CJEU, 3rd chamber, September 12, 2019, No C-683/17

THE COURT (Third Chamber),

1 This request for a preliminary ruling concerns the interpretation of Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10).

2 The request has been made in proceedings between Cofemel — Sociedade de Vestuário SA (‘Cofemel’) and G-Star Raw CV (‘G-Star’) concerning compliance with the copyright claimed by G-Star.

Legal context

International law

The Berne Convention

3 Article 2(7) of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act of 24 July 1971), as amended on 28 September 1979 (‘the Berne Convention’), states, inter alia:

‘… it shall be a matter for legislation in the countries of the Union [constituted by that Convention] to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union [constituted by that Convention] only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.’

The WIPO Copyright Treaty

4 On 20 December 1996 the World Intellectual Property Organisation (WIPO) adopted in Geneva the WIPO Copyright Treaty, which was approved on behalf of the European Community by Council Decision 2000/278/EC of 16 March 2000 (OJ 2000 L 89, p. 6) (‘the WIPO Copyright Treaty’).

5 Article 1(4) of the WIPO Copyright Treaty, that article being headed ‘Relation to the Berne Convention’, states:

‘Contracting Parties shall comply with Articles 1 to 21 and the Appendix of the Berne Convention.’

EU law

Directive 2001/29

6 Recital 60 of Directive 2001/29 states:

‘The protection provided under this Directive should be without prejudice to national or Community legal provisions in other areas, such as industrial property, …’

7 Articles 2 to 4 of that directive are respectively headed ‘Reproduction right’, ‘Right of communication to the public of works and right of making available to the public other subject matter’ and ‘Distribution right’. Those provisions require, inter alia, that Member States ensure that authors have the exclusive right to authorise or prohibit reproduction of their works (Article 2(a)), the exclusive right to authorise or prohibit the communication of their works to the public (Article 3(1)) and the exclusive right to authorise or prohibit distribution of their works (Article 4(1)).

8 Article 9 of that directive, headed ‘Continued application of other legal provisions’, provides that that directive does not affect, inter alia, provisions concerning other areas. A number of language versions of that article, including the German, English, Spanish, French and Italian versions, state that those areas include, inter alia, those of patent rights, trade marks, design rights and utility models. The Portuguese version of that article refers, for its part, to the areas of patent rights, trade marks and utility models, without mentioning design rights.

Directive 98/71/EC

9 Recital 8 of Directive 98/71/EC of the European Parliament and the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28) is worded as follows:

‘… in the absence of harmonisation of copyright law, it is important to establish the principle of cumulation of protection under specific registered design protection law and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred.’

10 Article 1(a) of that directive, that article being headed ‘Definitions’, states that ‘design’ means ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’

11 Article 17 of that directive, headed ‘Relationship to copyright’, provides:

‘A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.’

Regulation (EC) No 6/2002

12 Recital 32 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), states:

‘In the absence of the complete harmonisation of copyright law, it is important to establish the principle of cumulation of protection under the Community design and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred.’

13 The definition of a ‘design’ in Article 3(a) of that regulation is the same as that in Article 1(a) of Directive 98/71.

14 Article 96(2) of that regulation, that article being headed ‘Relationship to other forms of protection under national law’, provides:

‘A design protected by a Community design shall also be eligible for protection under the law of copyright of Member States as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.’

Portuguese law

15 Article 2 of the Código do Direito de Autor e dos Direitos Conexos (Code on Copyright and Related Rights), headed ‘Original works’, is worded as follows:

‘1. Intellectual creations in the literary, scientific and artistic fields, irrespective of their genre, form of expression, quality, mode of communication and objective, shall include, inter alia:

…

(i) Works of applied art, industrial designs and works of design which constitute an artistic creation, irrespective of the protection relating to industrial property;

…’

The dispute in the main proceedings and the questions referred for a preliminary ruling

16 Cofemel and G-Star are two companies active in the sector of design, production and selling of clothing.

17 Since the 1990s G-Star has made use, as the proprietor or as the exclusive licence holder, of the trade marks G‑STAR, G‑STAR RAW, G‑STAR DENIM RAW, GS‑RAW, G‑RAW and RAW. The clothing designed, produced and placed on the market under those marks includes jeans of the design known as ARC and sweatshirts and tee-shirts of the design known as ROWDY.

