Many of you will be familiar with the classic Brompton Bicycle, which was designed by Andrew Ritchie in 1979 and has since taken over the streets of London, and other major cities, as the commuters’ preferred choice of folding bike. Given the age of the design, Brompton are now seeking rather novel intellectual property arguments to seek to protect their key seller.

On 6 February 2020, in the case of SI, Brompton Bicycle Ltd (‘Brompton’) v Chedech/Get2Get, Case C-833/18, Advocate General Campos Sánchez-Bordona (‘AG’) gave the opinion that because the Brompton bike’s appearance was “exclusively dictated by its technical function” it could not be protected by EU copyright law.

If the CJEU follows AG’s opinion, it would mean that Brompton’s attempt to protect its design by way of the long life of copyright has failed. Brompton sought to obtain copyright protection for their famous folding bike after it had lost its patent protection. The patent protected the three position folding mechanism of the Brompton bike – i.e. unfolded, stand-by and folded. However, Get2Get swooped in after the patent expired and produced an equivalent – the Chedech bicycle – which also folds into three different positions, and which AG said “is similar in appearance” to the Brompton bike. See the comparison below:

EU Copyright Law

A copyright is, at its simplest, the exclusive right to copy certain ‘works’ – such as ‘literary and artistic works’. It provides automatic protection of these works, meaning you do not need to register a copyright to have a copyright. Indeed, literary and artistic works include “every production in the… literary, scientific and artistic domain… such as… works of applied art”.

AG accepted, without discussion, that the Brompton bike falls under the definition of ‘applied art’. ‘Applied art’ can generally be said to be a work (e.g. an object) which serves a utilitarian purpose while creating its own visual and distinctive aesthetic effect.

The Brompton Case

A patent application was filed for the Brompton bike in 1979, and granted in 1981. The maximum time period a patent lasts before expiration is 20 years from the date of filing – so that’s the year 1999 in this case.

Get2Get started producing a similar bike after the patent expired, and Brompton tried to protect its intellectual property by bringing an action against Get2Get for the infringement of copyright.

In response, Get2Get argued the Chedech bike’s appearance was dictated by the technical constraints involved in producing a foldable bike, and they chose to adopt Brompton’s folding technique because this was ‘the most functional method’ for making foldable bikes. Indeed, a patent no longer protected the technique, so Get2Get thought they could now use it for their own bikes.

Brompton countered by arguing that, because there are other foldable bikes on the market which are different in appearance to their own, they had a creative choice in designing the Brompton bike’s appearance and it is therefore an original work that is copyright-protected – Get2Get had no right to copy.

Get2Get’s argument fundamentally related to the issue of whether Brompton had any creative freedom in how they designed their bike, or whether the bike’s shape was necessary in order to make it foldable. If there was no room for creative freedom beyond what was necessary to make it foldable, no copyright protection is available. Hence AG said: “if the appearance of a work of applied art is exclusively dictated by its technical function, as a decisive factor, it will not be eligible for copyright protection”.

Alternatively, if there was creative freedom beyond the aforementioned, AG said copyright protection is available. AG caveated this, though, by saying: “the difficulties arise, however, where designs combine functional and artistic features… if the functional elements predominated over the artistic element to the extent that the latter became irrelevant”. In such an instance, copyright protection would cease to be available.

Finally, AG considered the relevance of the intention of the inventor or designer, and the alleged infringer, in the above context.

Discussion

a.) ‘That careful balance’

In coming to the above conclusions, AG made some compelling comments on the public versus private interests in allowing an ex-patented industrial product to be copyright-protected. In discussing this ‘cumulation’ of IP rights, AG hinted at a chilling effect which might occur if he found in favour of copyrighting the Brompton bike.

AG said: “that careful balance [between the public interest in ensuring a relatively short patent protection period, and the private interest of inventors and designers in having sole economic benefit from their inventions and designs during this short period]… would be upset if the allotted term were simply extended to reach the generous periods afforded to copyright protection”.

AG explained this by saying would-be patent applicants would choose instead to copyright their creations, and therefore protect them from the public for a much longer term, for a much lower cost, and without the need to register the copyright which in itself has an effect on legal certainty that AG said is “far from negligible”.

All in all, AG seemed to willingly grapple with the wider issues at play in this case and is strong in his conviction that the public interest is a very important consideration.

b.) Brompton’s argument backpedalled

Brompton’s main argument was that there are competing bikes which offer the same foldable bike system without looking like their bike, so there was no need for Get2Get to copy theirs. This was an attempt to prove the originality of the Brompton bike, which is one of the essential criteria for the classification of a creation as a work.

The argument seems counter-intuitive – it says “look! There are other bikes on the market that are similar but not identical to ours, so ours must be original”. Perhaps the weakness of this argument gave AG the gusto to rely on analogies to give his contrasting opinion that the Brompton bike is not original enough to qualify for copyright protection.

He analogised with trade mark and design law to concur with a judgment in a previous case (Cofemel) that an author’s original intellectual creation is not capable of copyright protection where the creation is dictated by “technical consideration, rules or constraints which leave no room for creative freedom”.

AG shut down Brompton’s argument further by saying that “the existence of other possible shapes which allow the same technical result to be achieved is a circumstance that can be taken into account by a court but that it is not a conclusive factor by itself”.

c.) Intentions – how important are they?

AG toyed with the idea of introducing a mental element to the assessment of whether something should be copyright protected. AG says the intention of the alleged infringer to achieve the technical result is “not, in principle, relevant” but goes on to discuss that the inventor or designer’s original intention may be relevant. This opens the door for the CJEU to consider the issue and it will be interesting to see what the CJEU has to say about it.

What does this mean for you?

The case is a cautionary tale to those who seek to rely on copyright protection after their patent, or indeed design right, has expired. It demonstrates that the courts are conscious of the chilling effect that may occur if they are too lax in allowing such a cumulation of rights.

The case also warns creators of products which are purely functional or are a mix of functionality and aesthetic effect. To stand a chance of copyrighting your product, you should ensure its functionality does not kill-off your creative freedom in how the product is designed.

We are a specialist IP team at JMW Solicitors LLP London, led by Philip Partington, and advise clients, large and small, on their IP rights.