By Wendy Donkor
On September 6, 2019, in an important decision affecting the protection of fashion designs throughout the European Union, the Court of Justice of the European Union (CJEU) issued a preliminary ruling on the question of compliance of national law with an EU directive. The case was C-683/17 Cofemel – Sociedade de Vestuário SA v G-Star Raw CV. At issue was whether the court’s interpretation of Art. 2 (a) of Directive 2001/29 precludes enforcement of national (in this case, Portuguese) legislation that grants copyright protection to a design that, beyond any utilitarian function, has a distinctive aesthetic effect. Simply, the question was whether the design could be protected under national copyright law while giving due regard to EU copyright and design law. In this case the answer was no.
One of the core objectives of the EU is the establishment of an internal market. Pursuant to Art. 26 (2) of the Treaty on the Functioning of the European Union (TFEU), the internal market comprises an area without internal frontiers in which the free movement of goods, people, services and capital is ensured. One of the techniques used to provide consistent legal treatment throughout the EU is the requirement that national laws meet the requirements of EU directives. That is, upon the issuance of an EU directive, the constituent nations have to adjust their internal laws to implement it. According to Art. 288 TFEU, although a directive is binding upon each member state to which it is addressed as to the result to be achieved, it is left to the separate national authorities to devise the legislation to attain that result.
In Cofemel, the Court addressed the question of whether G-Star RAW, a Dutch company that designs and sells clothing, could enjoy copyright protection for its designs of jeans, sweatshirts and T-shirts. G-Star RAW proceeded in a Portuguese court against Cofemel, a company that designs and sells clothing under the brand “Tiffosi”, accusing the defendant of copying G-Star RAW’s designs. The CJEU held that, under Directive 2001/09, the fact that a design produces a specific aesthetic effect is not, by itself, enough to qualify it for copyright protection.
Complicating the case is that, unlike the United States, the European Union has specific rules protecting designs independently of copyright law. The Court in Cofemel therefore had to examine the competing purposes and potential effects of the application of Directive 2001/29 (for the legal protection of copyrights and related rights) on the one hand and, on the other hand, Directive 98/71 (for the protection of designs within member states) and Regulation 6/2002 (for the legal protection of designs on the EU level) in deciding if the same design would be granted protection in both ways.
The Court noted the different purposes behind the two different forms of protection. The purpose of the protection of designs is to provide exclusivity for a limited period of time (up to twenty-five years for registered designs; and three years for unregistered Community designs) to the owners of new, distinctive and functional designs that are liable to be mass-produced, giving the owner the chance to obtain a return on the investment without unreasonably limiting competition. Copyright protection, however, is of far greater duration (for the life of the author plus seventy years) and, generally speaking, relates to artistic expressions of intellectual creation, known simply as “works.”
In order for a design to be classified as a “work” protectable by copyright within the meaning of Directive 2001/29, two requirements must be met. First, the design has to be original. In other words, it has to be “the intellectual creation of the author reflecting his personality and expressing his free and creative choices.” Second, the design must be “the expression of the author’s own intellectual creation”. It “must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.”
As the Court in Cofemel observed, although aesthetic considerations are a part of the creative process, the aesthetic effect of a design, by itself, cannot be considered when determining whether the design is an intellectual creation that reflects the author’s freedom of choice and personality and therefore meets the first (originality) requirement for copyright protection. It also stated that the aesthetic effect of a design is the product of an essentially subjective sensation of beauty, which means that a design could never be identified with the precision and objectivity required to make a functional design protectable under EU design law.
In short, in this case, at least as to obtaining double
protection, the beauty of fashion is self-defeating. The clothing designs at issue will remain
protected as such but will not also enjoy the benefits of copyright protection.
 Painer, C‑145/10, p. 94; Renckhoff, C‑161/17,p. 14
 Levola Hengelo, C‑310/17, p. 37
 Levola Hengelo, C‑310/17, p. 40