G-Star jeans

Sascha Pres of the MARQUES Copyright Team and his colleague Stefanie Nabrotzki provide a report on the recent CJEU judgment in the case between G-Star and Cofemel.

“Brands confronting change” was the theme of this year’s MARQUES Annual Conference. This claim, however, also perfectly describes the recent CJEU decision regarding copyright protection, which involved brand owner from the fashion world – G-Star – and in which the Court specified the requirements for copyright claims in the field of (branded) products.

Generally speaking, whether a product’s design is beautiful or ugly, art or kitsch lies obviously in the eye of the beholder. Now, the CJEU held that whether the design of a product qualifies as a copyrighted work shall not depend on the extent to which it has an aesthetic effect.

In its judgment of 12 September 12 2019 in Cofemel – Sociedade de Vestuário SA v G‑Star Raw CV (C-683/17), the CJEU has clarified that patterns and models, in addition to design protection, may enjoy copyright protection if they fulfil the general requirements of copyright protection.

Copyright and applied art

In order to qualify as a work under copyright law, the subject matter must be objectively identifiable and constitute an intellectual creation reflecting the personality and freedom of choice of its author (originality). The fact that the design unfolds a specific aesthetic effect beyond its form that is dictated by the function served, in contrast, is not significant for its classification as a work.

In the CJEU case, the fashion company G-Star relied on copyright law when attempting to prohibit a competitor from imitating special models of jeans and t-shirts in Portugal. G-Star prevailed in two instances on the grounds that copyright protection of works of applied art would not require a particular degree of aesthetic value.

The Portuguese appeal court referred the case to the CJEU and asked whether works of applied art enjoyed copyright protection on the same conditions as those of literature and art, i.e. if they have a certain originality such that they are the result of their author’s intellectual creation or whether their protection was to be made dependent on their aesthetic or artistic value.

It is not a secret that the CJEU applies uniform terms of protection for objects of diverse categories of works, but it remained somewhat unclear whether those criteria should also apply to works of applied art or whether a special level of aesthetic design continued to be required.

The CJEU now clarifies that copyright protection for works of applied art shall not depend on special requirements that deviate from those applying to other categories of works and emphasizes at the same time that copyright protection and design protection should be cumulated only in specific cases so as not to impair their fundamentally different objectives. The Court leaves open what those specific cases are, but clarifies that the criterion of aesthetic surplus – since it is the result of a subjective observation – is not suited to serve as threshold for assessing whether the object is a personal intellectual creation and hence original.

The mere fact that an overall impression produces an aesthetic effect beyond the form that is prescribed by the object’s function cannot justify copyright protection – vice versa, it is not a prerequisite for it either.

In favour of brand owners

The decision may have an impact on brand owner’s strategies regarding the protection of the forms and packaging of their products and therefore has the ability to change the playing field in favour of brand owners.

While getting a product protected by a three-dimensional trade mark is not a safety net and the registered design provides protection for up to of 25 years only, copyright protection lasts until 70 years post mortem auctoris, without any need for registration. This is clearly a sharp and long-lasting weapon.

Sascha Pres and Stefanie Nabrotzki are lawyers with SKW Schwarz Rechtsanwälte and Sascha is a member of the MARQUES Copyright Team. Franz Gernhardt, of Bird & Bird LLP and Chair of the Team, also contributed to this article