October 30, 2019

G-Star Raw CV issued copyright infringement proceedings against Cofemel – Sociedade de Vestuário SA in the Portuguese courts in relation to the production and sale by Cofemel of jeans, sweatshirts and t-shirts that G-Star said were infringements of its designs.

The matter eventually reached the Supreme Court in Portugal, which noted that, under Portuguese law designs are included in the list of works that can qualify for copyright protection. However, the Portuguese law does not specify the level of originality that is required or whether a degree of aesthetic or artistic value is required for copyright to subsist in such designs.

The Supreme Court therefore asked the CJEU whether Article 2(a) of the Copyright Directive should be interpreted as precluding national law from providing that copyright protection can be granted to a design if, over and above its practical purpose, the design has an aesthetic effect.

The CJEU noted that it is settled case law that any original creation that constitutes the expression of the author’s own intellectual creation is a “work” under the Copyright Directive (Case C-5/08 Infopaq International EU:C:2009:465). There is also a body of EU law that specifically protects designs, registered and unregistered.  That law does not exclude the possibility of coexistence between the protection of designs as the one hand and copyright protection on the other. Design law and copyright law are not mutually exclusive, therefore, and a design can also be a “work” under the Copyright Directive.

That said, the CJEU said that the two protections have different objectives and are subject to distinct rules. The purpose of design law is to protect creations, which, at the same time as being new and distinctive, are also functional and can be mass-produced. Further, design protection is granted for a limited time only in order to ensure a return on investment without restricting competition. The duration of copyright, on the other hand, is significantly longer and the right is reserved for creations that constitute “works”.

The CJEU said that the grant of copyright protection to creations that are already protected as designs must not undermine the respective purposes and effectiveness of the two systems. As such, in the Court’s view, a creation can therefore only have both copyright and design protection in certain situations. However, the Court did not elaborate on what such a situation might in fact be, partcularly in the light of its pronouncement on what comprises a “work” capable of copyright protection.

The CJEU said that any aesthetic effect produced by a design results from the subjective feeling of the person looking at it, which was not relevant in determining whether that design qualified as a “work”, as it did not allow the design to be assessed with the necessary precision and objectivity. It was true that aesthetic considerations were part of the creative process, the CJEU said, but this did not mean that the aesthetic effect of a design was, in itself, sufficient to determine that it was an intellectual creation reflecting the freedom of choice and personality of the author, thereby satisfying the originality requirement.

The CJEU concluded that the fact that designs, such as the clothes designs in this case, have, over and above their practical purpose, their own specific aesthetic effect is not, in itself, determinative of whether or not mean that they qualify as “works” under the Directive. Any national law that places such a requirement on qualification for copyright protection is precluded by Art 2(a) of Directive 2019/29. (Case C-683/17 Cofemel Sociedade de Vestuário SA v G-Star Raw CV EU:C;2019:721 (12 September 2019) — to read the judgment in full (in French), click here. To read the CJEU’s press release (in English), click here.