Author: Nuno Sousa e Silva
Process 1607/10.3TBBRG.G1, Decision by Guimarães Court of Appeal of 27 February 2012 (available in Portuguese at http://www.dgsi.pt/)
Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt111, first published online: July 3, 2013
The issue of cumulative protection of copyright and designs is a fascinating and surprising one. The national traditions in the European Union are, as it is known, quite diverse and the debate on the meaning and repercussions of the Court of Justice of the European Union (CJEU) ruling in Case C-168/09 Flos v Semararo goes on. A second instance court in Portugal has taken an original, though not artistic, route. According to this decision, it is required that a design be registered in order to be protected under copyright. However, that is a necessary condition but not a sufficient one. The design has to also constitute ‘art’ and, according to the court, there is no artistic creation in taps.
By Article 200 of the Portuguese Industrial Property Code (PIPC), ‘[a]ny registered design or model also enjoys the protection conferred by legislation on copyright, as of the date on which the design or model was created or defined in any form.’
According to Article 1(1) of the Portuguese Copyright Act, ‘[w]orks shall mean intellectual creations in the literary, scientific and artistic fields, in whatever form, and as such they shall be protected under the present Code, as the rights of their authors.’
The interpretation of these two provisions was at the core of this case.
The plaintiff was an architect who had designed a set of taps in 2000 (according to his website, in 1998). He licensed them to a company which, in 2001, registered the following designs in the Portuguese IP Office (INPI):
However in 2004, following the failure to pay renewal fees, the designs expired.
The defendants (Bruma, a company which has several design awards) were producing taps for which they had registered Community designs (767561 and 860291) in 2006, though these had also lapsed. Some of them are indeed quite similar to the architect's design. One example is depicted here:
By 2008 the architect tried to register his designs. Bruma opposed and, unsurprisingly, won on the grounds of lack of novelty and individual character. Subsequently, in his infringement claim, the architect had no other option but to rely on copyright.
The court, however, denied copyright protection on two grounds:
Only registered designs can enjoy copyright protection
The court interpreted article 200 PIPC (transposing Article 17 of the Design Directive) as requiring the registration of a design in order for it to enjoy copyright. In other words, no registration equals no copyright protection. As the architect had no registered design, he could not have copyright. This seems to contradict the statement (though obiter dictum) of the CJEU in Flos, at para 34, according to which ‘it is conceivable that copyright protection for works which may be unregistered designs could arise under other directives concerning copyright, in particular Directive 2001/29’.
No artistic creation in taps
The court added that designs can only enjoy copyright protection if they are art. It explained that, under copyright law, art is a normative concept that should be interpreted widely. Nonetheless, one has to distinguish between intellectual activity and artistic creation, and ‘innovation, distinctiveness, individuality, functionality, modernity, beauty, elegance and ergonomics’ are not to be confused with art. In the words of the court: ‘Art is generally understood as an activity related to expression of aesthetic and spiritual order, which is able to generate feeling or emotions in people.’
Taps for kitchens and bathrooms thus are not artistic creation, as ‘they are only destined to (even if in an innovative, different and attractive way) perform the function of every modern tap’. This statement is reminiscent of the rejected Italian doctrine of scindibilitá (or the definition in US law of ‘pictorial, graphic, and sculptural works’, 17 USC § 101) according to which copyright will vest in a certain design if its artistic value can be separated from the function it performs.
This decision seems to be another contribution to the enigma of overlaps. In the past, there was no guidance, but more recently the CJEU seems to have started dealing with the matter. In my view, the conjunction of Flos and Case C-5/08 Infopaq deems this decision incompatible with the current EU IP law. However, it is still an open question as to what extent there is harmonization on the notion of a work and whether it should also apply to designs.