Sandra Fernandes (Master Student in Judicial Law, School of Law, University of Minho)
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On the 15th of January 2020, the Portuguese Supreme Court issued a decision concerning a dispute on copyright relating to clothing designs.
The process began in August 2013 with an action brought before a Portuguese court of first instance by G-Star Raw, against Cofemel, requesting the latter to be ordered to cease several acts constituting infringement of the former’s copyright and unfair competition. G-Star Raw further requested compensation for the harm suffered in consequence of such acts taken by Cofemel, by means of a penalty payment. Specifically, G-Star Raw argued that some designs of jeans, sweatshirts and t-shirts manufactured by Cofemel were comparable to some of their own designs in a way that violated copyright, given that those designs constituted original intellectual creations and, as such, ought to be classified and protected as ‘works of art’. This status would place G-Star Raw’s creations under protection of article 2 of Portuguese Code on Copyright and Related Rights.
Cofemel appealed against a partially favourable judgement of G-Star Raw’s requests to the competent court of appeal (Tribunal da Relação de Lisboa); however, this court upheld the decision. Moreover, the court considered that article 2(1)(i) of the Code on Copyright and Related Rights ought to be understood in light of Directive 2001/29 of the European Parliament and the Council of the 22nd of May as interpreted by previous CJEU decisions such as Infopaq International (C-5/08) and Painer (C-124/10). It was considered that copyright protection should be extended to works of design, provided that such works were the result of the author’s personal and intellectual creation, with no regard to artistic value.
A new appeal was brought to the Portuguese Supreme Court of Justice, which noted that, although article 2(1)(i) of Code on Copyright and Related Rights clearly includes works of design in the list of works protected by copyright, nothing is explicitly said about the required level of originality for that protection to be granted. This circumstance, as well as a lack of consensus in Portuguese case-law and doctrine regarding this issue, rendered unclear whether protection should be granted to G-Star Raw’s designs considering the preceding interpretation of Directive 2001/29 adopted in Infopaq International and Painer, provided that such works were considered original or if that protection requires an additional prerequisite of a specific degree of artistic value.
The CJEU was consequently involved through the submission of two preliminary questions: (1) if article 2(1)(i) of Code on Copyright and Related Rights is precluded by the interpretation by the Court of article 2(a) of Directive 2001/29 in which copyright protection is extended to works of design, provided that they are original; (2) if the same article is precluded by an interpretation of article 2(a) of Directive 2001/29 which confers copyright protection to works of design as long as they qualify as a ‘work of art’.
It is not the main purpose of this commentary to detail CJEU’s extensive thoughts on G-Star Raw’s copyright in regard to their innovative designs. Instead, the focus shall fall onto the importance of the Court’s decision to conform Portuguese national legislation and, thus, to uphold fundamental principles of Union Law – especially the Rule of Law and stability.
Given the referred Court’s jurisdiction, under article 267 of the Treaty on the Functioning of the European Union, to give preliminary rulings on interpretative concerns, provided that the national judge cannot independently solve such matters whenever they concern European legislation, preliminary rulings serve as a guarantee of stability and uniformity in the interpretation and application of European Union legislation across its Member States. It was in respect of these prerogatives that the Portuguese Supreme Court issued the upper mentioned request to the CJEU[1].
The Portuguese national judge who requested the preliminary ruling[2] is therefore committed to the result provided by the CJEU’s decision, meaning that the final decision taken in national courts should never adhere to different reasonings or interpretations. Only an absolute respect of CJEU’s decision by all States accurately allows the goal of Europe-wide efficiency of this mechanism to be reached.
More can be said when taking into account that, as mentioned by Cofemel in their appeal, such matters of copyright relating to works of design had previously been submitted to the CJEU for preliminary rulings in the cases Infopaq International and Painer. CJEU is not hindered from accepting requests regarding the same and/or similar questions to others previously raised, provided that it understands such questions are not sufficiently cleared yet.
The CJEU generally decided that article 2(a) of Directive 2001/29 does preclude national legislation on copyright for both of the questions submitted by the Portuguese Supreme Court. Since the argued copyright protection was dependent on the fact that G-Star Raw’s designs went beyond their utilitarian value and aesthetically impacted each individual person, the Court considered that this fact alone was not enough to classify the designs either as works of design or ‘works of art’.
How did the national court comply with this decision? Beyond acknowledging the use of many Union legislation on copyright matters to understand that designs unequivocally do not benefit of the same protection offered by Directive 2001/29, the court also acknowledged that such protection can be obtained if the designs fall within the scope of the concept of ‘work’. This concept is autonomous within EU law and, as such, ought to be interpreted and applied uniformly by meeting two cumulative conditions. For one, the existence of an original subject matter, as in the result of the author’s personal intellectual creation; secondly, the classification as ‘work’ is confined to the elements that express that creation. This inherently means that aesthetic value, subject in nature and dependant on the feelings of every person who comes into contact with the designs, should not be rendered enough to meet these requirements, according to Directive 2001/29 – this fits the concept of ‘trade dress’, as mentioned by the Portuguese Supreme Court.
The Supreme Court also introduced the idea that clothing designs are part of ‘public domain’ and consequently do not fall under protection of copyright. Moreover, simply arguing that the creation of G-Star Raw’s designs are innovative does not mean they should be classified as ‘works’, provided that they might still not meet the cumulative requirements put forward by the CJEU.
Of course, the protection that can be offered under ‘trade dress’ and fair competition is fundamentally distinct from the protection that can be offered to a design: while the first aims at avoiding confusion between visually similar products with different origins, protecting them from imitation, the latter aims at protecting the creation itself as a staple of originality. The court further reiterates that despite a design being innovative and singular in its characteristics, the lack of originality is enough to not allow protection under copyright.
It is clear how the preliminary ruling provided by the CJEU influenced a correct assessment of the case at hand by the national Supreme Court. In coherence with the provided interpretation of Directive 2001/29, the court offered a perspective in which, despite a strong aesthetic effect of G-Star Raw’s designs, ultimately, it could not be concluded, according to the existent evidence in the case, that there were enough grounds for originality.
Consequently, in accordance with the CJEU’s decision in which the designs could not be protected by copyright under article 2(a) of the Directive 2001/29, given that the article must be interpreted as precluding national legislation conferring copyright protection to clothing designs merely on the grounds that they generate an aesthetic visual effect[3], the Portuguese Supreme Court effectively fulfilled its prerogative as to act as a functional European court. Furthermore, the court contributed to the efficiency of preliminary rulings by submitting questions that needed further considerations despite insurgence in previous cases brought to the CJEU, and by enforcing the decision that came out of the ruling to provide a uniform application of European law to mitigate the existent controversy within Portuguese jurisprudence and doctrine.
The litigation concluded with the decision, by the Portuguese Supreme Court, that article 2(1)(i) of Code on Copyright and Related Rights cannot include G-Star Raw’s designs in in its concept of ‘work’, given that the article must be interpreted in consonance with corresponding European legislation – Directive 2001/29 – and Cofemel’s appeal was upheld.
[1] Notwithstanding the fact that this preliminary ruling is deemed obligatory since the interpretative question arose in the scope of an appeal made to the latest instance of appeal according to Portuguese national law.
[2] As well as national judges from every EU Member State.
[3] The CJEU forfeited analysing to the second question requested by the Supreme Court, since the same arguments could be applied. As a result, article 2(a) of the Directive 2001/29 also precludes national legislation conferring copyright protection to clothing designs on the grounds that they constitute ‘works of art’.
Picture credits: by THE 5TH on Pexels.com.
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