Analyze & evaluate the impact of Brompton v Get2Get to the currently copyright system
Copyright arises automatically to the creator of an original work as soon as the work is created. The classic copyright protection generally runs before the ink is dry up to 70 years after the death of the author; it covers creators’ original literary, dramatic, musical, and artistic (LDMA) works. Moreover, the area of law in the modern days has been greatly expanded and reacted relatively to the influence of technology. This allows new aspects of artistic works including films, sound recordings, published editions, broadcasts, and cablecasts which are known as entrepreneurial copyrights to be protected under copyright law. Yet, the lack of statutory development of copyright law in the United Kingdom (UK) may have lost confidence amongst creators and created legal controversy: the sufficiency of protection and the clarity on its availability. Critics of current copyright law point to many expansions in its power over the past decade. In the recent ruling of a copyright infringement proceeding Brompton Bicycle Ltd (Brompton) v Chedech / Get2Get (Get2Get), the Court of Justice of the European Union (CJEU) sets forth a foundation for new opportunities for copyright protection in Europe. The CJEU’s decision suggests copyright protection will be available in products even with minor creative choices of the creator.
In Brompton v Get2Get, the CJEU held that copyright protection should not be available to designs where the shape of the design is necessary by the technical function as advised by Advocate General (AG) Manuel Campos Sánchez-Bordona. It is emphasised that copyright protection should be a result of the creativity of the creators’ ideas and not the ideas themselves.
This case involves the UK Company Brompton taking a Korean company Get2Get to court for copyright infringement of a similar folding bike. Brompton protected its bicycle and particularly its folding system under the patent system after its invention. However, the folding system entered the public domain following expiry of the patent in 1999. After the patent expired, Get2Get began to sell similar folding bikes in Belgium. Brompton attempted to protect the Intellectual Property rights (IPR) of its folding bikes by suing Get2Get for copyright infringement. Get2Get countered that their Chedech bike adopted Brompton’s folding technique as it was “the most functional method”. The fundamentally question raised here was whether the shape of the bicycle was necessary in order for it to be foldable.
This is not the first time Brompton has tried to protect its bike in court. The originality of the Brompton bike has been a subject of various court decisions. Previously in the Decision 41/2010, although Brompton’s patent had never been validated in Spain, the Madrid Commercial Court no. 5 upheld the copyright for Brompton and ruled that the aesthetic shape of the bicycle was not determined by the technical functions of folding and compactness. The Brompton’s bike was protected under the copyright system in accordance with Article 10 of the Spanish Copyright Act.
The Belgian court was put into a similar situation faced by the Spanish Commercial Court in Brompton. The Belgian court needs to determine whether the Brompton bike is entitled to copyright protection under the applicable national law implemented based on Directive 2001/29/EC. Where Member States of the European Union (EU) has doubts on interpretation of EU legislation, they may ask for preliminary ruling to the CJEU even though it does not have jurisdiction.
In June 2018, the Belgian court referred the following questions to the CJEU for a preliminary ruling:
- 1. In regards to Articles 2 to 5 of Directive 2001/29/EC, whether the exclusive rights granted to copyright creators exclude protection of “works whose shape is necessary to achieve a technical result”;
- 2. “In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:
- The existence of other possible shapes which allow the same technical result to be achieved?
- The effectiveness of the shape in achieving that result?
- The intention of the alleged infringer to achieve that result?
- The existence of an earlier, now expired, patent on the process for achieving the technical result sought?”
In regards to question one, the AG confirms that “designs whose shape is dictated by technical considerations that leave no room for creative freedom are not eligible for copyright protection”. Therefore, copyright protection does not arise for the Brompton design. Secondly (i) the expired patent may serve to explain that there were technical constraints imposed on the shape of the product; (ii) copyright protection does not subsist to designs where the shape of the designs is “exclusively dictated” by their technical function (reference to DOCERAM); (iii) the intention of achieving a technical result can be assessed when evaluating the relationship between the shape and function; and (iv) the criteria for assessing the relationship of exclusivity between the appearance of the product and its technical result are not exhausted to the analyzed in the AG opinion. The AG concluded that it would not be appropriate to make a criteria list when the assessment is in relation to circumstances which are not possible to recognize a priori.
The decision in Brompton is based on the copyright protection requirements in the InfoSoc Directive 2001/29/EC. Under the InfoSoc Directive, a work is entitled to copyright protection if it is original and has been expressed or recorded in some form. In other words, certain products will have cumulative protection under different IPRs. Ultimately the CJEU held that it is necessary for the shape of the Brompton bike to obtain its technical result. Copyright protection will not cover products whose shape is solely dictated by its technical function. However, the CJEU emphasis that products whose shape is necessary to obtain a technical result may be protected by copyright if the “product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality”. This suggests that the area of law has evolved again and by setting a lower threshold, it means copyright protection will be available in products which result from the creator’s minor creative choices.