18 Cofemel designs, produces and sells jeans, sweatshirts and t-shirts under the TIFFOSI trade mark.

19 On 30 August 2013, G-Star brought an action before a Portuguese court of first instance requesting that Cofemel be ordered to cease any acts constituting an infringement of its copyright and unfair competition in relation to it, and to compensate it for the harm suffered in that regard and, in the event of further infringements, to pay it a penalty payment in respect of each day of duration of each of the acts until they cease. In support of its action, G-Star argued, inter alia, that some designs of jeans, sweatshirts and t-shirts produced by Cofemel were comparable to its ARC and ROWDY designs. G-Star also claimed that the latter clothing constituted original intellectual creations and, as such, they ought to be classified as ‘works’ protected by copyright.

20 Cofemel’s defence was, inter alia, that such clothing designs could not be classified as ‘works’ entitled to such protection.

21 The court of first instance before which G-Star’s action was brought partly upheld its action, and ordered Cofemel, inter alia, to cease its infringement of G-Star’s copyright, to pay the latter a sum corresponding to the profits obtained from the sale of the clothing produced in breach of that copyright and to pay it a daily penalty payment in the event of a further infringement.

22 Cofemel brought an appeal against that judgment before the Tribunal da Relação de Lisboa (Court of Appeal, Lisbon, Portugal) which upheld it. In support of that decision, that court considered, first, that Article 2(1)(i) of the Code on Copyright and Related Rights ought to be construed, in the light of Directive 2001/29, as interpreted by the Court in the judgments of 16 July 2009, Infopaq International (C‑5/08, EU:C:2009:465), and of 1 December 2011, Painer (C‑145/10, EU:C:2011:798), as meaning that copyright protection extended to works of applied art, industrial designs and works of design, provided that such subject matter was original, in other words that it was the result of the author’s own intellectual creation, there being no requirement that it had any particular degree of aesthetic or artistic value. Further, that court held that, in this case, the ARC and ROWDY clothing designs of G-Star constituted works entitled to copyright protection. Last, that court held that some of the clothing produced by Cofemel infringed G-Star’s copyright.

23 Hearing an appeal brought by Cofemel, the referring court, the Supremo Tribunal de Justiça (Supreme Court, Portugal) considers, in the first place, that the following facts are established: (i) the clothing designs of G-Star at issue in the appeal were designed either by designers employed by G-Star or by designers acting on its behalf who had assigned to G-Star their copyright in the designs; (ii) those clothing designs are the result of designs and a manufacturing process recognised as being innovative within the world of fashion; and (iii) those designs are characterised by a number of specific elements (3D effect, the positioning of various components, how they are assembled, etc.) that are allegedly partly copied by Cofemel in the making of its brand clothing.

24 In the second place, the referring court states that while Article 2(1)(i) of the Code on Copyright and Related Rights clearly includes works of applied art, industrial designs and works of design in the list of works protected by copyright, it does not specify the level of originality required for such subject matter to be granted that protection. The referring court also states that there is on that issue, which is at the heart of the dispute between Cofemel and G-Star, no consensus in Portuguese case-law and legal theory. For that reason, the referring court is uncertain whether it should be held, in the light of the interpretation of Directive 2001/29 adopted by the Court in the judgments of 16 July 2009, Infopaq International (C‑5/08, EU:C:2009:465), and of 1 December 2011, Painer (C‑145/10, EU:C:2011:798), that the protection ensured by copyright extends to such subject matter in the same way as to any literary and artistic work, and therefore subject to the condition that it is original, in the sense that it is the result of the author’s own intellectual creation, or whether it is possible to hold that a prerequisite of such protection is the existence of a specific degree of aesthetic or artistic value.

25 In those circumstances, the Supremo Tribunal de Justiça (Supreme Court) decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does the interpretation by the Court of Article 2(a) of Directive 2001/29 preclude national legislation — in the present case, the provision in Article 2(1)(i) of the Code on Copyright and Related Rights — which confers copyright protection on works of applied art, industrial designs and works of design which, over and above their practical purpose, create their own visual and distinctive effect from an aesthetic point of view, their originality being the fundamental criterion which governs the grant of protection in the area of copyright?

(2) Does the interpretation by the Court of Article 2(a) of Directive 2001/29 preclude national legislation — in the present case, the provision in Article 2(1)(i) of the Code on Copyright and Related Rights — which confers copyright protection on works of applied art, industrial designs and works of design if, in the light of a particularly rigorous assessment of their artistic character, and taking account [of] the dominant views in cultural and institutional circles, they qualify as an “artistic creation” or “work of art”?’

Consideration of the questions referred

The first question

26 By its first question, the referring court seeks, in essence, to ascertain whether Article 2(a) of Directive 2001/29 must be interpreted as precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the ground that, over and above their practical purpose, they generate a specific and aesthetically significant visual effect.

