Yesterday, the European Copyright Society (ECS) published its Opinion on the CJEU MIO/konektra cases C- 580/23 and C-795/23 (originality and infringement test of works of applied art). The Executive Summary is reproduced below and the full Opinion is available here: ecs-opinion-mio-konektra.pdf
Executive summary
Background. In Cofemel, the CJEU recognized that (i) the standard test of originality, first
adopted in Infopaq, applies as much to works of applied art as other works but nevertheless
indicated (ii) in order that the copyright regime does not undermine the balance inscribed in
EU design law, the circumstances in which designs benefited from copyright protection as
works of applied art would be limited. In two pending references, Mio and konektra, it will fall
to the CJEU to develop and apply these propositions.
In this opinion, the ECS draws on the existing case-law of the CJEU to highlight how these
two propositions can be reconciled. It begins by explaining why it is important that copyright
not be available too readily in this field.
Following the AG in Cofemel, the Opinion argues that much of the necessary work to delimit
overlaps between copyright and sui generis design law can be achieved by a “rigorous”
application of the CJEU’s criterion of originality that takes account of the factual restrictions
on creativity in the context of works of applied art.
As regards protection, the opinion elaborates from the case-law a four-stage approach to the
assessment of the work, which according to the CJEU case law includes determining whether
there is expression and originality:
(i) Identify expression, excluding from consideration basic ideas, where ideas
merge with expression, and building blocks such as materials, shapes and
colours;
(ii) Identify “free choices”, ie those that were “unconstrained”, noting that the
notion of “free choice” does not include situations where there are only a small
number of ways to express a functional goal;
(iii) Identify the “creative choices” taken by the author (designer). These do not
include copying existing works, trivial variations, or obvious choices or choices
which follow existing trends, or choices that are determined by functional goals.
They do not include skillful or workmanlike choices.
(iv) Determine whether the creative choices, if any, mean that the personality of the
author is expressed in the final production. This requires that the output itself
must have some features that reflect the individual characteristics of the author.
The features in the work should reflect the fact that its author is a different
human being from other potential authors of works of the same sort: the effect
must be to “set his work apart from that of other authors”. We suggest this
depends on the quality and quantity of the “creative choices” that have been
made.
In assessing these matters, all relevant evidence should be taken into account and assessed
objectively including:
(i) The designer’s account of their own motives and decisions
(ii) Prior patents or patent applications over particular features
(iii) Evidence of independent creation of identical or similar designs (either before
or after the work in issue)
(iv) Evidence of experts and of museums.
That said, careful scrutiny will need to be made by a national court as to precisely how the
evidence has a bearing on the issues in front of the tribunal. In particular, we sound caution
over the likely relevance of the fact that a design is now in a museum: this may reflect
judgments about fame, aesthetics or ergonomics and have nothing to do with whether there
were creative choices.
The Opinion urges the CJEU to clarify these hitherto vague criteria and indicate how they might
apply to different concrete circumstances. Although lacking the benefit of the evidence in these
two cases, the Opinion tentatively and respectfully offers indications as to how the elements of
the test might bear on the examples of a modernist designed dining table and modular system
for shelving.
The Opinion goes on to consider the scope of protection afforded to works of applied art.
In many cases, works of applied art that pass the originality threshold will exhibit low levels
of originality, because of the many constraints on free choices, and the presence of only a few
creative choices. In such cases, following Infopaq, the Opinion argues that there will only be
infringement if a person has reproduced that which made the claimant’s work original. This
will often require exact duplication. We argue that the rough shorthand that “low originality”
works obtain “thin” protection is consistent with this principle, and that suggestions to the
contrary, based on Painer, are a misunderstanding.
Finally, the opinion provides answers to each of the questions posed in the two references.
The European Copyright Society (ECS) was founded in January 2012 with the aim of creating a platform for critical and independent scholarly thinking on European Copyright Law and policy. Its members are scholars and academics from various countries of Europe, seeking to articulate and promote their views of the overall public interest on all topics in the field of authors rights, neighbouring rights and related matters. The ECS is neither funded nor instructed by any particular stakeholders. Its Opinions represent the independent views of a majority of ECS members. The ECS sees it as part of its mission to give opinions on cases pending at the Court of Justice of the EU (hereinafter CJEU or Court).
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