Webinar
Copyright protection
Copyright protection
Do the statutory limitations on copyright protection for utilitarian designs have any place in UK law following the Court of Justice’s decision in Cofemel?
In this webinar, we’ll explore the impact of this Court of Justice of the European Union’s decision and how it may be applied by rights holders to expand the scope of future claims.
We will also answer some commonly asked questions on copyright issues.
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Webinar transcript
(Please note this is auto-generated and un-edited)
0:40
Hi my name is Mauro Paiano and I am a partner in the IP team here at Shakespeare Martineau there. Welcome to today's webinar on copyright after quote from them.
0:48
Well the tectonic plates making up copyright law are constantly moving often playing catch up with technology.
0:55
With the EU's wish for greater harmonization of IP laws, the implementation of the 2002 ... Directive International Law represents the start of a harmonized EU copyright law.
1:07
Following which a body of case law from the Court of Justice has evolved to provide guidance.
1:12
Most recently the Court of Justice has provided some clarity and connection with the duality of copywriting design protection.
1:18
The utilitarian designs. Before getting to that recent case law, let's have a quick reminder of the copyright position in the UK.
1:28
Unlike some EU countries in the UK, they act to set out a definitive list of creative spheres in which copyright can be applied and into which irrelevant work must fall. For example, literary, dramatic, musical or artistic works.
1:45
For the purposes of the presentation, I want to focus on Artistic works in particular.
1:50
Section four of the Copyright Designs and Patents Act provides that artistic works will include graphic works, photographs, sculptures, or collages irrespective of artistic quality.
2:01
In each case, it's necessary to show that the work is original but in the UK this requirement has always represented a low threshold. Then the context of artistic works, no esthetic considerations should be taken into account or at least that's what they access.
2:16
Notwithstanding the wedding the legislation, that's not always been the position.
2:21
Take for example the 2011 Lucasfilm and Ainsworth decision.
2:25
When the House of Lords held the Declaim model, Stormtrooper helmet use to create Thong probes couldn't enjoy copyright protection.
2:33
Because it was a utilitarian object with a functional purpose rather than an artistic one.
2:39
And the UK we've also imposed further limitation in the form of Section 51 of the Act which imposes limitations on what copyright works are infringed through three-dimensional reproduction.
2:51
As a consequence, while copyright in the UK offers protection against two-dimensional copying of a design drawing or the design.
2:57
It won't offer protection against three-dimensional reproduction, unless the designing question itself amounts to an artistic work or typeface.
3:06
Is effectively remove Copyright Protection Against Street Dimensional reproduction of utilitarian designs unforced rights holders to rely on unregistered and registered design rights. And, in some cases, some utilitarian designs wouldn't receive any protection at all.
3:20
So against that background, it is the delineation between designs, which qualify as artistic works, and those which don't still applicable.
3:29
And is it still correct to apply limitations of the type envisaged by section 51 of the Act?
3:35
This is something which has been indirectly impacted by the Court of Justice decision in the case of ... and G-Star rule, which was issued in September 2019.
3:46
It's referenced at the Court of Justice was the result of questions posed by the Supreme Court Cultural, in the Context of Upending Dispute between ..., which is a Portuguese clothing business.
3:56
And J Star Rule, which is a well-known manufacturers manufacture of clothing, similar type clothing G-Star rule has been using its T stop running since the 19 nineties.
4:10
And then developed a range of genes known as arc and the range of sweatshirts and T-shirts known as Riley.
4:17
The complaint initially started in 20 13, when G-Star alleged COPPA Mountain copied its clothing that in doing so it infringe copyright.
4:26
In particular, G-Star relied upon the three-d. shapes, the placement of certain components, the Assembly Scheme, and various colors.
4:34
G-Star argued that its models of clothing constituted original intellectual creations that they qualify this copyright works and as such, they enjoyed protection but yet, the relevant Portuguese Copyright legislation.
4:47
The basis of co females depends was to argue that G styles, designs didn't qualify as works and therefore will not capable of protection.
4:56
G styles complaint had initially been upheld, at first instance, and on a pale and eventually found its way to the Supreme Court Portugal, which then which then went on to refer a couple of questions to the Court of Justice.
5:10
The primary question, which was asked, was whether article TWA of the Directive precludes national legislation from conferring protection to design such the clothing designs an issue.
5:21
On the ground that over and above that practical purpose, they generate a specific and esthetically significant visual effect.
5:31
Article to one of the Emperor subdirectory dealing with the reproduction right states that member states should provide for the exclusive right to authorize or prohibit direct or indirect, temporary or permanent reproduction, by any means, and in any form, in whole, or in part, by authors of their works.
5:49
And before we look at what the Court of Justice subsequently decided, let's briefly look at the trajectory of previous UK. So on the issue, originality and how this is developed.
6:00
The starting point is to consider what is meant by work.
6:04
Guidance was provided in the Info Pack decision in 2009.
6:08
In this case, the Court of Justice had to decide whether the storing imprinting of 11 word extracts from a newspaper article, amount to the reproduction of a copyright work within the meaning of Article two.