In reaching such decision, the CJEU has reviewed earlier case law, in Cofemel, the question posed by the Portuguese Supreme Court was whether EU law Article 2(a) of the InfoSoc Directive prevents Member States from granting copying right protection to designs subject to requirements other than originality. In Cofemel the CJEU moved from the concept of ‘work’ in Article 2(a) and explained that like all those concepts that do not refer to in national laws of the Member States, the “concept must normally be given an autonomous and uniform interpretation throughout the European Union”. In answering the question, the CJEU referred to both Infopaq and Levola Hengelo and confirmed copyright protection arises when (i) the work is original “in the sense of being the author’s own intellectual creation” from the author’s “free and creative” choices; and (ii) the author’s creation is expressed in an objective manner (clarified in Levola Hengelo). The Cofemel judgment is another landmark precedent of the CJEU rulings for products protected by copyright. The judgment brings evolution that copyright protection arises automatically upon fulfillment of the originality test. Yet this diminishes the traditional approach of national laws in Member States, like in the UK where copyright protection also depends on the category which the work belongs to as listed within the national law. The judgment in Cofemel would have meant that the approaches adopted by the UK statute and courts will need to be reconsidered.
In Brompton, the fundamental question was raised as to determine copyright protection for a functional product. The preliminary ruling handed down by the CJEU is in line with the AG’s opinion. This new precedent in EU case law limits the extend of copyright protection offered to functional products. This decision is significant for creators whose patents or design rights have expired, as their rights to rely on copyright protection to pursue for infringement claims are now diminished. It is clear from the recent CJEU decisions that copyright protection in the EU has moved forward. The CJEU has now pointed out the existence of copyright protection should “existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product” including any previous protection of the product under other IPRs. The CJEU’s decision builds up to the EU case law precedents but often the CJEU leaves a great deal of freedom for national courts to assess the limitations on a case-by-case basis.
Copyright in the UK
Reflecting on copyright law in the UK, the framework of copyright law is governed by the Copyright, Designs, and Patents Act 1988 (CDPA 1988). Under the CDPA 1988, copyright only subsists works that are ‘original’ (s.1(1)(a)). The requirement of originality for the work is relatively minimal, and therefore it is significant for the court to imply a balance whilst granting a copyright. The classic case of Walter v Lane (1900) brings forward the notion of originality: ‘originality’ refers to work which must be the author’s own work which is not copied. The court held that the reporters were authors under the Copyright Act 1842 in regards the originality as the product of one person’s effort, skill, and time. In Lord Brampton’s view, he places ‘preparation [of the reports] involved considerable intellectual skill and brain labour beyond the mere mechanical operation of writing’.
On close examination, the current UK provision does not require a high degree of inventiveness. The CJEU suggests, following the case Infopaq International A/S v Danske Dagblades ForenigI, that the interpretation of originality in the UK should be slightly reshaped and harmonized with the European test. In addition to meeting the originality threshold, copyright cannot only be ideas and content. To be subject to protection, the idea needs to be expressed in a physical form which the work can be reproduced and communicated; “a production which is solely dictated by its technical function does not embed the modicum of creativity and individuality required to be original”. The CDPA 1988 indicates that a work must fall into one of the categories listed in the act in order to qualify for copyright protection. As soon as the creator merits copyright protection, under s.12 of CDPA 1988, the duration of copyright starts as soon as the work is created. For artistic work, the duration is usually 70 years in addition to the life of the author or director which runs from the end of the year of the death. For music recording, the period of 70 years runs from the year of creation or the year of first publication, whichever is later. For computer-generated work, the protection period is 50 years from creation. Copyright only lasts for 25 years for layout of published edition of written or musical works.
Being a former member state of the EU, EU copyright law, therefore, has the principle of mutual recognition by the UK legislation. The CDPA 1988 is also influenced by the EU copyright law implemented through a number of EU directives and related case laws. The opinion of AG in Brompton has produced a considerable impact on the copyright law in the EU and within the UK. Following the 2016 Brexit, the withdrawal agreement provides a transition period during which the EU Law, with only a few exceptions, will continue to apply and influence in the UK as if it was still a member state in the European Union, during this period until 31 December 2020. After 2020, the European Communities Act 1972 will fall away and any indirect EU laws will lose its statutory instruments on directly implementing on the UK national law.
In relation to the protection under IPRs, the UK legal system has always seek to strike a balance to ensure and provide a safe environment for creators to create as the same time offering protection against possible infringements to their works. As copyright offers protection to creators automatically, it avoids illegal exploitations of works which creators have created. But at the same time, copyright only protects the expression of ideas rather than the ideas themselves which will keep the market competitive. Creators obtain copyright protection automatically when the work was created and in most cases lasts 70 years from the death of the creator. As a result, it remains to be seen how copyright law in the UK will resolve the apparent conflict with the InfoSoc Directive and whether the Brompton case will have any influence to future UK court decisions and statutory developments in copyright law.
