Copyright protection for original clothing designs

The UK applies the ECJ’s Cofemel decision and rules that 'complete conformity' with EU law precludes any requirement for artistic or aesthetic value in copyright works

17 April 2020

In a decision which will be of interest to those in the fashion industry, the UK IPEC Court has indicated that the impact of the ECJ’s Cofemel decision (Case C-683/17) has confirmed that the only requirement for a design to achieve copyright protection is originality. 

Application of Cofemel in the UK

The Cofemel decision was considered by the Intellectual Property Enterprise Court (IPEC) in Response Clothing Ltd v The Edinburgh Woollen Mill Ltd. The current case law on 'works of artistic craftsmanship' under the Copyright, Designs and Patents Act 1988 (CDPA), indicates that such works must have some aesthetic appeal. However, the Judge noted that conformity with Cofemel would exclude any such requirement. In this particular case, the apparent conflict with EU law was avoided as it was decided that the fabric did in fact have aesthetic appeal. However, given that the UK is applying EU law for the duration of the transition period, we are likely to see further decisions on the apparent conflict of UK copyright law with EU law. It remains to be seen whether we will start to see a divergence in UK copyright law after the end of the transition period (the end of 2020).

Background to Cofemel

G-Star commenced proceedings in Portugal in 2013 against Cofemel, a competitor clothing manufacturer. G-Star claimed that Cofemel copied the designs of its 'ROWDY' t-shirts and 'ARC' jeans, and that its designs were protected by copyright. G-Star was successful in its claim in the first instance court, and this decision was upheld on appeal. On Cofemel's further appeal, the Portuguese Supreme Court stayed the proceedings to allow for a referral to the ECJ. The key question put to the ECJ was whether the Copyright Directive prevented Member States from having the freedom to choose the requirements for copyright protection of designs, over and above the requirement for originality in the Directive.

The co-existence of design rights and copyright

Before directly answering this question, the ECJ considered whether the object of protection could benefit from both copyright and design rights simultaneously. The ECJ confirmed that design rights and copyright protection do apply independently of each other, and as such can co-exist. However, the ECJ did note the potential adverse consequences of the overprotection of designs, by copyright, and emphasised that concurrent protection will exist only in certain situations. It also noted that the duration of copyright protection far exceeds designs and that only original 'works' should enjoy the extended duration of copyright protection, in comparison to the protection of designs.

When will a design be protected by copyright?

The ECJ confirmed that a design can be classified as a copyright 'work', as defined under the Copyright Directive, if the following cumulative conditions were satisfied:

  • The original subject matter must constitute the expression of the author’s own intellectual creation
  • Classification as a 'work' is reserved to only those elements that are the expression of such creation.

To qualify as 'works', the subject matter must reflect the personality of its author, as an expression of their free and creative choices, and be identifiable with sufficient precision and objectivity. Any further criteria, for example the work’s artistic or aesthetic value, was not a relevant consideration.

The classification for copyright protection must be interpreted uniformly across the EU and there should not be any additional criteria. The fact that a design may generate an aesthetic effect does not, in itself, meet the requirement of originality.

How can Burges Salmon help

If you would like any further information, please contact Emily Roberts or Jeremy Dickerson, or your usual intellectual property team contact.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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