Function Above Form - CJEU Discusses Copyright Protection over Functional Designs

Protection over functionality in relation to copyright is a bit of a contentious subject. Many laws around the world, including in the EU, preclude protection from extending to methods of procedures, potentially including functional aspects of a particular form of expression. The idea of this is to prevent the use of copyright in the way of patents to protect some specific function, giving the rightsholder a much longer period of protection than under patent legislation. Nevertheless, the issue has been litigated before, and the CJEU was set to decide on the matter once and for all earlier this Summer, and finally handed down its decision in June 2020. 

The case of Brompton Bicycle Ltd v Chedech/Get2Get concerned a folding bicycle sold by Brompton, whose design's comprises three different folding positions. The design was patented, however the patent has expired. Get2Get sold a similar bike (called the "Chedech"), which also featured three folding positions. Brompton subsequently took Get2Get to court over copyright infringement, with the defendant arguing that you cannot have copyright in functional designs, i.e. the technical function of the bike design. After a period of litigation in the Belgian courts the matter ultimately ended up with the CJEU. 

The CJEU was asked two questions, which it combined into one; "...whether Articles 2 to 5 of [the InfoSoc] Directive must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result", meaning, can Brampton have copyright in the three-fold design of their bike. 

The court first discussed the requirements for a "work" under EU case law, namely, that it has to be an original subject matter which is the author’s own intellectual creation and an the expression of that creation. This is slightly different when it comes to subject matter that has been dictated by technical considerations, such as the design of a bike. 

In relation to originality, the courts will have to keep in mind that there can be no "work" as such if "...that subject matter cannot be regarded as possessing the originality required for it to constitute a work", which leaves it ineligible for copyright protection. In relation to expression of that 'work' it needs to be identifiable with sufficient precision and objectivity. 

With that said, the Court noted that "...a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices". This would allow for works with functional designs to be protected, provided that the technical considerations included in that design haven't prevented the author from creating it using their own determination as discussed above in relation to originality. 

The Court then moved onto discussing the actual design of the Brampton bike and whether it could be protected by copyright. 

The design of the bike is clearly necessary to obtain a certain technical result, namely that the bicycle may be folded into three positions. Even though there remains the possibility that choice shaped the design of the bike, the Court was unable to conclude that it was indeed a 'work' pursuant to the above Articles, as further evidence would be required. 

The Court further noted that even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, this does not in itself show that the design is an original one. In addition, the intention of any alleged infringer is not relevant for the assessment of originality, but courts can indeed consider the existence of a patent over the design (even if expired), but only to the extent that the patent(s) make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

After all of the above discussions the Court summarized their decision on the matter: "... Articles 2 to 5... must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that 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, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings". 

The decision opens the door for national courts to consider the application of copyright in relation to functional designs, and will be quite important for companies wishing to protect those designs going forward. The big hurdle will be evidence, at least in this writer's opinion, as it will be difficult to demonstrate clear decision-making and choice by the author simply by showing designs of a bike. It would clearly have to show a trail of decision-making, potentially even deviations from earlier designs, to show that the author has exercised sufficient thought and scrutiny to fulfill the requirements of originality. It will remain to be seen how national courts will apply this going forward, and what evidence will/might be sufficient to establish copyright in functional designs. 

Seeing Red - Registration of Red Shoe Sole Potentially Invalid, Says AG Szpunar

The color of a product or a logo can often be just as memorable as its shape, design or quality. When you think of a Coca Cola bottle, do you think of the color red? If you see a chocolate bar draped in purple, do you think of Cadbury? Colors are a great differentiator, and the more striking the color the more you tend to probably remember it. That's why many companies register a particular color as a trademark in relation to their goods or services, protecting that very association from competitors. In a similar vein, could you register a trademark that incorporates a color with your product, for example in conjunction with a shoe? A recent case involving this has been going through the European courts, and the Advocate General has finally given their two cents on the matter ahead of the CJEU's decision.

The case of Christian Louboutin SAS v Van Haren Schoenen BV concerns the registration of a mark in Benelux by Louboutin, comprising of a high-heel shoe with a red sole. Only the sole was registered. Van Haren made and sold similar red-soled shoes, and upon identifying this, Louboutin took the company to court for trademark infringement. Van Haren challenged the infringement opposing the mark's registration, claiming invalidity. Having made its way through the Dutch courts, the case ultimately ended up with the CJEU, and prior to their judgment Advocate General Szpunar aimed to give the court guidance on the issue.

The question referred to the Court was "[i]s the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95... limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?" In essence, the question asks whether a 'shape', as defined in the Directive, can include colors as well as the actual three-dimensional shape of an object.

The Advocate General first considered the classification of the mark and its impact on the registration. He determined that the classification of the contested mark is a factual assessment to be made by the referring court. That consideration does not prevent the CJEU from making remarks which may guide that court in making its assessment. He also saw that the classification of the goods does not necessarily have any legal consequences regarding the goods. Even if the mark is a 'position mark', which some parties argued it was, it doesn’t prevent that mark from consisting of the shape of the goods (i.e. the color). He then concluded that "…it is for the referring court to determine whether the mark at issue in the present case is a per se colour mark or a mark consisting of the shape of the goods, but also seeking protection for a colour".