27 Under Article 2(a) of Directive 2001/29, Member States are required to provide that authors have the exclusive right to authorise or prohibit reproduction of their works.

28 The term ‘work’ referred to by that provision is also to be found in Article 3(1) and Article 4(1) of Directive 2001/29, on the exclusive rights granted to the author of a work with respect to its communication to the public and its distribution, and in Articles 5, 6 and 7 of that directive, the first of those provisions concerning the exceptions or limitations that may be applied to those exclusive rights, and the latter two provisions concerning the technological measures and information measures that ensure the protection of those exclusive rights.

29 The concept of ‘work’ that is the subject of all those provisions constitutes, as is clear from the Court’s settled case-law, an autonomous concept of EU law which must be interpreted and applied uniformly, requiring two cumulative conditions to be satisfied. First, that concept entails that there exist an original subject matter, in the sense of being the author’s own intellectual creation. Second, classification as a work is reserved to the elements that are the expression of such creation (see, to that effect, judgments of 16 July 2009, Infopaq International, C‑5/08, EU:C:2009:465, paragraphs 37 and 39, and of 13 November 2018, Levola Hengelo, C‑310/17, EU:C:2018:899, paragraphs 33 and 35 to 37 and the case-law cited).

30 As regards the first of those conditions, it follows from the Court’s settled case-law that, if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices (see, to that effect, judgments of 1 December 2011, Painer, C‑145/10, EU:C:2011:798, paragraphs 88, 89 and 94, and of 7 August 2018, Renckhoff, C‑161/17, EU:C:2018:634, paragraph 14).

31 On the other hand, when the realisation of a subject matter has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work (see, to that effect, judgment of 1 March 2012, Football Dataco and Others, C‑604/10, EU:C:2012:115, paragraph 39 and the case-law cited).

32 As regards the second condition referred to in paragraph 29 of the present judgment, the Court has stated that the concept of a ‘work’ that is the subject of Directive 2001/29 necessarily entails the existence of a subject matter that is identifiable with sufficient precision and objectivity (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, EU:C:2018:899, paragraph 40).

33 That is because, first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. So also must third parties against whom the protection claimed by the author of that subject matter may be asserted. Second, the need to ensure that there is no element of subjectivity, which is detrimental to legal certainty, in the process of identifying that subject matter means that the latter must have been expressed in an objective manner (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, EU:C:2018:899, paragraph 41).

34 As emphasised by the Court, the required precision and objectivity is not attained where an identification is essentially based on the sensations, which are intrinsically subjective, of an individual who perceives the subject matter at issue (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, EU:C:2018:899, paragraph 42).

35 Where a subject matter has the characteristics described in paragraphs 30 and 32 of the present judgment, and therefore constitutes a work, it must, as such, qualify for copyright protection, in accordance with Directive 2001/29, and it must be added that the extent of that protection does not depend on the degree of creative freedom exercised by its author, and that that protection is therefore not inferior to that to which any work falling within the scope of that directive is entitled (see, to that effect, judgment of 1 December 2011, Painer, C‑145/10, EU:C:2011:798, paragraphs 97 to 99).

36 In the light of that case-law, the answer to the first question involves, first, the determination of whether designs are, in general, capable of being classified as ‘works’, within the meaning of Directive 2001/29.

37 In that regard, it must initially be observed that, under Article 17(2) of the Charter of Fundamental Rights of the European Union, intellectual property is protected.

38 It is apparent from the wording of that provision that subject matter constituting intellectual property qualifies for protection under EU law. However, it does not follow that such subject matter or categories of subject matter must all qualify for the same protection.

39 Accordingly, the EU legislature has adopted various measures of secondary law with the aim of ensuring the protection of intellectual property, including, on the one hand, works protected by copyright, the subject of Directive 2001/29, and, on the other hand, designs falling within the scope of either Directive 98/71, applicable to designs registered in or in respect of a Member State, or Regulation No 6/2002, applicable to deigns protected at EU level.

40 In so proceeding, the EU legislature considered that subject matter protected as a design was not as general rule capable of being treated in the same way as subject matter constituting works protected by Directive 2001/29.

41 That legislative choice is consistent with the Berne Convention, with Articles 1 to 21 of which the European Union, while not a party to that convention, must nonetheless comply, pursuant to Article 1(4) of the WIPO Copyright Treaty, to which it is a party (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, EU:C:2018:899, paragraph 38 and the case-law cited).

42 Article 2(7) of the Berne Convention permits the parties to that convention to grant to industrial designs and models a specific protection, which may differ from and which may exclude the protection afforded to literary and artistic works falling within the scope of that convention, and to determine the conditions governing such protection. At the same time, that provision does not rule out those two forms of protection being cumulative.

