12 September 2019 (*1)

(Reference for a preliminary ruling — Intellectual and industrial property — Copyright and related rights — Directive 2001/29/EC — Article 2(a) — Concept of ‘work’– Protection of works by copyright — Conditions — Connection with the protection of designs — Directive 98/71/EC — Regulation (EC) No 6/2002 — Clothing designs)

In Case C‑683/17,

REQUEST for a preliminary ruling under Article 267 TFEU from the Supremo Tribunal de Justiça (Supreme Court, Portugal), made by decision of 21 November 2017, received at the Court on 6 December 2017, in the proceedings

Cofemel — Sociedade de Vestuário SA

G-Star Raw CV,

THE COURT (Third Chamber),

composed of A. Prechal, President of the Chamber, F. Biltgen, J. Malenovský (Rapporteur), C.G. Fernlund and L.S. Rossi, Judges,

Advocate General: M. Szpunar,

Registrar: L. Hewlett, Principal Administrator,

having regard to the written procedure and further to the hearing on 12 December 2018,

after considering the observations submitted on behalf of:

– Cofemel — Sociedade de Vestuário SA, by I. Bairrão and J.P. de Oliveira Vaz Miranda de Sousa, advogados,

– G-Star Raw CV, by A. Grosso Alves and G. Paiva e Sousa, advogados,

– the Portuguese Government, by L. Inez Fernandes, M. Figueiredo and P. Salvação Barreto, acting as Agents,

– the Czech Government, by M. Smolek and J. Vláčil, acting as Agents,

– the Italian Government, by G. Palmieri, acting as Agent, and F. De Luca, avvocato dell Stato,

– the United Kingdom Government, by S. Brandon and Z. Lavery, acting as Agents, and by J. Moss, Barrister,

– the European Commission, by J. Samnadda, B. Rechena and F. Wilman, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 2 May 2019,

gives the following

1This request for a preliminary ruling concerns the interpretation of Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10).

2The request has been made in proceedings between Cofemel — Sociedade de Vestuário SA (‘Cofemel’) and G-Star Raw CV (‘G-Star’) concerning compliance with the copyright claimed by G-Star.

Legal context

International law

The Berne Convention

3Article 2(7) of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act of 24 July 1971), as amended on 28 September 1979 (‘the Berne Convention’), states, inter alia: ‘… it shall be a matter for legislation in the countries of the Union [constituted by that Convention] to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union [constituted by that Convention] only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.’

The WIPO Copyright Treaty

4On 20 December 1996 the World Intellectual Property Organisation (WIPO) adopted in Geneva the WIPO Copyright Treaty, which was approved on behalf of the European Community by Council Decision 2000/278/EC of 16 March 2000 (OJ 2000 L 89, p. 6) (‘the WIPO Copyright Treaty’).

5Article 1(4) of the WIPO Copyright Treaty, that article being headed ‘Relation to the Berne Convention’, states: ‘Contracting Parties shall comply with Articles 1 to 21 and the Appendix of the Berne Convention.’

EU law

6Recital 60 of Directive 2001/29 states: ‘The protection provided under this Directive should be without prejudice to national or Community legal provisions in other areas, such as industrial property, …’

7Articles 2 to 4 of that directive are respectively headed ‘Reproduction right’, ‘Right of communication to the public of works and right of making available to the public other subject matter’ and ‘Distribution right’. Those provisions require, inter alia, that Member States ensure that authors have the exclusive right to authorise or prohibit reproduction of their works (Article 2(a)), the exclusive right to authorise or prohibit the communication of their works to the public (Article 3(1)) and the exclusive right to authorise or prohibit distribution of their works (Article 4(1)).

8Article 9 of that directive, headed ‘Continued application of other legal provisions’, provides that that directive does not affect, inter alia, provisions concerning other areas. A number of language versions of that article, including the German, English, Spanish, French and Italian versions, state that those areas include, inter alia, those of patent rights, trade marks, design rights and utility models. The Portuguese version of that article refers, for its part, to the areas of patent rights, trade marks and utility models, without mentioning design rights.

9Recital 8 of Directive 98/71/EC of the European Parliament and the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28) is worded as follows: ‘… in the absence of harmonisation of copyright law, it is important to establish the principle of cumulation of protection under specific registered design protection law and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred.’

10Article 1(a) of that directive, that article being headed ‘Definitions’, states that ‘design’ means ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’

11Article 17 of that directive, headed ‘Relationship to copyright’, provides: ‘A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.’

12Recital 32 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), states: ‘In the absence of the complete harmonisation of copyright law, it is important to establish the principle of cumulation of protection under the Community design and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred.’

13The definition of a ‘design’ in Article 3(a) of that regulation is the same as that in Article 1(a) of Directive 98/71.

14Article 96(2) of that regulation, that article being headed ‘Relationship to other forms of protection under national law’, provides: ‘A design protected by a Community design shall also be eligible for protection under the law of copyright of Member States as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.’