6:21
As part of its overall decision, the Court of Justice concluded that for an object to be classified as a work within the meaning of copyright, it must have an original character, IE it represents the result the intellectual creation of the author.
6:35
This is known as the own intellectual creation test.
6:38
The Court of Justice went on to conclude, that's an 11 word sentence could be protected if the elements reproduced with the expression of the author's own intellectual creation.
6:49
It's worth remembering that as far as England and Wales is concerned, in the newspaper licensing agency and Meltwater decision in 2011.
6:57
The Court of Appeal confirmed that the ...
6:59
decision didn't talk to the original originality test, which has been applied historically in the in the in England and Wales, and that traditionally he looked at skill and labor.
7:09
And so the own intellectual creation test has since been applied by the English court on a number of occasions.
7:16
The next decision of relevance is Fluorspar Samira in 20 11, in which the Court of Justice made it clear that any work whether or not it is or has been subject to registered or unregistered design right protection can enjoy copyright protection.
7:34
The court confirmed that it was up to the member states to determine the extent to which the conditions under which such protection is conferred, including the level of originality conferred.
7:47
In the case of Eva Marie, a painter and standard ..., which was actually in the same year, but a little later on the Court of Justice also noted that copyright protects only original subject matter. In other words, the author's own creation.
8:02
It also recall that's an intellectual creation, is an author's own. It reflects the author's personality. In other words, the author's able to express his or her creative abilities in the production of the work by making free and creative choices.
8:19
More recently in 20 18 in the case of Lola, Anglo, and Smelly Foods, the Court of Justice was asked to consider whether copyright can protect the taste of foodstuff.
8:30
The courts of justice indicated that sent to the intersect directive.
8:33
The taste of food could only protect it through copyright. It could be classified as a work in its own right.
8:39
So, this required a number of considerations.
8:42
The subject matter consent had to be original in the sense that it was the author's own intellectual creation and it had to be protected by copyright in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
9:00
In this case, it wasn't possible for copyright to protect the tasting food because it wasn't possible to pin down the taste with the necessary precision and objectivity.
9:12
Finally, in the case of median and ...
9:14
Republic poach Fund in 20 19, the Court of Justice was asked to consider whether official documents would meet the author's intellectual creation test.
9:23
In this decision, the Court of Justice observed that, in determining whether a subject matter can be classified as it were, it's important that the author is able to make free and creative choices, resulting in an intellectual creation.
9:37
So having looked at how the EU case law has evolved, I want to return to the female decision itself.
9:44
Now, at a higher level, the question before the court also dealt with the issue of whether EU member states have the freedom to choose the threshold, which works of applied art, industrial designs, and works at design, should meet if that qualify for copyright protection.
9:59
In its judgement, the Court of Justice recall that the notion of a work is an autonomous notion of EU law, which requires a uniform of interpretation across the EU.
10:09
It went on to indicate that's qualified, copyright work under the ... directive.
10:14
There needs to be fulfillment of cumulative requirements.
10:18
The subject matter concerned must be original in the sense that it's the author's own intellectual creation, ... test.
10:25
It has to reflect the author's personality and express the author's frame creative choices and the protection of that work, that's the paying a test that real-time and only something which is the expression of the author's own intellectual creation may be classified as a work within the meaning of the directive.
10:40
This implies that the subject matter tissue has to be identifiable with sufficient precision and objectivity, even though that that expression is not necessarily in a permanent cool.
10:49
And that's still about a test.
10:51
Now having considered those requirements, the Court of Justice then went on to decide the primary question in the affirmative. It confirmed that the esthetic effect that may be produced by design does not constitute a factor that is relevant to the determination of whether that design can be classified as a work.
11:08
Having confirmed that no additional thresholds can be imposed when considering whether a work qualifies for copyright protection.
11:15
It's now clear that the basis on which copyright can subsist in a functional product should effectively be the same as it is for all other copyright works.
11:23
Conversely irrespective of how esthetically striking a piece of clothing or other object may be it won't qualify for copyright protection unless it satisfies the EU's originality threshold.
11:37
So where does this leave the juxtaposition between design and copyright legislation?
11:43
What was interesting about this decision is the commentary on the tension between legislation specifically enacted to protect designs and the general copyright protection, which is insured by the directive itself.
11:55
The Court of Justice acknowledged that these forms of protection are not mutually exclusive and so through the principle of accumulation, Parties can take advantage of both the protection of designs on the one hand with copyright protection on the other.
12:09
Consequently, provided work passes the Court of Justice's assessment.
12:13
There's nothing to prevent the design, which is protected through design specific legislation, from also being protected as a copyright work.
12:22
The court went on to discuss the relationship between the protection of designs and copyright, and observed that each form of protection is used different objectives.
12:31
I mean, the preceding Advocate General's opinion.
12:34
The Advocate General warned about the harmful consequences of excessive protection for designs are models, and wounded the risk of copyright, undermining the design law system with negative effects, including devaluation of copyright because it would potentially protect But now objects encompassing functional three-dimensional designs with little originality.
