The CJEU handed down a closely-watched judgment1 yesterday, concerning the existence of copyright in works of applied art, and the assessment of their infringement.
- In Mio v Asplund, the indoor goods and furniture designer Asplund claimed before the Swedish court that a “Cord” dining table sold by Mio infringed copyright in Asplund’s “Palais Royale” dining table. Asplund argued that the Palais Royale was a copyright protected work of applied art, and won at first instance. However, on appeal the Swedish court of appeal sought guidance (amongst other things) as to how the assessment of copyright subsistence should be carried out. For example how, and what factors should be taken into account, to assess whether the work reflected the personality of its author as an expression of creative choice (i.e. the now-normal threshold for copyright subsistence)? And when assessing infringement, should the focus be on what amount of the original work appears in the alleged copy; or whether the two form the same overall impression; or what else?
- In USM v Konektra, USM marketed and sold a modular furniture system, “USM Haller”, consisting of interconnected chrome tubes, balls and coloured metal panels. Konektra offered replacement and extension parts; but also moved into offering and selling all USM Haller components, together with instructions and assembly services. USM sued before the German courts, again claiming that its USM Haller modular furniture constituted a copyright work of applied art, infringed by Konektra’s offering of (essentially) the same complete set. USM lost at first instance and both sides appealed. The German court of appeal sought guidance on similar issues as Mio, including whether there was a “relationship of rule and exception”, meaning stricter criteria applied in assessing originality (and therefore subsistence) for copyright works of applied art, over other subject matter (such as designs)? And what relevance does the author’s subjective intent have in assessing originality, versus objective criteria and evidence?
Taking USM first but ultimately combining the questions before it, the CJEU ruled that:
- Following the CJEU’s seminal decision in Cofemel2 it is both necessary and sufficient that a work of applied art reflects the personality of its author as an expression of their free and creative choices. Only where technical constraints leave no room for creative freedom can originality be ruled out.
- By contrast, EU designs law assesses qualification for subsistence differently – namely, that designs must be new and have individual character.
- However the two regimes have different policy objectives. For a shorter time, designs protect subject matter that, provided it is new and distinctive, can be functional and liable to be mass produced. Copyright protects matter with sufficient merit to qualify as a copyright work, for a significantly longer time.
- It follows there is no automatic connection – or relationship of “rule and exception” – between the two; and the two tests for originality and subsistence of copyright versus design rights must not be confused (although works and products can be protected by both rights). There is no stricter rule when assessing the originality of a work of applied art than there are for other types of works.
- Turning specifically to the question of what impact the author’s subjective intent and any constraints on their freedom of expression may have, the CJEU observed that works of applied art are primarily utilitarian – they result from the author’s knowhow and choices, which may be constrained by technical, ergonomic, safety, regulatory / standards-driven constraints, or merely the conventions of the sector involved. However the work can still be original provided such constraints do not remove all creative freedom and prevent the author from expressing any personality in the subject matter. It follows that the creative nature of the author’s choices cannot be presumed, but must be evidenced by a claimant and identified by the court in question – meaning in turn that the fact a utilitarian product generates an artistic or aesthetic effect is not enough to make it a work of applied art, since it must be shown the same resulted from the author’s free choice reflecting their personality.
- The fact that a copyright work must “reflect” the personality of the author as an “expression” of their free and creative choice means that such choices and the author’s personality must be visible in the final subject matter – i.e. the product itself. Meanwhile the concept of “a work” in copyright similarity points to an objective criteria – again, an identifiable end product or “work” itself. Therefore, while evidence of what happened during the creative process and author’s subjective intent may be taken into account, the end product must reflect the author’s freedom and personality, in and of itself.
- Similarly, other factors – such as the use of other shapes / works already available; inspiration taken from other authors from existing subject matter; similar works on the market; or events subsequent to creation of the work, such as display at exhibitions or its recognition in relevant circles – may be relevant to whether a work, or indeed a creatively arranged composition of already available shapes, is original or not. However the decisive question remains – does the final work reflect the personality of the author as an expression of their free and creative choice?
Turning to the assessment of infringement in Mio, the CJEU was very clear. Copyright is the use of a work without consent, potentially even where it involves the use of a relatively minor part of the work(s) in question. The assessment of copyright infringement therefore merely involves identification of the original work, and asking whether it is reproduced in the infringement. Conversely, infringement of a design involves an assessment of the overall impressions created by the two subject matters, which is a different, and irrelevant, test for copyright purposes. Neither does the extent of protection of a copyright work, once protected, depend on the degree of the author’s freedom (unlike a design).
As regards similar independent works / products on the market, and common sources of inspiration, the CJEU confirmed that these alone aren’t decisive. Again, the question remains whether any original element of the copyright work has been reproduced in the alleged copy. And while the existence of similar independent works on the market might “close down” the creative possibilities for a work of applied art, the fact they do exist doesn’t mean copyright protection is automatically ruled out.
Overall, the judgment is very useful in clarifying a lot of the questions, issues and arguments designers (and their lawyers) have when identifying the existence of their rights in works of applied art, and when enforcing them; in particular in clarifying that the basic rule for the existence of copyright under Cofemel applies, and that “overall impression” does not form part of the test for infringement.
Bear & Wolf regularly acts for creatives and right owners in the product design field. Should you require any assistance or further information, please don’t hesitate to get in touch with us.