Portuguese law

15Article 2 of the Código do Direito de Autor e dos Direitos Conexos (Code on Copyright and Related Rights), headed ‘Original works’, is worded as follows: ‘1. Intellectual creations in the literary, scientific and artistic fields, irrespective of their genre, form of expression, quality, mode of communication and objective, shall include, inter alia:…’

(i) Works of applied art, industrial designs and works of design which constitute an artistic creation, irrespective of the protection relating to industrial property;

The dispute in the main proceedings and the questions referred for a preliminary ruling

16Cofemel and G-Star are two companies active in the sector of design, production and selling of clothing.

17Since the 1990s G-Star has made use, as the proprietor or as the exclusive licence holder, of the trade marks G‑STAR, G‑STAR RAW, G‑STAR DENIM RAW, GS‑RAW, G‑RAW and RAW. The clothing designed, produced and placed on the market under those marks includes jeans of the design known as ARC and sweatshirts and tee-shirts of the design known as ROWDY.

18Cofemel designs, produces and sells jeans, sweatshirts and t-shirts under the TIFFOSI trade mark.

19On 30 August 2013, G-Star brought an action before a Portuguese court of first instance requesting that Cofemel be ordered to cease any acts constituting an infringement of its copyright and unfair competition in relation to it, and to compensate it for the harm suffered in that regard and, in the event of further infringements, to pay it a penalty payment in respect of each day of duration of each of the acts until they cease. In support of its action, G-Star argued, inter alia, that some designs of jeans, sweatshirts and t-shirts produced by Cofemel were comparable to its ARC and ROWDY designs. G-Star also claimed that the latter clothing constituted original intellectual creations and, as such, they ought to be classified as ‘works’ protected by copyright.

20Cofemel’s defence was, inter alia, that such clothing designs could not be classified as ‘works’ entitled to such protection.

21The court of first instance before which G-Star’s action was brought partly upheld its action, and ordered Cofemel, inter alia, to cease its infringement of G-Star’s copyright, to pay the latter a sum corresponding to the profits obtained from the sale of the clothing produced in breach of that copyright and to pay it a daily penalty payment in the event of a further infringement.

22Cofemel brought an appeal against that judgment before the Tribunal da Relação de Lisboa (Court of Appeal, Lisbon, Portugal) which upheld it. In support of that decision, that court considered, first, that Article 2(1)(i) of the Code on Copyright and Related Rights ought to be construed, in the light of Directive 2001/29, as interpreted by the Court in the judgments of 16 July 2009, Infopaq International (C‑5/08, EU:C:2009:465), and of 1 December 2011, Painer (C‑145/10, EU:C:2011:798), as meaning that copyright protection extended to works of applied art, industrial designs and works of design, provided that such subject matter was original, in other words that it was the result of the author’s own intellectual creation, there being no requirement that it had any particular degree of aesthetic or artistic value. Further, that court held that, in this case, the ARC and ROWDY clothing designs of G-Star constituted works entitled to copyright protection. Last, that court held that some of the clothing produced by Cofemel infringed G-Star’s copyright.

Hearing an appeal brought by Cofemel, the referring court, the Supremo Tribunal de Justiça (Supreme Court, Portugal) considers, in the first place, that the following facts are established: (i) the clothing designs of G-Star at issue in the appeal were designed either by designers employed by G-Star or by designers acting on its behalf who had assigned to G-Star their copyright in the designs; (ii) those clothing designs are the result of designs and a manufacturing process recognised as being innovative within the world of fashion; and (iii) those designs are characterised by a number of specific elements (3D effect, the positioning of various components, how they are assembled, etc.) that are allegedly partly copied by Cofemel in the making of its brand clothing.

In the second place, the referring court states that while Article 2(1)(i) of the Code on Copyright and Related Rights clearly includes works of applied art, industrial designs and works of design in the list of works protected by copyright, it does not specify the level of originality required for such subject matter to be granted that protection. The referring court also states that there is on that issue, which is at the heart of the dispute between Cofemel and G-Star, no consensus in Portuguese case-law and legal theory. For that reason, the referring court is uncertain whether it should be held, in the light of the interpretation of Directive 2001/29 adopted by the Court in the judgments of 16 July 2009, Infopaq International (C‑5/08), and of 1 December 2011, Painer (C‑145/10), that the protection ensured by copyright extends to such subject matter in the same way as to any literary and artistic work, and therefore subject to the condition that it is original, in the sense that it is the result of the author’s own intellectual creation, or whether it is possible to hold that a prerequisite of such protection is the existence of a specific degree of aesthetic or artistic value.