12:54
It would restrict competition owing to copyrights long duration, and it would lead to legal uncertainty because competitors can't know if an expired design is still protected by copyright.
13:05
The course justice didn't quite go that far and its decision. It did observe that in granting copyright protection to subject matter. Where it's also protected isn't done.
13:14
It was important not to undermine the respective objectives and effectiveness of the two sets of rules which determine copyright and design protection.
13:22
And hence, the cumulative grant of such protection should only invest in besieged in certain situations.
13:30
Conceivably, the decision means that where the conditions refer to emit a wide variety of utilitarian products may enjoy copyright protection, dying foods, and in some European jurisdictions, this will represent a major sea change.
13:44
So, what about the UK position?
13:48
Well, in January this year, the intellectual property Enterprise Court issued its decision in response clothing, and Edinburgh willingham.
13:56
The claimant was a clothing company and the defendant was a major retailer clothing with 400 stores in the UK.
14:03
Between 2009 and 2012, the claimant supplied the defendant with garments made with a fabric design described as a wave arrangement.
14:11
When the two parties fell out of a price, is the Defendant Secure third, parties to supply garments using a similar fabric design.
14:19
The defendant subsequently sued for copyright infringement relying on copyright in its way designed on the basis that either it was a graphic work, or it was a work of artistic craftsmanship.
14:30
At trial, he's on a Judge Haycock found that the fabric design was not a graphic work.
14:35
He then went on to consider whether it could be treated as a work of artistic craftsmanship.
14:40
He observed that if the fabric could not be considered to be uplift of artistic craftsmanship.
14:45
The design knitted into it could not be protected by any of the provisions of the copyright designs and patents act, because it would have to fall within one of the categories provided for under Section one.
14:57
Following the review of the case law on the meaning of artistic craftsmanship he turned to EU law.
15:02
And in doing so, he observed that the notion of what a copyright work must. He observed that the notion of what is, a copyright work must receive uniform interpretation in accordance with the bowler, and he went on then to apply. And he observed that national law could not impose a requirement of artistic value. He went on to conclude the subject to the fabric thing original, in other words, the author's intellectual creation.
15:29
The design would be at work within Article two of the directed.
15:33
He acknowledged that conformity with Article two as proposed by ... would exclude any requirement that the padre should be autistic, in other words it should have esthetic appeal.
15:44
Ultimately the judge felt he didn't have to consider the possibility that work didn't fall within one of the preset categories because the fabric did have esthetic and pails, therefore copyright had been infringed.
15:56
The case does, however suggests that even if esthetic impale had not been found, the work would have qualified to copyright protection pursuant to the co fermented decision, irrespective of whether it fell within one of the categories provided for within the copyright designs and patents Act.
16:14
Insofar as we are obliged to interpret the act in accordance with a law, there should be no limitation imposed on what can be protected by copyright, provided the working question falls within the qualifications provided for in a caseload.
16:29
To the extent that the UK prevents three-dimensional infringement of copyright work, unless the item in question is an artistic work, or a typeface, that's the Section 51 exclusion.
16:40
It seems that the UK legislation is currently out of step with EU Castell, and would require a change, much in the same way that Section 52, which had previously limited the term of copyright.
16:52
Where artistic works were manufactured by an industrial process, was subsequently repealed, following the floss Decision.
17:01
So, will the UK repeals Section 51, well, so far, the issue hasn't arisen.
17:06
It's nevertheless clear that copyright might become increasingly attractive to rights holders with advantages over design protection.
17:14
In particular, copyright may be easier to acquire. There's no registration required. There's no need to prove novelty, and there's no need to show design has individual character.
17:25
Copyright has a longer shelf life than than is the case under unregistered or registered designs.
17:31
Copyright is not constrained by exclusions such as must fit, mismatch, or technical functions, and it has a different test of infringement. Additionally, copyright can also extend tomorrow or more rights, for example, the rights of attribution.
17:47
Since it appears that the UK is bound to follow code for the time being at least, If the facts of lucasfilm came before the English court again, copyright protection ought to be available, provided claimant could establish that its design of the helmet fulfill the requirements set out in ....
18:04
Likewise, once you have to show artistic craftsmanship, presumably there's no longer any need to do so, so henshaw rest of arm.
18:12
The leading decision on artistic craftsmanship might have been decided differently.
18:18
In fact, any UK legislation, which imposes a copyright threshold over and above the qualifications, that's actually a caseload may potentially be inconsistent with the infrastructure directive.
18:30
Perhaps, the most pressing question will be whether, following the end of the transition period this year, the English courts will still be willing to keep pace with the EU interpretation of copyright.
18:41
The time being. However, it looks as if rights owners do have an extra weapon which they can rely on to utilize in the form of copyright infringement.
18:49
Especially in connection with utilitarian designs before, UK legislation would have made it more difficult or may have prevented it all together. If you do have any questions in connection with anything discussed in this webinar, please do not hesitate to e-mail me at ... SHMA.co.uk and please do visit our SHMA on Demand pages to access recordings of all our webinars and smartphones. Thank you for watching.
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