How the Cofemel ruling changed the game for copyright protection of 3D works

As discussed in our article from September 2019, in the Cofemel, C-683/17 case (“Cofemel”) the Court of Justice of the European Union (“CJEU”) clarified that the single requirement for the existence of copyright protection in a design is ‘originality’ under the InfoSoc Directive (2001/29/EC) (the “Directive”) – confirming the absence of any additional requirement of an ‘aesthetic effect’. Almost six years after the Cofemel judgment, the majority of EU Member States now have a national law which recognises and reflects the decision handed down by the CJEU in Cofemel. However, there are some EU Member States still ‘playing catch up’ in this regard – and it’s also worth noting that there is now some tension between EU and UK copyright law with regards to the originality requirement following Cofemel.

Requirement for the existence of copyright protection – the post-Cofemel world

Article 2(a) of the Directive provides that Member States must grant authors the exclusive right to authorise or prohibit the reproduction of their ‘works’. For a ‘work’ to fall within Article 2(a) and obtain copyright protection, the CJEU in Cofemel clarified that two cumulative conditions must be met:

1. The subject matter in question must be original in the sense that it is the author’s own intellectual creation, meaning the subject matter has the ability to reflect the author’s personality, as an expression of their free and creative choices; and
2. The subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity.

The CJEU acknowledged in Cofemel that aesthetic considerations are involved in creative activity but stated that whether or not a ‘work’ generates an aesthetic effect does not in itself determine whether the model constitutes an intellectual creation reflecting the freedom of choice and personality of its author. Article 2(a) must, the CJEU thus concluded, be interpreted as precluding Member State national law that provides copyright protection based on aesthetic criteria.

Application of Cofemel in Member States

As a ruling of the CJEU, the Cofemel judgment has a binding effect on all 27 EU Member States – such that the national law of these Member States should reflect the fact that the single requirement for the existence of copyright protection in a design is ‘originality’. In the years since Cofemel, the majority of Member States have either continued to apply the principles of Cofemel already reflected in their national law, or have made the necessary changes to their legislation to reflect the CJEU’s decision. Member States such as Luxembourg, the Netherlands, Poland, Belgium, Spain and France, which did not previously have this concept of originality in their legal systems, now do have national copyright regimes which are ‘Cofemel-compliant’.

Member States still playing ‘catch up’

There are, however, some Member States whose national copyright regimes are still not fully compliant with the decision handed down by the CJEU in Cofemel.

Perhaps the most important ‘exception to the rule’ is the country of Italy, where national jurisprudence still shows some resistance to the CJEU’s decision – close to six years after it was handed down. The majority of Italian courts still consider the existence of artistic value as necessary for the protection of a design under copyright law [See: Supreme Court, 29 April 2024, no. 11413; Supreme Court, 28 November 2023, n. 33100]. The prudent approach adopted by Italian case-law relies on Article 2, paragraph 1, no.10 of the Law No.633 on Copyright and Related Rights, which expressly states that work of the industrial design can be protected under Copyright Law if it has “creative character” and “artistic value”

There have been some decisions which are more in line with the CJEU’s judgment in Cofemel, including one case where a Milan Court held that nothing else beyond ‘originality’ was required for a work to qualify for copyright protection [See: Supreme Court, 30 April 2020, no. 8433; Court of Milan, 17 March 2023, and Court of Milan, no. 1679/22], suggesting a form of rapprochement between EU and Italian national law.

In one interesting judgment handed down in 2021 by a Venice Court, a form of ‘compromise’ was also sought between the two different approaches, with the Court ruling that even if it could not completely disregard any requirement for a design to have an artistic value, any such requirement should not be assessed on a strict basis by the presiding court [See: Court of Venice, 5 July 2021].

Another interesting territory is that of Sweden. The current law is based on principles established by the Swedish Supreme Court over 30 years ago from which the lower courts still remain hesitant to depart. Whilst the Swedish national copyright regime is not strictly incompatible with the judgment in Cofemel, it is still developing case law and seeking clarity to ensure compliance with the CJEU’s decision.

