By its recent decision of 11 June 2020 in Case C-833/18, the Court of Justice of the European Union (CJEU) confirmed that a certain shape, even if already covered by patent protection, can also be protected by copyright if the requirements for protection are fulfilled. In particular, according to the CJEU, even the shapes (at least in part) necessary to achieve a technical result may be sufficiently „creative“ to obtain copyright protection, even if already covered by patent protection (now expired).


The proceedings before the CJEU
The manufacturer of a well-known folding bicycle applied to the Business Court in Liège, Belgium, for a declaration of infringement of its copyright in relation to the product itself by a bicycle with a highly similar visual appearance, manufactured and marketed by a competitor. The shape was characteristic of a folding bicycle capable of taking three different positions (open, stand by and folded while remaining balanced on the ground) and had already been the subject of a patent which subsequently became public knowledge.
The competitor argued that the shape of the bicycle at issue would not be eligible for copyright protection because it needed the technical function (folding mechanism), as confirmed by the existence of a patent for invention (now expired) on the very same shape.
Consequently, the Belgian Business Court has referred to the Court of Justice of the European Union the question whether works whose shape is necessary to obtain a technical result are excluded from the protection granted by copyright and whether, in order to consider a shape to be technically necessary, account must be taken, inter alia, of the existence of earlier patent protection or the existence of other possible shapes which would enable the same result to be achieved.

The CJEU Decision
In answering the questions posed by the Territorial Court, the Court of Justice of the European Union confirmed that, according to the law of the Union, the meaning of „work“ consists of two elements: on the one hand, it implies an original object which is an intellectual creation belonging to its author and, on the other hand, it requires an expression of that creation. In relation to the concept of ‚originality‘, the CJEU held that it is sufficient for the object to reflect the personality of its author, manifesting the author’s free and creative choices, even if the shape of the object is determined by technical reasons. Obviously, according to the CJEU, a free and creative choice of the author must also be found in the choice of technical solutions. The only limit that meets the protection of copyright on shapes is therefore the assessment of the author’s „creativity“, i.e. whether the creation of an object has been determined by technical reasons, rules or other constraints that have left no room for the exercise of the author’s creative freedom or have left it so limited that the idea and its expression are confused. This regardless of whether there are other possible shapes, i.e. a (expired) patent on the shape itself.

Potential (and expected) competitive implications
The decision made by the CJEU follows on from previous decisions that have admitted the cumulation between the shapes of copyright protection with those of design and patents for invention. The same Court recently ruled that particular types of jeans and sweatshirts, already protected as designs, could also be protected from a copyright point of view if the shape could be determined by creative choice and expression of the author’s personality (see decision of 12 September 2019, case C-683/17 „Cofemel“). However, such an interpretation brings with it clear anti-competitive and possible system-breaking effects that cannot be underestimated (on this point, see below the Opinion of the Advocate General in Case C-833/18).
Indeed, we should not forget that our system is conceived to achieve a proper balance between IP monopolies, aimed at fostering creativity, the development of technological progress and free competition. Increasing the possibility of cumulation of exclusive rights on certain shapes or objects reduces, as a result, the possibility of competitors entering the market, thus increasing the (legal) monopoly on certain shapes. In addition, legitimizing the use of the most extensive copyright protection on certain shapes that should have been the object of design protection and/or patent protection for invention also risks to discourage the use of such types of protection because they are more expensive and complex to obtain (accordingly, see also the ZANON, I modelli di utilità, in Codice della proprietà industriale edited by Adriano Vanzetti, Giuffrè Editore 2013, 1030 ff.). Moreover, it cannot be overlooked how the court’s arguments do not appear completely clear, since the copyright typically creative space does not normally exist when facing a functional choice, which as such is substantially necessary because of the function that is intended to be achieved.
However, the protectionist drift now mentioned does not seem to affect the decisions made by the CJEU on the protection of shape trademarks. In fact, the case law of the Court of Justice has always been opposed to the protection of even partially functional shapes as trademarks, so that the Court specified in Decision C-48/09 (Lego Iuris case) that “when the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution” (Par. 46). This is because “in the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators” (Par. 46). It is true that the copyright protection is not perpetual, expiring 70 years after the death of the author, but it is also true that this is a very long period of time, which in many cases completely exhausts the concrete possibilities of exploitation of an invention or a solution.
It is therefore clear that there is a divergence between decisions made by the same Court on the protection of shape in the fields of copyright and shape trademarks, with evidently conflicting reasons. It is desirable, in order to keep the system alive, that the CJEU will harmonise its decisions on the cumulation of shape protections so as to bring back clarity to users.

Alessandro Bura