• Press
  • Offices
  • Contact
  • Legal notice
  • EN
  • UPC
  • Firm
    • Main Focus
    • History
    • Guiding Principle
    • Code of Conduct
    • Awards and Rankings
  • Our Practice
    • Legal Areas
    • Industries
  • Our Team
  • News & Events
    • News
    • Events
    • UPC-Update
    • IP-Update
    • Publications
    • B&B Bulletin
  • Career
  • Menu Menu
FIND EXPERTS
  • UPC
  • Firm
  • News & Events
    • News
    • Events
    • UPC-Update
    • IP-Update
    • Publications
    • B&B Bulletin
  • FIND EXPERTS
  • Contact
  • Our Practice
  • Career
  • Offices
  • EN
  • Legal Areas
  • Industries

Back to the higher thres­hold? – The CJEU decision Cofemel

1. May 2020/in Issue May 2020, Copyright

Of all things, the notion of “a work” is not legally defined in any of the many EU directives on copyright, even though the term appears repeatedly in these directives.  However, in recent years the European Court of Justice (CJEU) seems to have discovered this term for itself as an “autonomous concept of Union law” which must be interpreted and applied uniformly throughout the Union. For German jurisprudence, the Cofemel decision of the CJEU might result in concluding a full circle, as it points back into the direction the BGH once came from with its theory of a higher threshold for copyright protection in matters of applied art.

The European Concept of the (Copyright Protected) Work Continues to Take Shape: The CJEU decision C-683/17 – Cofemel

Of all things, the notion of “a work” is not legally defined in any of the many EU directives on copyright, even though the term appears repeatedly in these directives, as in Article 3(1) and Article 4(1) of the InfoSoc Directive (2001/29/EC). However, in recent years the European Court of Justice (CJEU) seems to have discovered this term for itself and sees it as an “autonomous concept of Union law” which must be interpreted and applied uniformly throughout the Union (para. 29 of the judgment C-683/17 – Cofemel).

The Path toward a European Concept of “Work”

So far, it had always been borderline phenomena for the CJEU to assess, so that it basically worked its way from the edge to the middle of the concept . The first judgment on this subject, C-5/08 – Infopaq, of 2009, concerned the protectability of an 11-word extract from a protected work (which the CJEU affirmed). In Case C-145/10 – Painer, of 2011, the CJEU then for the first time dealt in more detail with the concept of the scope of creative freedom, namely on the subject of portrait photography. This requirement of originality, whereby an author expresses his creative abilities in an independent manner by making free and creative choices, was then further elaborated in Case C-604/10 – Football DataCo. Such originality be always excluded where technical considerations, rules or constraints determine a design, which leave no room for artistic freedom.

Case C310/17 – Levola Hengelo – of 2018 dealt with the interesting question of whether the taste of a cheese could enjoy copyright protection. The protectability ultimately failed because in the case of the taste of a foodstuff, unlike, for example, a literary, pictorial, cinematic or musical work, identification is essentially based on taste sensations and experiences which are subjective and changeable. Here, the CJEU lacked the intersubjective concretizability of the object of protection. Nevertheless, the CJEU did not refrain from briefly summarizing the creative requirements for a work in this case. Accordingly, two conditions must be fulfilled cumulatively:

“First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation (…). (para. 36)

Secondly, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29 (…).” (para. 37)

Does the BGH’s “Geburtstagszug” judgement collide with the Cofemel decision of the CJEU?

In its decision in Case C-683/17 – Cofemel of 12 September 2019, the CJEU is building on the basis outlined above. It concerns clothing models, i.e. the field of applied arts. For decades, in Germany a higher threshold for copyright protection used to be applied to such works in order to prevent competing copyright and design protection. Under the pressure of the European development of design law, the Federal Court of Justice (BGH) gave up this special path as early as 2014 in its decision I ZR 143/12 – Geburtstagszug (GRUR 2014, 175).  The CJEU now expressly confirms this in para. 45 of the Cofemel decision. The principle of a cumulative protection as a design, on the one hand, and as copyright protected work, on the other, applies.

