Ip and Art: an International Perspective

• Publication year: 2019
• Author: Cristina Manasse

IP and Art: An International Perspective

Cristina Manasse

Manasse Studio Legale, Milan

James C. Roberts III

Global Capital Law Group PC

BLUE JEANS & WASHING MACHINES: COPYRIGHT COMES TO EU LAUNDRY ROOMS (AND ELSEWHERE)

Introduction

The '60s might have launched the global domination of blue jeans, but the September 2019 Cofemel decision of the European Court of Justice ("CJEU") brings denim into the domain of European copyright law.¹

Among other issues (relating to "harmonization of the laws of the EU member states), in Cofemel the CJEU answered these IP questions:

• Can objects coming from what is known as the "applied arts" such as designs for blue jeans, sweaters and t-shirts be protected under copyright law in the European Union, in addition to other protections afforded such prosaic items? The answer: Yes.
• What is the standard for determining whether such items are works and therefore could enjoy copyright protection? The answer: The same standard as for any other works that could receive copyright protection, which is originality—and only originality, thereby excluding "subjective" factors such as aesthetic merit.

At its most basic, in providing these answers, Cofemel reaffirms previous case law that eliminated the legal distinction between "arts" and "crafts" for purposes of copyright protection and then goes further to establish that the sole criterion for such protection is originality.² Previously, works of art or creativity could receive copyright protection, while the results ofthe "applied arts," considered to be industrial output or "utilitarian," received more limited "design rights." The CJEU established an EU-wide standard for determining whether or not a work received copyright protection: Now, it can be said that at least the basic contours of a uniform copyright law for the entire EU is in place.

The Black Letter Law of Cofemel ?

Therefore, Cofemel can be said to stand for the following proposition: If the item in question from the fields of "applied art" manifests originality, then it is a work that deserves copyright protection and all that the courts of the member states can do is determine the facts of originality. Full stop.

No artistic merit, no lists of product types permitted or prohibited from copyright. Just originality. That designs and models fall within the category of applied arts is irrelevant to that analysis.

What can be expected now is that determining "originality" could very well fall back into the longstanding and rich jurisprudence in member states regarding artistic merit. In other words, it could be easy for courts in member states to conflate "originality" with artistic merit.

G-Star Raw v. Cofemel

G-Star Raw is a hugely successful and well-known Dutch "urban clothing" company that has built worldwide brands based initially on "raw" denim, with flagship stores in major cities such as New York, Milan, Paris and London and more than 6,000 points of sale around the world. Celebrities such as Liv Tyler, Pharrell Williams and Formula 1 driver Max Verstappen are either spokespersons or partners with G-Star in various endeavors. 2018 sales are estimated to have been above $150 million. Cofemel, a subsidiary of an larger Portuguese holding company, is known for its denim (and other material) clothing under the brand of Tiffosi.

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The Conflict

G-Star took Cofemel to court in Portugal claiming that Cofemel violated G-Star's copyright in several of its product lines, specifically, models for jeans, t-shirts and sweaters.³ Cofemel argued that those designs and models were "works" protected only by "design rights," a subset, if you will, of EU IP law that provides more limited IP protection to utilitarian products.⁴

In one sense, Cofemel was "correct" in its defense because most member states continued to maintain the distinction between works from applied arts and more creative works that could be copyrights. In the absence of complete harmonization of copyright law, the distinction—and therefore protection—might be able to stand.

Once the case got to the Portuguese supreme court, that court turned to the CJEU in light of several CJEU opinions moving harmonization forward for copyright law and the "InfoSec" Directive.⁵ That court asked if the Portuguese standard for copyright protection could stand. Portuguese law on this matter at the time demonstrates the problems with the hodge-podge of member states jurisprudence. Unlike many the legal principles of many other member states, Portugal law permitted copyright protection for works from the applied arts if they invoked an "individual, aesthetically remarkable, visual effect."⁶

The Context of The EU Patchwork of Copyright Protection

One could argue that member state—and EU—IP law shares the same three main segments as other systems, ably summarized in Cofemel:

the protection of inventions through patent law, that of intellectual creations through copyright and that of notoriety through trademark law.⁷

Over the course of decades, if not centuries, EU member states developed copyright principles by granting protection on the basis of categories of "works" that were themselves based on the degree of artistic value or merit. One could sense a kind of snobbishness—that copyright was the crown jewel to protect culturally important works of creativity. How could any reasonable person expect that works of, say, contemporary literary heroes such as Italo Calvino in Italy, Julian Barnes in the UK and Albert Camus in France would share the same protection as that given to a washing machine or, the stars forbid, ripped blue jeans? Certainly, there must be standards.

Whether or not it was cultural or aesthetic elitism, member states created a new category to protect the prosaic objects: design rights. It was understood that these two types of protection did not overlap, at least as far as extending copyright protection to, well, base objects given to mass production.

And there were standards for making such distinctions. In Italy, jurists looked to the artistic value or merit; in the UK, jurists sought to understand if there was sufficient skill and labour. Not surprisingly, the resulting IP protection, or lack thereof, differed from country to country. UK law listed types of works that could be deemed works to receive copyright protection, (graphic works, photographs, collages, architectural or artistic crafts works). What was overlooked—or perhaps mixed in with other standards based on aesthetic judgments—was the principle at the heart of such protection: originality.

The Central Question: What is a Work?

Unfortunately, and as the Advocate General (AG) Analysis notes, there is no definition of "work" in the relevant EU document, i.e., the InfoSec Directive and thus the AG notes:

[...S]uch a lacuna could

...