In those circumstances, the Supremo Tribunal de Justiça (Supreme Court) decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:

(1)‘(1) Does the interpretation by the Court of Article 2(a) of Directive 2001/29 preclude national legislation — in the present case, the provision in Article 2(1)(i) of the Code on Copyright and Related Rights — which confers copyright protection on works of applied art, industrial designs and works of design which, over and above their practical purpose, create their own visual and distinctive effect from an aesthetic point of view, their originality being the fundamental criterion which governs the grant of protection in the area of copyright?

(2)Does the interpretation by the Court of Article 2(a) of Directive 2001/29 preclude national legislation — in the present case, the provision in Article 2(1)(i) of the Code on Copyright and Related Rights — which confers copyright protection on works of applied art, industrial designs and works of design if, in the light of a particularly rigorous assessment of their artistic character, and taking account [of] the dominant views in cultural and institutional circles, they qualify as an “artistic creation” or “work of art”?’

Consideration of the questions referred

The first question

By its first question, the referring court seeks, in essence, to ascertain whether Article 2(a) of Directive 2001/29 must be interpreted as precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the ground that, over and above their practical purpose, they generate a specific and aesthetically significant visual effect.

Under Article 2(a) of Directive 2001/29, Member States are required to provide that authors have the exclusive right to authorise or prohibit reproduction of their works.

The term ‘work’ referred to by that provision is also to be found in Article 3(1) and Article 4(1) of Directive 2001/29, on the exclusive rights granted to the author of a work with respect to its communication to the public and its distribution, and in Articles 5, 6 and 7 of that directive, the first of those provisions concerning the exceptions or limitations that may be applied to those exclusive rights, and the latter two provisions concerning the technological measures and information measures that ensure the protection of those exclusive rights.

The concept of ‘work’ that is the subject of all those provisions constitutes, as is clear from the Court’s settled case-law, an autonomous concept of EU law which must be interpreted and applied uniformly, requiring two cumulative conditions to be satisfied. First, that concept entails that there exist an original subject matter, in the sense of being the author’s own intellectual creation. Second, classification as a work is reserved to the elements that are the expression of such creation (see, to that effect, judgments of 16 July 2009, Infopaq International, C‑5/08, paragraphs 37 and 39, and of 13 November 2018, Levola Hengelo, C‑310/17, paragraphs 33 and 35).

As regards the first of those conditions, it follows from the Court’s settled case-law that, if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices (see, to that effect, judgments of 1 December 2011, Painer, C‑145/10, paragraphs 88, 89 and 94, and of 7 August 2018, Renckhoff, C‑161/17, paragraph 14).

On the other hand, when the realisation of a subject matter has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work (see, to that effect, judgment of 1 March 2012, Football Dataco and Others, C‑604/10, paragraph 39 and the case-law cited).

As regards the second condition referred to in paragraph 29 of the present judgment, the Court has stated that the concept of a ‘work’ that is the subject of Directive 2001/29 necessarily entails the existence of a subject matter that is identifiable with sufficient precision and objectivity (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, paragraph 40).

That is because, first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. So also must third parties against whom the protection claimed by the author of that subject matter may be asserted. Second, the need to ensure that there is no element of subjectivity, which is detrimental to legal certainty, in the process of identifying that subject matter means that the latter must have been expressed in an objective manner (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, paragraph 41).

As emphasised by the Court, the required precision and objectivity is not attained where an identification is essentially based on the sensations, which are intrinsically subjective, of an individual who perceives the subject matter at issue (see, to that effect, judgment of 13 November 2018, Levola Hengelo, C‑310/17, paragraph 42).

Where a subject matter has the characteristics described in paragraphs 30 and 32 of the present judgment, and therefore constitutes a work, it must, as such, qualify for copyright protection, in accordance with Directive 2001/29, and it must be added that the extent of that protection does not depend on the degree of creative freedom exercised by its author, and that that protection is therefore not inferior to that to which any work falling within the scope of that directive is entitled (see, to that effect, judgment of 1 December 2011, Painer, C‑145/10, paragraphs 97 to 99).

In the light of that case-law, the answer to the first question involves, first, the determination of whether designs are, in general, capable of being classified as ‘works’, within the meaning of Directive 2001/29.

In that regard, it must initially be observed that, under Article 17(2) of the Charter of Fundamental Rights of the European Union, intellectual property is protected.

It is apparent from the wording of that provision that subject matter constituting intellectual property qualifies for protection under EU law. However, it does not follow that such subject matter or categories of subject matter must all qualify for the same protection.

Accordingly, the EU legislature has adopted various measures of secondary law with the aim of ensuring the protection of intellectual property, including, on the one hand, works protected by copyright, the subject of Directive 2001/29, and, on the other hand, designs falling within the scope of either Directive 98/71, applicable to designs registered in or in respect of a Member State, or Regulation No 6/2002, applicable to designs protected at EU level.

In so proceeding, the EU legislature considered that subject matter protected as a design was not as general rule capable of being treated in the same way as subject matter constituting works protected by Directive 2001/29.