In the case of PMT 13853-20, in its February 2022 judgment the Swedish Court of Appeal confirmed the validity of the Cofemel judgment – but essentially held that the question of infringement of a work which meets the single requirement for the existence of copyright (originality) will depend on the level or degree of originality of the work in concern. Essentially, the Court held, the more original a design, the more extensive scope of protection that will be offered to that design – effectively constituting a ‘build’ on existing EU law.

In the more recent case of PMT 13496-22, the Swedish Court, by reference to the Cofemel decision, flagged this possible discrepancy in interpretation once again, stating that it is “not clear whether the CJEU’s statements refer to the importance of originality for the scope of protection of the work or, as the Patent and Market Court of Appeal understands it, constitute that copyright works of various kinds – photographic works, works of applied art and other types of works – shall be assessed and protected in the same way”.

In late 2023, the Swedish Court of Appeal requested a preliminary ruling regarding the scope of protection for three-dimensional works in light of Cofemel [See: Case C-580/23, Mio and Others] – suggesting a desire for a further harmonising of Swedish national copyright law and EU copyright law. The Advocate General’s Opinion supports the principle that originality, as defined by the Directive, is the sole requirement for copyright protection of designs, including works of applied art – but it also emphasises the need for a rigorous application of the relevant originality criteria to avoid undermining the balance with EU design law. The AG’s Opinion thus affirms the judgment in Cofemel – but it remains to be seen if the CJEU will reach a similar conclusion.

The approach taken in non-Member States

The approach taken in non-Member States, such as the United Kingdom, is also interesting. Whilst now a former EU Member State, the UK implemented the Directive into national law in 2002, so the UK’s national courts are, to some extent, under a duty to interpret UK law in conformity with the Directive. However, traditionally a higher bar has been set for three-dimensional works to enjoy copyright protection. One important UK case held that a work of craftmanship must also have some aesthetic appeal [See: Hensher v Restawile [1976]], reflecting a tension between EU and UK copyright law.

The CJEU’s decision in Cofemel has raised serious questions as to whether sections 4 and 51 of the UK’s key piece of copyright legislation, the Copyright, Designs and Patents Act 1988, is compatible with EU law – but to date the UK’s national courts have not made any attempt to align UK copyright law with Cofemel (and indeed in a 2024 case acknowledged the divergence between the approaches – finding that a rowing machine did not warrant copyright protection, as there was no evidence of an intention to create something with artistic or aesthetic merit).

Finally, outside of Europe, the protection of designs as copyright works in Hong Kong and Singapore is broadly aligned with the current UK copyright regime – with a ‘closed list’ of works which can command copyright protection. For three-dimensional designs to qualify for protection, they must fall under the definition of ‘artistic works’, and in turn meet the definition of one of the specific types of ‘artistic works’ – including a work of artistic craftmanship (which requires a high level of artistic merit).

Key takeaways

Authors of three-dimensional works in the majority of EU Member States can rest assured that, as long as their work simply meets the basic ‘originality’ requirements, it will benefit from copyright protection – which can be used to take action against those who create infringing copies of their works.

However, some Member States – including Italy and Sweden – are still playing catch-up in this regard, and authors of designs should seek advice in relation to the protection of their works as copyright works in these territories the immediate future (particularly pending the CJEU’s decision in MIO with regards protection of such works in Sweden).

Whilst still a popular territory for many rightsholders seeking to enforce the copyright in their designs, would-be claimants in the UK should take care not to fall foul of the additional requirement for their works of artistic craftsmanship to have an artistic or aesthetic value in order to command copyright protection – an approach which is also broadly reflected in the copyright regimes of common law territories Hong Kong and Singapore.

This article was co-authored by Natalia Martosinska, Trainee Solicitor at CMS Cameron McKenna Nabarro Olswang LLP.