In the aforementioned decision, the BGH concluded its remarks in para. 41 as follows:

“Even though  no higher requirements are to be placed on the level of originality of a work of applied art than in the case of works of art that are free of purpose, it must be taken into account, when assessing whether such a work achieves the level of design/originality required for copyright protection, that the aesthetic effect of the design can only justify copyright protection if it is not due to the intended purpose of use but is based on an artistic achievement (…). An author’s own intellectual creation presupposes that there is a scope for creative freedom and that it is used by the author to express his or her creative spirit in an original way (…) Furthermore, it must be noted that a low level of originality, although it constitutes copyright protection, leads to a correspondingly narrow scope of protection of the work in question.”

The CJEU now seems to contradict this in its Cofemel decision. According to the CJEU in para. 55 of the judgment, the fact that designs such as the clothing designs at issue generate, over and above their practical purpose, a specific and aesthetically significant visual effect is not such as to justify those designs being classified as “works” within the meaning of Directive 2001/29. That reflects the ‘anti-subjective’ argument put forward in the Levola decision on the taste of cheese.

Pursuant to the CJEU, the decisive factor is rather solely the above-mentioned definition of the autonomous concept of a work under Union law with its two cumulatively required elements, namely “own intellectual creation” and “creative work not determined exclusively by specifications or technology” (para. 29 to 31 of the judgment).

The future irrelevance of an aesthetic effect as a requirement for protection does not mean, however, that the cited position of the BGH would have to be revised, for it too was already based on the CJEU’s new concept of work. That the aesthetic effect of an object justifies protection does not seem to be postulated by the BGH – despite the misleading expression in the quoted passage. It mentions the aesthetic effect rather in the sense that it is the desired consequence of the individual exercising of artistic freedom (resembling the CJEU position in para. 54 of its decision).

In para. 35 of the ruling, the CJEU then says something else which at first glance seems to contradict the position of the BGH: if an object fulfils the requirements of the autonomous concept of a work, the scope of this protection does not depend on the degree of creative freedom of its author and is therefore, even in the case of an object with little freedom of design, not less than the protection which is granted to all works covered by the Directive. Had not the BGH ruled that a low level of creative freedom meant a correspondingly narrow scope of protection?

Here too, however, the BGH had already taken the boundary line drawn by the CJEU into account, since it does not reduce the material scope of protection, but merely emphasizes that in an area in which a lot is predetermined, i.e. in which individuality has only a limited scope within the specifications, all others working according to the same specifications will also achieve similar results.

Thus the creator of a four-wheeled pram – as the BGH and CJEU are to be understood in the same way – may not prohibit other creators from designing four-wheeled prams, provided that their four-wheeled prams stand out from each other as individual designs.

The remaining question is about the level of expression of creative freedom required for a design to be qualified for copyright protection in view of the parallel EU design protection. The CJEU expresses itself somewhat sibylline here when it says in para. 50f.: ” 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. For these reasons (…) the grant of protection, under copyright, to subject matter that is protected as a design must not have the consequence that the respective objectives and effectiveness of those two forms of protection are undermined.” From that it follows that, although the protection of registered designs and the protection as copyrighted works may, under EU law, be granted cumulatively to the same subject matter, that concurrent protection can be envisaged only in certain situations.

One conclusion to be drawn from this could be that no too low requirements must be placed on the concept of “one’s own intellectual creation” in order to prevent design protection from being completely overlapped by copyright protection. This question, which is enormously important for practice, will almost certainly occupy the national courts and eventually lead up to the CJEU once again.

Outlook

So far, in view of the open wording of § 2 German Copyright Act (UrhG), the concept of a copyright protectable work has not led to any conflict between European case law and German statutory law. Yet the development of European case law has more than once forced the BGH to revise the interpretation of law that had often been established for decades.

For the BGH, the Cofemel decision of the CJEU might result in concluding a full circle, as it points back into the direction the BGH once came from with its theory of a higher threshold for copyright protection in matters of applied art.

