Following several high-profile cases including the famous “Stormtrooper” decision*, it was generally understood that for copyright to subsist in functional, three-dimensional products, they required some degree of artistic merit.
In late 2019, the CJEU decision in Cofemel shifted the boundaries, removing any discretionary requirement at Member State level for artistic or aesthetic quality. The result: functional products may be protectable as copyright works, potentially increasing the length of protection from 10 years, under UK design right, to 70 years after the death of the author. In this summary, we look at where we are now, and how recent case law has blurred the lines between copyright and designs.
Brief overview of the law on design rights v copyright in the UK
Unregistered design right (UDR) protects the shape or configuration of the whole or part of an article, excluding surface decoration. The design must be original and must not be commonplace. Copyright subsists in original literary, dramatic, musical or artistic works. Artistic work includes graphic work, a photograph, sculpture or collage, irrespective of artistic quality, or a work of artistic craftsmanship.
UDR and copyright arises automatically in the UK.
Change of law through recent judgments
In the CJEU decision in “Cofemel” (Cofemel v G-Star Raw, C-683/17), to qualify as a works:
- There must be existence of an original object and expression of intellectual creation.
- The subject-matter must be identifiable with sufficient precision and objectivity.
- The author should have free creative choice and not be constrained by purely technical considerations.
- There should be no subjectivity in identifying the subject matter.
Recognising a disparity between copyright practices across the EU, Cofemel sought to harmonise the definition of a work across member states by, essentially, removing any requirement of subjective artistic merit.
In “Brompton Bicycle” (Brompton Bicycle Ltd v Chedech/Get2Get, C-833/18), applying Cofemel, the CJEU found that a functional shape (in this case, a folding bike) can be protected by copyright, provided it meets the requirement of originality and that the design is not exclusively dictated by its technical considerations.
In the “Response Clothing” decision (Response Clothing Ltd v The Edinburgh Woollen Mill  EWHC 148 (IPEC), 29 January 2020), the UK Intellectual Property Enterprise Court (IPEC) considered the implication of Cofemel, reaffirming that the previous requirements for ’artistic or aesthetic’ value will likely fall contrary to CJEU case law. Here, the UK courts found that copyright can subsist in fabric patterns as works of ‘artistic craftmanship’.
The recent shift in case law will no doubt be welcomed by UK designers, potentially increasing the length of protection in a functional designs from 10 years to well in excess of 70.
Whilst Cofemel is yet to be properly tested in the UK Courts, we will no doubt see a surge in copyright claims for functional designs, with UDR pled in the alternative.
This leaves us to question the future applicability of UDR. Where will the courts draw the line? What types of products or designs will fall outside of copyright protection? Post-Brexit will the UK courts revert back to the pre-Cofemel requirement of artistic merit. Watch this space!
* Lucasfilm Limited and others v Ainsworth and another  UKSC 39, 27 July 2001