Comments about change
In the UK, the originality threshold has been low as the law only provides the definition within statute but there is no test to assess specific criteria for the concept. Therefore, being a former member state of the EU, the UK copyright law has been relied on the EU’s originality threshold. It is questionable that whether the CJEU ruling in Brompton has raised the threshold of originality for copyright: although the originality test is the only test which needs to be satisfied, neither the AG opinion nor the CJEU ruling went into details of defining the specific criteria for assessing originality. This in turn creates burden on both EU and national courts in the future as it is crucial for judges to review and assess cases individually. Given that at the end of 2020, EU case laws should no longer have precedential affect in the decisions of UK cases. We shall wait to see the future developments in the UK copyright law and whether there will be a seminal change to the statutory definition of “originality”.
Another essential development Brompton has brought to light is that previous protection of a product under other IPRs does not affect the analysis of whether the product will be protected under copyright. Each case in relation to any copyright infringements should be decided on its own. These changes demonstrate to creators and designers that the precedent in copyright law has now eliminate potential excessive accumulation of protection under different IPRs. Brompton’s decision to a certain extend answers the ‘real question’ of creators: whether they will be protected. Creators who might have their products protected under other IPRs which now have expired will need to consider carefully whether their works are protected under copyright. As a result, this shall create competition in the market, as it successfully indicates to creators that if a functional product is not protected under copyright when its other IPRs expired, that functional design will enter public domain and offer opportunities for other creators in similar areas to developer similar products that is more competitive in the market.
With Brexit on the horizon, we should expect the influence of EU case law to be undermined in UK courts slowly in the soon future. Even if the current manifestation of the UK Copyright seems to be in conflict with the Directive and precedence of EU law, neither has a clear definition of the specific criteria for assessing ‘originality’, the test classified as the only test that needs to be satisfied when assessing whether a work should be offered copyright protection. In addition, we will also hope to see clear amendments to the list of works that could be classed as under protection of UK copyright law to have a statutory advancement after departing from the EU. In the meantime, we can be sure to say the UK has strike a balance between offering unregister IPRs protection to creative works and cumulative protection to registered works in order to create a competitive environment in the market for creators to create. However, whether copyright law in the UK will be overhauled that seems a long way to go.
Conclusion the impact of Brompton v Get2Get to the currently copyright system
In Cofemal it was held originality of work is the main assessment when deciding whether copyright protection is available to the work. The views of the CJEU and its AG in Brompton highlight that the creator’s intention should also be considered in the assessment. We will have to wait and see how UK courts will interpret the decisions, especially with Brexit in place.
The CJEU rulings in the last few years also specific that Copyright could be available to a product in accumulation of other IPRs, offering somewhat a wider protection under IP to creators whose registered IPRs of their works have expired.
Another controversial idea between the CJEU’s decision in Brompton and the UK copyright law is that the CJEU has demonstrated that works can be entitiled to copyright protection under EU law without the need to fall into specific categories of works like in the UK law. Creators will be thried to see UK adapting such changes and expanding protection under copyright to more works as the term of protection by Copyright is much longer than other IPRs.In the light of hope, creators can see a gradual shift in the UK of what could be classed as ‘classic’ LDMA and entrepreneurial copyrights.
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU: C:2020:461
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU:C:2020:461, para 38
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU:C:2020:461, para 26
- Decision 41/2010 of 10 February, Madrid Commercial Court no. 5
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU:C:2020:79, Opinion of AG M. Campos Sánchez-Bordona, para 28
- ibid para 67
- ibid para 81
- Case C‑395/16, DOCERAM GmbH v CeramTec GmbH EU:C:2017:779 ECLI:EU:C:2017:779, Opinion of AG Saugmandsgaard Øe
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU:C:2020:79, Opinion of AG M. Campos Sánchez-Bordona, para 90
- ibid para 99
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU:C:2020:461, para 29
- ibid para 33
- ibid para 38
- Case C‑683/17 Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, ECLI:EU:C:2019:721
- Case C‑683/17 Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, ECLI:EU:C:2019:721, para 29
- Case C‑310/17 Levola Hengelo BV v Smilde Foods BV, ECLI:EU:C:2018:899, para 33
- C-5/08 Infopaq International A/S v Danske Dagblades Forening, ECLI:EU:C:2009:465
- Case C‑310/17 Levola Hengelo BV v Smilde Foods BV, ECLI:EU:C:2018:899
- Case C‑683/17 Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, ECLI:EU:C:2019:721, para 29
- Case C‑683/17 Cofemel — Sociedade de Vestuário SA v G-Star Raw CV, ECLI:EU:C:2019:721, para 30
- Case C‑310/17 Levola Hengelo BV v Smilde Foods BV, ECLI:EU:C:2018:899, para 44
- Case C-833/18 SI and Brompton Bicycle Ltd v Chedech / Get2Get ECLI:EU:C:2020:461, para 37
- Walter v Lane  AC 539
- Tanya Aplin and Jennifer Davis, Intellectual Property Law Text, Cases, and Materials, (Third Edition, Oxford University Press, 2017) page 73
- lam, V. (2015). Sporting events as dramatic works in the UK copyright system. The Entertainment and Sports Law Journal, 13, 1. DOI: