Copyright and design rights can apply to the same products

The Court of Justice of the EU (CJEU), however, confirmed that the specific aesthetic effect the design produces has no bearing on whether copyright applies to it.

The court was ruling in a case referred to it by the Supreme Court in Portugal which is considering a dispute between rival clothing manufacturers Cofemel and G-Star. G-Star has claimed copyright and alleged that Cofemel has produced and sold jeans, sweatshirts and t-shirts that copy its designs.

The CJEU said that EU law makers have ensured that protection reserved to designs and that granted by copyright are not mutually exclusive. It considered that designs can be considered a 'work' of copyright if it is suitably original. It said that this means the design must reflect the personality of its author, and be a result of their free and creative choice.

If a design has been determined by technical considerations, rules or other constraints leaving no room for the exercise of creative or artistic freedom, the object cannot be regarded as possessing the originality required for being classified as a 'work' of copyright, the court said. 

"The case is a good example of the difference between UK and EU design law," said intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law. "In the UK, there are circumstances where copyright and UK design right are mutually exclusive because if an item is protected by UK unregistered design right, it cannot also attract copyright."

In its ruling the CJEU considered the wording of both EU copyright law and EU laws on design rights. It highlighted the fact that the laws have different objectives. While copyright protection lasts much longer than design rights and is reserved for objects that can be classed as works, the laws on design rights are aimed at protecting objects which, although new and individualised, are intended for use and mass production.

According to the court, copyright protection granted to an object that is already protected as a design must not have the effect of undermining the objectives and effectiveness of those provisions. The court said that while designs rights and copyright protection can apply cumulatively for the same design, this is only the case in specific cases.

The CJEU further confirmed that the aesthetic effect of a design has no role in the determination of whether a design can be classified as a 'work' for copyright law purposes. It said the aesthetic effect is the result of individuals' own subjective perception of beauty. Classification as a 'work' is only possible if the object in question could be identified with sufficient precision and objectivity and if it further constitutes an intellectual creation reflecting the freedom of decision and the personality of its author, it said.