We continue our series of articles on the key changes introduced by the new EU design package looking at the intricate relationship between design rights and copyright. (See our first article in this series here: The EU design package: What’s new?, Jan Bärenfänger.)

Article 23 of the recently adopted Design Directive 2024/2823 (‘2024 Design Directive’) states that: “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 by copyright as from the date on which the design was created or fixed in any form provided that the requirements of copyright law are met.” Mutatis mutandis, the same is true of the Design Regulation 2024/2822 (‘2024 Design Regulation’). 

The possibility of protecting designs through copyright and not only design rights is consistent with the well-established principle of rights cumulation, which is also noted by recital 12 in the preamble to the 2024 Design Directive: “It is important to establish the principle of cumulation of protection under specific law for registered designs protection and under copyright law, whereby designs protected by design rights should also be eligible to be protected as copyright works, provided that the requirements of copyright law are met.”

What is new to the 2024 design reform is that it is now clear that the conditions for copyright protection of designs are not (or no longer?) a matter of national law but are rather to be applied uniformly across to the EU territory, in accordance with settled case law of the CJEU.

The law pre-reform

Under Article 17 of the “old” Design Directive 98/71 (‘1998 Design Directive’) and Article 96(2) of the Design Regulation 6/2002 (‘2002 Design Regulation’), it appeared that EU Member States would be formally free to determine the conditions under which copyright in a design arises. 

However, on a material level, this has seemingly been untrue – or no longer true – for approximately 15 years. The starting point of this process was the 2009 judgment in Infopaq, C-5/08, in which the CJEU de facto harmonized the key requirement for protection under copyright – that is: originality – under the InfoSoc Directive 2001/29, and set an EU-wide standard of prima facie infringement of copyright’s right of reproduction. Since then, the Court has progressively clarified the EU law’s uniform approach to copyright protection of works, including designs.

For designs specifically, in the subsequent judgment in Flos, C-168/09, the CJEU seemingly disregarded the wording of the then existing EU design legislation. It held that, if a design is eligible for protection under the InfoSoc Directive and is, as such, original in the sense clarified by the Court itself, then EU Member States cannot deny such a protection. The outcome in Flos led, for example, the UK to repeal section 52 of the Copyright, Designs and Patents Act, which provided for a differential treatment of works of applied art under UK copyright vis-à-vis other works.

Subsequently, in Cofemel, C-683/17, the CJEU indicated that originality is the sole requirement for protection of designs under copyright. That decision brought to its natural consequences the evolution already signalled by earlier case law. Overall, national courts need to identify what makes a work original, also bearing in mind that functional choices do not confer originality. 

More recently, in Kwantum, C-227/23, both Advocate General (‘AG’) Szpunar and the CJEU confirmed that designs can be protected upon merely fulfilling a requirement of originality, understood in accordance with EU law. The AG Opinion was adamant that neither Article 17 of the 1998 Design Directive nor Article 96(2) of the 2002 Design Regulation question that such a possibility is precluded:

“Those provisions therefore lay down not a principle of general scope governing the protection of works of applied art in EU copyright law, but a rule for overlapping protection regimes confined to the substantive scope of the acts concerned, namely the subject matter protected as designs under those acts.”

The CJEU endorsed AG Szpunar’s Opinion and his reading of the InfoSoc Directive, including that designs are protected upon solely fulfilling a requirement of originality. In essence, any time that there is a ‘work’ as defined by the CJEU in, e.g., Levola Hengelo, C-310/17 that is marketed in the EU, the InfoSoc Directive shall apply.

The reform and the codification of CJEU case law

Considering all the above, when it comes to the protectability of designs by means of copyright, the 2024 EU design reform appears to “codify” CJEU case law. The original Commission’s proposal for what would be ultimately adopted as the 2024 Design Directive stated that copyright would arise upon fulfilling “the requirements of Union copyright law”. The final formulation of Article 23 of the 2024 Design Directive has removed the word “Union” from the provision, referring to “the requirements of copyright law”. 

Is this change of language substantial? Unlikely so. 15 years of CJEU case law on originality indicate that Member States cannot set their own requirements for protection of designs under copyright: this matter is governed by EU law.

Yet, at the time of writing, there are some pending CJEU referrals concerning copyright protection of designs. One of them – konektra, C-795/23 – asks the CJEU (among other things) whether, when assessing the originality of designs for copyright purposes, “higher requirements are to be imposed with respect to the creator’s free and creative choices than for other types of work”. The answer, which is now also crystallized in the new EU design legislation, appears to be in the negative. The “requirements of copyright law” are, simply, that there is a work, and that work is original: nothing more, nothing less.

Look out for our next article in this series which will focus on the filing and prosecution of designs, and the new and extended definitions and terminology.