To determine whether the mark is a color mark per say, or consists of the shape of the goods, as defined in the Directive, the Advocate General set out the test as "…the referring court should carry out an overall assessment, taking into account the graphic representation and any descriptions filed at the time of application for registration, as well as other material relevant to identifying the essential characteristics of the contested mark, where applicable". One would also have to account for whether the mark was registered as for the color only, or if the shape was incorporated in the registration as a part of the color.



The CJEU could impede Cindy's new color schemes 

The Advocate General rejected that the color, albeit restricted from applying to a particular shape, would not in itself limit the mark to simply a color mark. Instead "…what must be determined is whether the sign derives its distinctive character from the colour in respect of which protection is sought per se, or from the exact positioning of that colour in relation to other elements of the shape of the goods". Therefore the Advocate General accepts that it is possible for the mark to apply to the position of the color as well.

When considering the actual mark that was registered, the Advocate General saw that, even though the contours of the shoe were not a part of the registered mark, its placement on the shoe was very relevant. The mark sought to protect simply a red sole on any high-heeled shoe, irrespective of its shape. He finally thought that "…[t]he contours of the sole appear in any event to be a negligible element of the mark, which derives its distinctive character from the unusual positioning of the coloured element and, potentially, the colour contrast between different parts of the shoe".

Although the Advocate General considered that the mark, at least on the outset, would be one that consists of a shape in conjunction with the color, he still aimed to analyse both possible outcomes in more depth.

Firstly, whether the mark consists of a color per say. As established in previous cases, colors per say don't have distinctive character; however, they may become distinctive through use. The registration, even so, shouldn't prevent other proprietors from using the color for goods of a similar type. The Advocate General ultimately concluded that "…if the contested mark were to be classified as a ‘mark consisting of a colour per se’, it would be appropriate to hold that it did not fall within the scope of Article 3(1)(e)".

Secondly, whether the mark consisting of the shape of the goods and of a certain colour. The Advocate General set out that, to answer whether a mark consists of both the shape and the color applied to it, one has to heed the logic and scheme of Article 3(1)(e), i.e. to prevent the registration of marks that would impede fair competition. The Advocate general considered that any shape that incorporates color in the mark would have to be analysed under Article 3(1)(e) as a part of the overall assessment of the sign. This would apply even under the new Directive.

He concluded that "… Article 3(1)(e) of [the] Directive… does potentially apply to signs consisting of the shape of the goods which seek protection for a certain colour". The mark in question would also be, in his view, potentially caught by the Article and therefore invalid. He also observed that, while the color potentially does add value to the mark (and potentially falls under Article 3(1)(e)(iii)), the value added only relates to the intrinsic value of the shape (for example, is it commonly used and therefore valuable) and not the reputation of the proprietor or the mark.

The Advocate General clearly sets the stage for the CJEU to find that color marks applied to a particular shape would be invalid, as the protection of a color to an indeterminate amount of soles could prevent fair competition. Less conventional trademarks could be hindered by a negative decision by the CJEU, and it remains to be seen how they navigate this paradigm in the light of the expansion of registrations through the new Directive 2015/2436. Should the shape be taken into account the mark could survive, but it looks like Louboutin might have to simply rely on their goodwill in passing off in the future.

A Piece of Humble Pie - Design of Apple Pie Not Registrable, Says US Court of Appeals

What is more enjoyable than a case involving food and an intellectual property law? This writer for one will freely admit his love of both, and any case that presents a scenario mixing the two is a delight. Many recent cases have touched on the design of various food items, including the recent Kit Kat litigation in the UK (discussed more here) and in the CJEU (discussed more here), and as manufacturers and makers of edible goods compete for marketshare, the shape of these items can become quite valuable and important. One still has to distinguish this from recipes (discussed more here), and while they are much less likely to be protectable, shapes are a different matter altogether. With that said, could you protect the shape of a dish, specifically a pie? The Court of Appeals in the US aimed to answer this question only late last month.

The case of Sweet Sweet Desserts, Inc. v Chudleigh's Ltd dealt with a design of a single-serving apple pie, meaning a whole pie meant for one person in a neat, convenient package. This particular food item was the creation of Scott Chudleigh, the owner of an apple farm and bakery in Ontario, Canada. It consisted of a ball-like shape, with upward facing, spiralling petals that overlap each other, encasing the apple pie filling within. He subsequently filed for a trademark in 2005 (US trademark 2262208, which includes an illustration of the design). The pies where distributed to various companies for resale, including a discussion with Applebee's in the US for the sale of the item in their restaurants, but the negotiations fell through. In 2010 Applebee's approached Sweet Sweet Desserts to create a single-serving apple pie, much akin to the idea conjured by Mr Chudleigh, who developed an "apple pocket" with a pie-like bottom and an overlapping spiral top design, leaving a gap in the top (subjectively quite similar to Chudleigh's apple pie design).  After launch Mr Chudleigh noticed, through online advertising, the similarities of the two designs, and took Sweet Sweet Desserts to court over trademark and trade dress infringement.

Little Jimmy's "floor pie" was received with less enthusiasm

The first issue dealt with by Justice Shwartz was whether Chudleigh's design was merely functional, and thus not registrable as a trademark. 15 USC section 1125(a) prohibits the use of any marks that would deceive a consumer as to the origin of goods or services, potentially including the aforementioned design, provided the design is not only functional and thus not a designation of such an origin. Justice Shwartz further set out that "...in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article". Even if a feature were deemed to not be functional, a court can still find against the owner should the mark put competitors "...at a significant non-reputation-related disadvantage", therefore potentially restricting competition in the field (i.e. if a design or shape of a mark is essential or near-essential to the creation or presentation of certain types of goods).

What the Court found was that the design was indeed functional, as "...the shape of the dough is essential to the purpose of an effective single-serving fruit pie, and affects its cost and quality". Arguably this is correct, since the folding of the dough in order to seal the filling into the pie does just that, and does not, at least for the most part, act as purely decorative, clearly designating an origin for those particular pies. Mr Chudleigh admitted to this fact somewhat, stating that the use of the dough in that particular shape was designed to save on cost and to fill a particular market need for single-serving pies. Additionally, the number of 'petals' in the pies would be predominantly as a functional aspect, giving the best results for holding in the filling and baking, again enforcing a lack of decorative purpose and pure functionality. The Court therefore determined the design to be functional, and revoked Mr Chudleigh's registration.

The final claim dealt with by the court was Sweet Sweet Desserts' claim for tortious interference with their relationship with Applebee's through Mr Chudleigh's assertion of his alleged rights (being very similar to groundless threats in the UK). Justice Shwartz quickly ruled against this claim, determining that Mr Chudleigh's cease-and-desist letter, sent to Applebee's after his discovery of the Sweet Sweet Desserts' apple pie, since the letter was an "...objectively plausible effort to enforce rights" and not a sham to extract a settlement from the parties prior to a full case. Even though he failed in the case at hand, losing his rights in the design, does not take away from his legitimate belief at the time as to the existence of these rights. The Court ultimately allowed the application for summary judgment for both parties.

The case, albeit not ground-breaking in any way, is a curious predicament for the law, especially considering the uncertain world of food-related trademarks and rights. This writer would fully agree with the Court, since the design of the pie was purely functional, and any decorative or indicative purposes were either incidental or minor in the grand scheme of things. It is unclear whether Mr Chudleigh could have succeeded in a claim for passing off in the UK, and this writer sure does have his doubts as to this, but the idea would seem to be a novel one as a hypothetical.

Source: JDSupra

Retrospective - Distinctiveness of Appearance

Often called the "...less glamorous cousin of other intellectual property regimes", the law protecting designs is overlooked by most as being a less 'sexy' point of discussion among more prevalent copyright and patent legislation. Amongst this one has to note that designs are something that most of us will deal with almost daily, as it pertains to how things look. This simple, yet very important aspect of intellectual property is taken for granted by most, however still much appreciated by those who work in the fashion industry and other fields which heavily rely on distinguishing their goods from others because of their distinctive appearance. Keeping this in mind, what does this regime protect then more specifically?

This matter was tackled in the 1970s case of AMP Inc v Utilux Pty Ltd. The case concerned the Registered Designs Act 1949 in the UK, under which any 'design', as defined as "...features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye", would be capable of being registered. The design which was sought to be registered by AMP was the shape of an electrical terminal for a washing machine, which was used to join electrical wiring. AMP entered into a contract with Hoover to produce such a terminal for them, which was subsequently registered under the Act as a registered design. In taking action against Utilux, AMP's designs validity under the Act was questioned. Could an electrical terminal have 'eye appeal'  under the Act, and therefore have been registrable to begin with?

Eye appealing, or just overcompensating?

Evidence was produced as to the similarities of electrical terminals made by others and AMP, all possessing different features and looks while still performing the same essential task. Lord Reid however found similarities amongst the terminals despite their varying styles. In a similar vein, these varying features had to play a part in the consumer's decision over which washing machine to buy in order for it to fall under the Act. Designs are concerned with physical appearances and their enticing nature, not its function.

In his judgment Lord Reid saw that "[f]or a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character". What his Lordship refers to is the eye of the consumer, not merely an aesthetic or artistic eye, further highlighting a need for it to catch the consumer's eye, not just be eye-catching. As the terminal in question was an internal component, it might not be fully visible, if at all, to the consumer, therefore not necessarily falling under the Act.

In the matter the infringer, the party claiming the terminal was not a registered design, would have to prove on a balance of probability that the article would not have greater appeal to any member of the public than an article which did not have that particular design which it possessed. In the case the House of Lords saw that the terminal did not fulfill this requirement, and the defendant had not subsequently infringed on their design rights.

One has to note that even if a design does not fall under a potential registered designs regime, it might still infringe the copyright of the entity in question. Should the design fulfill all the requirement of copyright, there could be an avenue of recourse through this measure. This pertains more to aesthetic elements, such as intricate patterns and such, but does not necessarily exclude other factors.