Copyright protection may not be granted to designs on the sole ground that, over and above their practical purpose, they produce a specific aesthetic effect


The Supremo Tribunal de Justiça (Supreme Court, Portugal) has before it a dispute between
Cofemel – Sociedade de Vestuário, SA (‘Cofemel’) and G-Star Raw CV (‘G-Star’), two companies
which are both active in the sector of design, production and sale of clothing. The dispute concerns
compliance with copyright claimed by G-Star, which accuses Cofemel of producing and selling
jeans, sweatshirts and t-shirts copying some of its own designs.

The intellectual property protection ensured by EU law benefits, inter alia, works whose authors are
granted, under the directive on copyright, the exclusive right to authorise or to prohibit
reproduction, communication to the public and distribution. In parallel, other acts of secondary EU
law2 ensure specific protection for designs.
Against that background, the Supremo Tribunal de Justiça states that the Código do Direitos de
Autor e dos Direitos Conexos (Portuguese Code on Copyright and Related Rights) includes
designs in the list of works which may qualify for copyright protection, but does not explicitly clarify
what conditions must be satisfied if a particular subject matter, serving a practical purpose, is in
fact to qualify for such protection. Since there is no unanimity in Portuguese case-law and legal
theory, the Supremo Tribunal de Justiça asks the Court of Justice, in essence, whether the
directive on copyright precludes provisions of national legislation whereby that protection
is granted if a specific condition is satisfied, namely that designs must, over and beyond
their practical purpose, produce a specific aesthetic effect.
By its judgment today, the Court answers that question in the affirmative.
In that regard, the Court recalls, first, its settled case-law that any original subject matter
constituting the expression of its author’s own intellectual creation can be classified as a
‘work’, within the meaning of the directive on copyright.
Further, the Court states that a body of acts of secondary EU law establish a specific protection for
designs, while providing that that specific protection may apply in combination with the general
protection ensured by the directive on copyright. Consequently, a design may, in a particular
case, also be classified as a ‘work’.
That said, the Court states that the protection of designs, on the one hand, and copyright
protection, on the other, pursue different objectives and are subject to distinct rules. The
purpose of the former is to protect subject matter which, while being new and distinctive, is
functional and liable to be mass-produced. Further, the former protection is applicable for a limited
time, ensuring 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. In that context, the grant of protection, under copyright, to subject
matter that is already protected as a design must not undermine the respective objectives
and effectiveness of those two sets of rules, which is why the cumulative grant of such
protection can be envisaged only in certain situations.
Last, the Court explains that the aesthetic effect that may be produced by a design does not
constitute a factor that is relevant to the determination, in a particular case, of whether that
design can be classified as a ‘work’, since such an aesthetic effect is the product of an
intrinsically subjective sensation of beauty experienced by each individual who may look at
the design in question. That classification does, however, require it to be demonstrated that, first,
there exists a subject matter which is identifiable with sufficient precision and objectivity,
and, second, that subject matter constitutes an intellectual creation reflecting the freedom of
choice and personality of its author.
Consequently, the circumstance that designs produce, over and above their practical
purpose, a specific aesthetic effect, does not, in itself, entail that such designs can be
classified as ‘works’.

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