Germany’s Federal Court of Justice applies CJEU Cofemel guidance, considering it ‘clear’ that works of applied art are to be treated like other works and no new CJEU referral is needed 

· copyright,works of applied art,designs,originality,Cofemel

What are the requirements for protection of a work (defined in accordance with Levola Hengelo: IPKat posts here) under EU copyright?

As early as Infopaq (Kat-10th anniversary post here) it became clear that not only should there be an EU-wide approach to the foundational requirements of copyright protection but also, insofar as originality is concerned, different standards could no longer be tolerated – both across the EU and across different types of copyright works, including works of applied art.

Works of applied art and CJEU case law

Despite the struggle of works of applied art to find their place within the IP system (see the Opinion of AG Szpunar in Cofemel; IPKat here) and the historically different treatment under the copyright laws of EU Member States, the conclusion above became undeniable when the Court of Justice of the European Union (CJEU) decided Flos (IPKat here).

There, the CJEU held that, while unregistered designs are outside the scope of the Design Directive, they may qualify for copyright protection under the InfoSoc Directive ‘if the conditions for that directive’s application are met’, that is if they are their author’s own intellectual creation.

Put differently: if a work of applied art is eligible for protection under the InfoSoc Directive and is, as such, original in the sense clarified by the CJEU, then Member States cannot deny such a protection.

Despite that this was the (correct) reading of Flos that AG Jääskinen also advanced in his Opinion in Donner, Flos gave rise to contrasting interpretations. Ultimately, it prompted the Supremo Tribunal de Justiça (Portugal) to make a reference to the CJEU – the one in Cofemel – and ask expressly about the conditions for copyright protection in works of applied art and industrial models and designs.

There, the CJEU moved from the notion of ‘work’ in Article 2(a) of the InfoSoc Directive, recalled its character of autonomous notion of EU law, and – by referring to both Infopaq and the then recent ruling in Levola Hengelo – considered that such a notion presupposes the fulfilment of two cumulative requirements:

  • First, it implies the existence of an original object, that is an intellectual creation of its author.
  • Second, the concept of work is reserved to those elements which are, objectively speaking, the expression of such a creation.

While the same subject-matter can be protected through different rights (for example the Design Regulation and the InfoSoc Directive), in line with the principle of rights cumulation, when such a subject-matter falls within the scope of the InfoSoc Directive, then the only requirement for copyright protection under that piece of legislation is that the design is a ‘work’ fulfilling both requirements above. The Court further noted that, if a national law were to require some sort of ‘aesthetic’ value for a design to be eligible for copyright protection (as it was the case of inter alia Portuguese law), this would be contrary to the requirement of objectivity mandated under EU law.

Even though Cofemel seems to have triggered in some a perduring post-traumatic stress disorder, it is a judgment that does not really change much. If anything, it explicitly brings to its natural consequences the evolution already signalled by earlier case law. It does so by removing the possibility of national approaches that make copyright protection of works of applied art subject to fulfilling requirements of artistic, aesthetic, etc. value when these are intended as value judgements rather than akin to freedom, creativity, and personality of the author.

It also makes it clear that originality is, in fact, a threshold that needs to be passed and, therefore, its assessment needs to be a thorough one. Overall, national courts will need to identify what makes a work of applied art original, also bearing in mind the functional nature of such a work and, with that, the CJEU’s considerations – elaborated further in Brompton Bicycle (IPKat here) – regarding the copyright assessment required for this type of subject-matter. It is also obvious that not everything in a work, whether of applied art or not, shall be protected!

In Brompton Bicycle, the CJEU merely confirmed that – for copyright protection to arise – it is ‘both necessary and sufficient’ that the work at issue is original, in the sense that it is its author’s own intellectual creation that results from their free and creative choices and reflects their personality. As it had been spelled out, at least since Bezpečnostní softwarová asociace, originality is not fulfilled where the realization of a subject-matter has been exclusively dictated by technical considerations, rules or other constraints which have left no room for creative freedom.