/wp-content/uploads/2022/04/boehmert_logo.svg 0 0 Petra Hettenkofer /wp-content/uploads/2022/04/boehmert_logo.svg Petra Hettenkofer2020-05-01 10:24:342022-08-24 14:00:36Back to the higher thres­hold? – The CJEU decision Cofemel

Author

Dr. Martin Schaefer

Contents

More articles

  • It’s only human … 7. May 2020
  • Federal Court of Justice Redefines the… 1. May 2020
  • Additional defence op­tions for patent… 1. May 2020

More Articles

It’s only human … 07. May 2020
Federal Court of Justice Redefines the Require­ments for an Injunction in SEP Litigation in its Decision Sisvel ./. Haier (KZR 36/17) 01. May 2020
Additional defence op­tions for patent infringers and faster nullity procee­dings 01. May 2020
The Decision of the German Constitutional Court on the Unitary Patent Court (UPC) 01. May 2020
Use of trademarks for re­seller websites 01. May 2020
Three-year statutory limi­tation period in patent ownership disputes 01. May 2020
New administrative invali­dation proceedings in German trademark law as of May 2020 01. May 2020
International jurisdiction for infringement of an EU trade mark by advertising on the Internet 01. May 2020

Menu

  • Firm
  • Our Practice
  • Career
  • News & Events
  • FIND EXPERTS

Informations

  • Press
  • Contact
  • Legal notice
  • Data Protection
  • General Terms and Conditions
  • Contact

Legal Areas

  • Employee Inventions
  • Data Protection
  • Designs
  • Domains
  • Information Technology
  • Anti-Trust
  • Licensing
  • Trade Marks
  • Patent Valuation
  • Patents & Utility Models
  • Patent Litigation
  • Product Piracy
  • Copyright
  • Unfair Competition

© Copyright 2025– BOEHMERT & BOEHMERT

Scroll to top Scroll to top Scroll to top
Cookie settings Cookie settings

We need your consent before you can continue to use our website.


If you are under 16 and wish to give your consent to volunteer services, you must ask your parent or guardian for permission. We use cookies and other technologies on our website. Some of them are essential, while others provide you with more advanced information. For more information about how we use your data, please see our Data Protection Policy. There is no obligation to consent to the processing of your data in order to use this offer. You can revoke or adjust your selection at any time under Settings. Please note that due to individual settings, not all functions of the website may be available.

Cookie settings

Accept all cookies

Save settings

Accept only essential cookies

Individual data protection settings

Cookie details Privacy policy Legal notice

Cookie settings Cookie settings

If you are under 16 and wish to give your consent to volunteer services, you must ask your parent or guardian for permission. We use cookies and other technologies on our website. Some of them are essential, while others provide you with more advanced information. For more information about how we use your data, please see our Data Protection Policy. There is no obligation to consent to the processing of your data in order to use this offer. Please note that due to individual settings, not all functions of the website may be available. Here you can find an overview of all cookies used. You can give your consent to entire categories or view more information and thus select only certain cookies.

Accept all cookies Save settings Accept essential cookies only

Back

Cookie settings

Essential cookies enable basic functions and are necessary for the proper functioning of the website.

Display cookie information Hide cookie information

Name
Provider Borlabs GmbH, Legal notice
Purpose Stores the settings of the visitors selected in the Cookie Box of Borlabs Cookie.
Data protection policy https://borlabs.io/privacy/
Cookie name borlabs-cookie
Cookie duration 1 year

Content from video platforms is blocked by default. If cookies from external media are accepted, access to this content no longer requires manual consent.

Display cookie information Hide cookie information

Accept
Name
Provider Google Ireland Limited, Gordon House, Barrow Street, Dublin 4, Ireland
Purpose Used to unlock YouTube content.
Data protection policy https://policies.google.com/privacy
Host(s) google.com
Cookie name NID
Cookie duration 6 months

Privacy policy Legal notice