The case

The original lawsuit involved the two companies Cofemel and G-Star, both active in the clothing sector. The dispute, which has come before the Portuguese Supremo Tribunal de Justiça, concerns the copyright claimed by G-Star in respect of certain models allegedly infringed by Cofemel in the production and marketing of certain pieces of clothing.

The background to the reference for a preliminary ruling

The reference for a preliminary ruling to the European Court of Justice made by the Portuguese Supreme Court is based on the fact that, on one hand, the Código do Direitos de Autor e dos Direitos Conexos – Portuguese Code of Copyright and Related Rights – includes designs in the list of works eligible for protection under copyright, and, on the other hand, does not expressly specify the conditions under which certain objects, which pursue a utilitarian aim, can enjoy such protection.

The question

As Portuguese doctrine and case law were divided on this point, the Supremo Tribunal de Justiça asked the Luxembourg court whether it should be considered, in the light of the interpretation of Directive 2001/29 given by the Court in its judgments Infopaq International dated 16th July 2009 (C 5/08, EU:C:2009:465), and Painer, dated 1st December 2011, (C 145/10, EU:C:2011:798), that design works enjoy copyright protection in the same way as any literary or artistic work, and therefore on condition that they are original, in the sense that they are the result of the author’s own intellectual creation, or is it possible to make the grant of such protection subject to the existence of a specific level of aesthetic or artistic value.

The CJEU solution

The Court held that Article 2(a) of Directive 2001/29 must be interpreted in a way in which a piece of national legislation granting copyright protection to design works upon fulfillment of a further requirement other than creativity, and in particular the production of a visual effect, which is relevant from an aesthetic point of view, is not compatible with European law.

The Court came to that conclusion on the basis that European legislative sources allow the protection conferred on designs to be combined with copyright protection. However, in pursuing different objectives, those protections are subject to different disciplines.

The Court has therefore clarified that the aesthetic effect, which a design may produce, is not a relevant element in determining whether such a design can be qualified as a ‘work of authorship’, since such an aesthetic effect is the result of the intrinsically subjective feeling of beauty, which each person observing the design in question experiences.

Protection therefore occurs when the object constitutes an “author’s own intellectual creation”, which reflects the freedom of choice and the personality of the author; and it is grounded on the elements which are the expression of such creation.

Such a concept of design (as a work protected by copyright) implies significant repercussions in national legal systems where an additional qualification to that of the existence of the creative character is required for protection. This is the case, among other things, in Italy, where art. 2 of the Italian Copyright Law only requires, for design, that the work be creative and have artistic value (interpreted by prevailing jurisprudence as the „iconicity“ of the work, i.e. its recognition also by circuits other than commercial ones, and in particular by artistic ones). If the Court’s reasoning is strictly applied, it should be considered that the requirement of artistic value should no longer be required, since it would be contrary to European rules.