Application by the German Federal Court of Justice

Recently, all the CJEU teachings above were (correctly) interpreted and applied by Germany’s Federal Court of Justice (BGH) in its decision in I ZR 173/21 - Vitrinenleuchte (one of the parties to these proceedings was represented by Bird & Bird Germany; I had no involvement in the case, nor was I aware of it until the judgment was published a few days ago).

Essentially, the BGH considered it acte clair – and, as such, no need for a referral – that, in light of CJEU case law, the scope of protection of works of applied art is no different or narrower than other works protected under the InfoSoc Directive. This, obviously, does not mean that everything in a work shall be protected: as the CJEU clearly indicated in Bezpečnostní softwarová asociace and Brompton Bicycle, the choices that are free and creative (and, thus, protectable) should be separated from those which are instead dictated by technical rules, considerations or constraint and are, as a result, unprotectable under copyright.

The German litigation essentially concerned the protectability under copyright of the design below and the alleged infringement of relevant rights in it by the defendant’s lamp designs:

broken image

The claimant's lamp design (L) and the alleged infringement (R)

The claimant succeeded at first instance but not on appeal. The BGH considered that the legal standard of review of the latter court had applied was in line with the CJEU teachings. Insofar as the CJEU holding in Cofemel is concerned, the BGH considered it as meaning that works of applied art are to be protected at the same conditions as other types of work, not also that the actual existence of and scope of protection do not depend on the factual circumstances at issue.

The BGH reasoned that – to determine if there is reproduction of a protected work – it is necessary to undertake a 3-part assessment: first, to identify the protectable features of the claimant’s work (the ‘free and creative choices’); second, to determine if the defendant’s work incorporates or not such features; and third, to determine if the works at issue convey to overall same impression.

The BGH rejected the request to refer the matter to the CJEU: ‘there is no question of interpretation of EU law that is relevant to the decision at hand and that has not already been clarified by the case law of the Court of Justice or is not clearly answerable’, said the German court.



Over a decade after the judgment in Infopaq and a consistent approach that the CJEU itself regards as ‘well-established case-law’ (Funke Medien), some national courts have correctly acknowledged that ‘[t]he CJEU ruled that national law could not impose a requirement of aesthetic or artistic value’ (Response Clothing, commented on The IPKat here). Other courts, however, still display a stubborn reluctance in accepting and applying the resulting principles (E.g., Tribunale di Milano, decision 10280/2021, Longchamp, commented on The IPKat here).

At the time of writing, the most recent CJEU judgments in the long string of jurisprudence issued by the CJEU on copyright subsistence requirement are Cofemel and Brompton Bicycle.

As stated, neither of them – bluntly put – adds anything that was not known already. The principal holding of the former – that is: works of applied art should be protectable under copyright at the same conditions as any other type of subject-matter – was already evident as early as 2011 when the CJEU decided Flos. The main holding of the latter – that is: IP overlaps are allowed and that functional shapes can be also protected by copyright insofar as they display ‘free and creative choices’ – is equally unsurprising. As early as Bezpečnostní softwarová asociace the CJEU had held that choices that are dictated by technical considerations, rules, and constraints do not confer originality. What is required is an exercise of dissection of a work: choices that are not free and creative should be separated from those that are free and creative, as only the latter are protectable under copyright.


Admittedly, the entire situation is further complicated by the objective circumstance that the EU legislation that has given rise to this string of decisions does not lay out a secure basis on which the Court could adopt an EU-wide understanding of originality that applies horizontally. Yet, the BGH considered it ‘clear’ what should be done to comply with CJEU case law. Will other national courts also agree going forward? It seems hardly the case that the last word on the treatment of works of applied art under copyright law has been spoken yet … Stay tuned then!

[Originally published on The IPKat on 3 April 2023]


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