The Court of Justice of the European Union (hereinafter CJEU) in its Judgement of 12 September 2019 (case C-683/17, Cofemel – Sociedade de Vestuário, S.A., contra G-Star Raw CV) has ruled on the possibility that clothing which generate a considerable visual effect of their own from an aesthetic point of view, might be protected under copyright.
The proceeding derives from a lawsuit filed by G-STAR before the Portuguese Court of First Instance by which the cease in the copyright infringement and the unfair competition acts carried out by COFEMEL was requested. Specifically, G-STAR claimed that some models of jeans, and sweatshirts manufactured by COFEMEL, were analogous to G-STAR models. For the plaintiff, these products constituted original intellectual creations, and, therefore, should be classified as original works which should be protected by copyright.
The Portuguese Court of First Instance partially estimated the claim filed by G-STAR and condemned COFEMEL not only to stop infringing the G-STAR’s copyright but also to pay compensation for the damages caused. COFEMEL appealed the judgment, but it was also confirmed in second instance by the Lisbon Court of Appeal.
The defendant then went to the Supreme Court of Portugal which having confirmed that there was not a clear consensus in the Portuguese case law and doctrine, decided to stay proceedings and refer to the CJEU the preliminary ruling to confirm whether Article 2 (a) of Directive 2001/29 should be considered against national legislation when it confers copyright protection on designs (such as clothing designs at issue), in view of the fact that, beyond their practical purpose, these goods generate their own and considerable visual effect from the aesthetic point of view. Furthermore, the national court asked if , in the light of a particularly demanding appreciation, these products deserve the qualification of “artistic creation” or “art work”.
The CJEU establishes that the concept of “work” implies - also for the designs of the present litigation - that: (i) there is an original purpose, understood as one that reflects the personality of its author, manifesting free and creative decisions; (ii) and, on the other hand, that the qualification as a work is reserved for the elements that express an intellectual creation, understood as the existence of an identifiable object with enough precision and objectivity.
Once the requirements for understanding the concept of “work” have been confirmed, the CJEU proceeded to examine whether clothing designs might be considered as “works”, being understood like those designs that generate a considerable visual effect from an aesthetic point of view.
That is the reason why, the CJEU confirms that the protection granted by designs and copyright is different. This protection is subject to different regimes: the design protection regime aims to protect objects that, although might be considered as new, these have a practical character, being conceived for mass production, while copyright protection is reserved for objects understood as “works”.
Therefore, the design protection and copyright protection can only be granted cumulatively to the same object, on certain occasions.
Once a design is understood as an original work, the CJEU has affirmed that the aesthetic effect, that a model can generate is a “subjective” sensation, and, therefore, it does not allow characterizing the existence of an identifiable object, understood as that intellectual creation that reflects the freedom of choice and the personality of its author.
Finally, the CJEU has established that it cannot be justified to understand the clothing designs as a “work” within the meaning of Directive 2001/29, and therefore the referred Directive is opposed to national legislation because it confers protection under copyright to this type of designs since beyond their practical purpose, they generate their own and considerable visual effect from the aesthetic point of view.
As far as designs are concerned, the Judgment brings to its natural consequences the evolution already signalled by earlier case law: copyright protection simply arises upon fulfilment of the originality requirement.