43 Against that background, the EU legislature opted for a system in which the protection reserved for designs and the protection ensured by copyright are not mutually exclusive.

44 As regards designs, the first sentence of Article 17 of Directive 98/71 states that a design protected by a design right registered in or in respect of a Member State in accordance with that directive is also to be eligible for protection under the law of copyright of the State in which or in respect of which that design was registered, as from the date on which the design was created or fixed in any form. The second sentence of Article 17 states that the extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, are to be determined by each Member State. As regards designs protected at EU level, rules comparable to those of Article 17 of Directive 98/71 are laid down in Article 96(2) of Regulation No 6/2002.

45 Those two provisions must themselves be construed in the light of recital 8 of Directive 98/71 and recital 32 of Regulation No 6/2002 respectively, which expressly refer to the principle of ‘cumulation’ of protection of designs, on the one hand, and copyright protection, on the other.

46 As regards copyright, it is apparent from Article 9 of Directive 2001/29, headed ‘Continued application of other legal provisions’, which must be interpreted taking into account, inter alia, all language versions of that article (see, to that effect, judgment of 4 February 2016, C & J Clark International and Puma, C‑659/13 and C‑34/14, EU:C:2016:74, paragraph 122 and the case-law cited), and in the light of recital 60 of that directive, that Directive 2001/29 does not affect the existing provisions of national law or EU law in other areas, not least provisions concerning designs.

47 Accordingly, Directive 2001/29 preserves the existence and scope of the provisions in force relating to designs, including the principle of ‘cumulation’ referred to in paragraph 45 of the present judgment.

48 Having regard to all those provisions, it must be held that designs are capable of classification as ‘works’, within the meaning of Directive 2001/29, if they meet the two requirements mentioned in paragraph 29 of the present judgment.

49 That being the case, it must further be examined, in the second place, whether classification as ‘works’, having regard to those requirements, is possible for designs such as the clothing designs at issue in the main proceedings, designs which, over and above their practical purpose, generate, according to the referring court, a specific and aesthetically significant visual effect, and it may be said that the doubts of that court concern the issue of whether such a factor of aesthetic originality constitutes the central criterion for the granting of the protection provided for by Directive 2001/29.

50 On that point, it must be stated, first, that the protection of designs, on the one hand, and copyright protection, on the other, pursue fundamentally different objectives and are subject to distinct rules. As the Advocate General observed, in essence, in points 51 and 55 of his Opinion, the purpose of the protection of designs is to protect subject matter which, while being new and distinctive, is functional and liable to be mass‑produced. Further, that protection is to apply for a limited time, but sufficient time to ensure a return on the investment necessary for the creation and production of that subject matter, without thereby excessively restricting competition. For its part, the protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that merits being classified as works.

51 For those reasons, and as the Advocate General also observed in point 52 of his Opinion, the grant of protection, under copyright, to subject matter that is protected as a design must not have the consequence that the respective objectives and effectiveness of those two forms of protection are undermined.

52 It follows that, although the protection of designs and the protection associated with copyright may, under EU law, be granted cumulatively to the same subject matter, that concurrent protection can be envisaged only in certain situations.

53 In that regard, it must be observed, first, that, as follows from the usual meaning of the term ‘aesthetic’, the aesthetic effect that may be produced by a design is the product of an intrinsically subjective sensation of beauty experienced by each individual who may look at that design. Consequently, that subjective effect does not, in itself, permit a subject matter to be characterised as existing and identifiable with sufficient precision and objectivity, within the meaning of the case-law cited in paragraphs 32 to 34 of the present judgment.

54 Second, it is admittedly the case that aesthetic considerations play a part in creative activity. Nonetheless, the fact remains that the circumstance that a design may generate an aesthetic effect does not, in itself, make it possible to determine whether that design constitutes an intellectual creation reflecting the freedom of choice and personality of its author, thereby meeting the requirement of originality set out in paragraphs 30 and 31 of the present judgment.

55 It follows that the circumstance that designs such as the clothing designs at issue in the main proceedings generate, over and above their practical purpose, a specific and aesthetically significant visual effect is not such as to justify those designs being classified as ‘works’ within the meaning of Directive 2001/29.

56 In the light of all the foregoing, the answer to the first question is that Article 2(a) of Directive 2001/29 must be interpreted as precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the ground that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect.

The second question

57 Having regard to the answer given to the first question, there is no need to answer this question.

Costs

58 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Third Chamber) hereby rules:

Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the ground that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect.

[Signatures]

* Language of the case: Portuguese.