Of tables and other furniture: AG Szpunar advises CJEU on originality (but also proposes adoption of recognizability test for infringement)
Of tables and other furniture: AG Szpunar advises CJEU on originality (but also proposes adoption of recognizability test for infringement)
Is it true that originality is the only thing that matters in copyright law, including for works of applied art? If so, how is it to be assessed? And what does the infringement test under copyright law entail?
These are the key questions at the heart of the pending referrals to the Court of Justice of the European Union (CJEU) in Mio, C-580/23 [IPKat here] and konektra, C-795/23 [IPKat here].
This morning, Advocate General (AG) Szpunar issued his long-awaited Opinion.
IPKat rulez!
The first, notable aspect of the Opinion is that, in the opening paragraph, the AG refers not to one but two IPKat blog posts: they are Söğüt’s post on (established) copyright protection of Hermès’ Kelly and Birkin bags in France and Marcel’s post on (denied) copyright protection of two Birkenstock sandal models in Germany.
The Opinion
That said, a first full stop is added: “EU copyright law enshrines, in respect of works of applied art, the principle of protection without specific requirements.” This doesn’t mean that establishing copyright protection for a given work is going to be easy, but more simply that the approach should be harmonized across the EU Member States.
Then, to answer the questions referred, the AG divided the analysis into three parts: (1) Relationship between copyright and design protection; (2) Criteria for assessing originality; and (3) Criteria for assessing copyright infringement.
(1) Relationship between copyright and design protection
The first issue, in essence, boils down to the question whether it is really true that the assessment of copyright protection of works of applied art (no longer) entails stricter requirements than other types of works.
Unsurprisingly, the AG Opinion answers that the same requirements apply across the board. Originality is all that matters, and this requires considering whether the author has made choices that are both free and creative. And in case someone was wondering: originality is not the same as novelty/individual character under design law.
No surprises here.
(2) Criteria for assessing originality
Turning to the more substantial issue of how originality is to be assessed, AG Szpunar considered the specific questions of whether the creative process, the author’s intentions, post-creation events, and the ‘state of the art’ do matter.
The AG conceded that the concept of originality “is very general, not to say vague, and is intended to apply to subject matter of very different kinds, so it does not lend itself well to a rigorous and systematic definition in case-law”. Nevertheless, the guidance is once again the same: a court must separate choices that are both free and creative (and thus original) from choices that are not.
Importantly, originality is not the same thing as ‘artistic’ or ‘aesthetic’: the former evokes a value judgment that is foreign to the assessment of originality, while the latter may be intended as relating to anything that is not technical or functional and yet may lack the creativity that is inherent to the originality requirement. Originality is about both freedom and creativity, yet without any particular merit or value.
As to whether the creative process and the author’s intentions matter, the AG stated that the only thing that is to be taken into account are elements expressed in the subject matter itself, not how that came to be or for what reasons. Nevertheless, if the latter elements can be proven, a court might consider them insofar as they serve to establish originality.
The same conclusion is reached having regard to the other elements indicated by the referring courts. Of particular interest is the fact that the AG referred to the earlier judgment in Brompton [IPKat here] as having already ruled out the relevance of external circumstances like the presentation of the subject matter in art exhibitions or museums and recognition in professional circles. Despite this being presented as a reiteration of something already known, the AG conceded that such evidence might be helpful in some cases, yet not decisive. This point of the Opinion will likely prove difficult to digest across a number of Member States ...
(3) Criteria for assessing copyright infringement
As to how infringement is to be assessed, the Mio referral asks whether the test should be one of recognizability. While the Swedish court’s thinking owes to design law, it is worth recalling that recognizability has been adopted by the CJEU in relation to the reproduction right of phonogram producers in Pelham I [IPKat here].
The AG held that “Once a work is original, it is protected, in particular, against the reproduction of creative elements, notwithstanding the ‘intensity’ with which the author has expressed that creativity. Accordingly, the Court has expressly stated that the scope of protection under Directive 2001/29 does not depend on the degree of creative freedom exercised by its author and that that protection is therefore equal for all works coming within the scope of that directive.”
Nevertheless, the AG added: “That conclusion applies, of course, subject to the rule that, in the case of partial reproduction of a work, only the recognisable reproduction of creative elements constitutes an infringement of copyright. However, in the case of such a reproduction, the fact that changes have been made to elements that are not creative does not mean that infringement cannot be established.”
This is problematic. Why? Read on.
Comment
The Opinion is broadly but not entirely correct, in my view. While I agree with the AG’s position regarding points (1) and (2), I have a hard time accepting his proposal regarding the construction of the infringement test under (3).
While it is obviously correct to say that the tests for infringement under copyright and design law differ, the CJEU should not accept to change the well-established test for copyright infringement by adopting a recognizability approach.
‘Recognizability’ was oddly and problematically adopted by the CJEU with reference to the reproduction right of phonogram producers (ie, a related right) in Pelham I. While the Court (agreeing with AG Szpunar himself) accepted that the logic of copyright protection between copyright and related rights is different – originality for the former and investment for the latter – it did not clarify how recognizability is to be assessed and from whose perspective: machine detection? an expert? the "man in the street"? even the average consumer?
Since then, some commentators have suggested that the test of recognizability could be generally applicable as a limitation to the scope of the right of reproduction for rightholders other than authors.
Such a proposal is in my view both wrong and problematic. Above all, it would entail departing from the well-settled test adopted in Infopaq [IPKat here], in which the CJEU held that there is reproduction ‘in part’ of a ‘work’ when what is reproduced is sufficiently original in the sense that it is its author’s own intellectual creation.
In other words, the prima facie infringement test [also discussed on The IPKat here] is in two steps:
- first, it requires determining whether the claimant’s work or part thereof is protected at the outset, i.e., it is its author’s own intellectual creation in the sense that it carries their ‘personal touch’ and is the result of ‘free and creative choices; if the answer is in the affirmative,
- the second step is to establish if the defendant has taken a protected work or a protected part thereof.
It is obvious that – to determine actual infringement consideration – of other steps is required, including the applicability of any available exception or limitation.
The CJEU should confirm the appropriateness of the originality-based infringement test and reject any criterion of recognizability, which also appears to be at odds with the correct remarks made by the AG in the rest of his Opinion, including having regard to the objective assessment mandated for originality as a subsistence requirement.
[Originally published on The IPKat on 8 May 2025]