyright act, Ireland following the recent example of the UK.
The Threshold: The Author’s Own Intellectual Creation („Cofemel“)
In its decision „Cofemel“, the CJEU laid out the two cumulative requirements that need to be fulfilled in order for a creation to qualify as a work. First and foremost, the work in question must represent and express “an intellectual creation” of its author. This is the case where an author is able to make free and creative choices, but not where the process of creating an object is determined by technical considerations, rules or other constraints, which do not leave room for any creative freedom.
As already established in the CJEU’s case of Levola Hengelo, the work should furthermore be expressed in a manner which makes it clearly identifiable while its expression does not necessarily have to be in permanent form.
Once a design fulfills the afore-mentioned requirements, it is automatically granted copyright protection. Any national laws that make copyright protection contingent on artistic value or postulate an artistic intention requirement, are not acceptable and therefore according to the CJEU, art. 2(a) of the InfoSoc Directive must be interpreted as precluding national laws from basing copyright protection on suchlike criteria.
Technical Functionality: No Obstacle Per Se („Brompton“)
In its latest judgment on the Brompton Bicycle Case, the CJEU had to preliminarily rule on the matter of the interplay of technical function and copyright protection. The Tribunal de l’entreprise de Liège had required a preliminary judgment as to whether copyright protection could be granted to an object – specifically, a foldable bicycle – the shape elements of which are necessary to obtain the technical effect. The CJEU came to the conclusion that in the case at hand, the shape of the bicycle was indeed necessary to obtain the technical result, but that this consideration did not per se prevent the product from being qualified as a «work» that can be protected by copyright.
According to the CJEU, the shape elements of an object – even if necessary to obtain a technical result – may be protected by copyright insofar as they constitute an «original work resulting from intellectual creation». This is the case whenever the shape is an expression of the author’s «creative ability». To satisfy this requirement, the author must create the product «by making free and creative choices in such a way that that shape reflects his personality» (paras 22 et seq). However, the CJEU clarifies that the product the shape of which is solely dictated by its technical function will not be protected by copyright (para. 33).
The Brompton judgement of June has made it clear that in the EU all designs that are the result of an author’s intellectual creation are protected by copyright – even if their shapes are technically dictated. An artistic achievement of any kind, or any other additional condition, is not required.
The Term of Protection: „Flos“, and its Implementation in the UK and in Ireland
In its decision „Flos“, the CJEU had to rule on the compatibility of the Italian provisions on protection of industrial designs with Directive 98/71 on the legal protection of designs, after the Court of Milan hade made a reference to the court for a preliminary ruling. The CJEU held that national laws could not refuse copyright protection to designs which were eligible for copyright protection. The CJEU namely clarified that Article 17 of Directive 98/71/EC must be interpreted as precluding legislation of a Member State which excludes from copyright protection designs which were protected by a design right registered in or in a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.
Partially as a reaction to the implications of the Flos decision. Ireland followed suit with the UK and started the process of amending its national copyright law in 2019, in an effort to align it with EU standards as defined by the European Court of Justice.
Under the former Copyright and Related Rights Act 2000 copyright protection in a design registered under the Industrial Designs Act 2011 lasted for only 25 years from the filing date of the design (Section 31A) and artistic works exploited by an industrial process received copyright protection for 25 years from when they were first marketed (Section 78B). This inferior protection compared to other works was subsequently deemed non-conforming with EU law. With The Copyright and Other Intellectual Property Law Provisions Act 2019 said provisions were amended insofar as the term of copyright protection for industrially produced artistic works was extended from 25 years to the lifetime of the creator plus 70 years from its death.
During a twelve-month-transitional period set out by The Copyright and Other Intellectual Property Law Provisions Act 2019 in respect of sections 31A and 78B, Irish importers, manufacturers and retailers were afforded a grace period to comply with the new regime. Said transitional period was comprised by an initial period of six months during which sections 31A and 78B remained in force and a period of six months during which otherwise infringing acts carried out further to pre-existing contracts were still permitted.
The expiry on 26 June 2020 marks a significant shift in Ireland’s copyright regime, strengthening the protection of copyright in design and at the same time bringing the national copyright protection in line with EU law as stipulated by the EU Design Directive and as confirmed by the European Court of Justice.
It goes without saying that at the core of discussions concerning the interface of copyright and design lies the Berne Convention of 1886, which grants copyright protection without registration or any other formalities to all designs that are – as also confirmed by the CJEU in the Cofemel case – the result of the author’s own intellectual creation, irrespective of the artistic quality.
Not long before, the UK had gone through the same process with regard to their national legislation. In 2016, Section 52 of the Copyright, Designs and Patents Act 1988 (CDPA) that limited the term of copyright protection for industrially manufactured artistic works to 25 years was repealed and replaced with a term of protection of 70 years post mortem auctoris with regard to all works of artistic craftsmanship. The transitional period ended in January 2017.
Regarding the artistic craftsmanship requirement, the UK courts confirmed on various occasions that they apply the standard developed by the CJEU, i.e. that every design that is the result of its author’s own intellectual creation may be copyright protected.
In April 2020, the High Court of Justice in England and Wales provided the following guidance with respect to the definition of artistic craftsmanship: Firstly, it is possible for an author to make a work of artistic craftsmanship using a machine, aesthetic appeal can be of a nature which causes the work to appeal to potential customers and lastly, a work is not precluded from being a work of artistic craftsmanship only because multiple copies of it are subsequently fabricated and marketed.
Said developments with regard to national legislation and case law, both in the UK and in Ireland, are a step towards further harmonization in the EU. They also symbolize an effort to clarify the dichotomy between copyright and design.
With the legislative changes in the UK and as of recently also in Ireland, Member States of the EU have now removed all provisions that discriminated against designs with regard to the term of protection.
As a result, throughout the EU designs may no longer be discriminated against in terms of copyright protection compared to other works such as software, photographs, architectural works, texts or music.
Despite the fact that the practical consequences of these developments are not yet foreseeable, it can already be assumed that all designs in the EU are protected by copyright and that companies should therefore ensure that the ownership of the designs created in their business environment must be clearly regulated. Also, it is advisable for such companies to document with precision their own development processes, so that they not only establish their own copyrights but are also able to defend themselves against accusations of infringement of the copyright of third parties.
 CJEU, C-683/17, 12 September 2019.
 CJEU, C-833/18, 11 June 2020.
 CJEU, C-168/09, 27 January 2011.
 England and Wales Court of Appeal – Sawkins v Hyperion  EWCA Civ 565; High Court of England and Wales – Islestarr Holdings Ltd v Aldi Stores Ltd.  EWHC 1473 (Ch).
 Intellectual Property Enterprise Court – Response Clothing Ltd v The Edinburgh Woollen Mill  EWHC 148 (IPEC).