By: Yann Rim, Phillips Nizer Intellectual Property Intern
Being home to Paris and Milan, the European Union (“EU”) has every reason to draft its laws to protect fashion designers and their works with particular care. An efficient way of protecting fashion designs is through the Unregistered Community design, which protects design works without requiring any registration process for a limited period of three years (instead of the five years of protection, with renewals, given to registered designs). As the fashion industry often depends on short-lived, seasonal designs, many designers have concluded that the burden of going through the registration process each season is not worth the trouble.
However, design law is not the only way to protect fashion designs. In fact, a fashion design can also be protected by copyright. The EU has set ground rules regarding the interaction between copyright and design law. One could expect that it would be extremely difficult to set such rules for twenty-seven jurisdictions with local laws and rules that differ considerably for cultural or historical reasons, but that has long been the challenge of a united Europe in so many different ways.
For example, Italy and Germany grant copyright protection to fashion design works on the condition that the work be of superior artistic value pursuant to the scindibilità principle in Italy and the Stufentheorie in Germany. In contrast, France does not require such a showing of artistic value because a 1793 statute prohibits imposing such a requirement. The French rationale is that, if superior artistic value were to be considered in granting copyright protection, the judge would effectively act as an art critic or, at the very least, expert witnesses would have to be called to testify on the question of superior artistic value, thereby enabling art critics to influence copyright law in unforeseeable ways.
So how does the EU deal with such differences? In the Cofomel case (Cofemel v G-Star Raw, C-683/17 – Sept 12, 2019), the Court of Justice ultimately chose to follow the French rule and held that, if the law of a member state were to require a showing of some sort of “aesthetic” value for a design to be eligible for copyright protection, that would contradict the requirement of objectivity (as to taste and art) as mandated under EU law. The Cofomel case had been initiated by the highest Portuguese court, which asked the Court of Justice if it should be inferred from Article 2(a) of the InfoSoc Directive that member states are not allowed to interpret the word “work” in conformity with their own copyright law definitions. The answer was “Yes.” The notion of work in Article 2(a) is an independent EU notion that is not subject to interpretation by member states. Therefore, EU courts are not bound by the states’ own interpretation of the word work and will disregard any national requirement that a work have superior artistic value for it to receive copyright protection. As a result, EU law can be said to prohibit member states from denying copyright protection to designs that meet the requirements for copyright protection – including designs other than registered ones (subject to Article 17 of the Design Directive).
That raises a theoretical question: would a fashion designer in Milan–whose work does not qualify for copyright protection under Italian law–have to move to Paris to benefit from French copyright law? Fortunately, the answer here is “No.” In the Flos case (CJEU Jan. 27, Flos SpA v Semeraro Casa e Famiglia SpA, C-168/09), the Court of Justice held that, although unprotected under Italian copyright law, the work in dispute was entitled to protection under EU copyright law regardless of which jurisdiction is the base of its designer.
Ironically, the single standard in examining eligibility for copyright protection has given rise to the double protection of fashion design works – by copyright law and design law – because if a work satisfies the EU requirements for copyright protection, the protection is granted regardless of its use as protectible a fashion design. However, double protection means that there are two statutory tools available; for copyright purposes, the work is still subject to the three-step test for protection. That test emerged by treaty (known commonly by the acronym TRIPS) permits restrictive measures:
- in certain special cases,
- that do not conflict with the normal exploitation of the work; and
- that do not unreasonably prejudice the legitimate interests of the author/rights holder.
In a way, that test is similar to the concept of fair use in the United States in that it gives leeway for a judge to decide what counts as a legitimate use of a copyrighted work in the absence of explicit permission. For a minority of French academics, a European law of fair use can be inferred from the test. However, the EU is not ready to do so at this time. The Court of Justice is apparently trying to avoid the effects of liberal and often unpredictable interpretations of copyright exceptions such as the fair use exception has seen in the United States.
Nonetheless, the Court of Justice did get some inspiration from the American fair use doctrine in the Nintendo case (CJEU Spt. 27 2017, Nintendo Co. Ltd v BigBen Interactive GmbH and BigBen Interactive SA, Joined Cases C-24/16 and C-25/16). There, the court defined the concept of “citation,” stating that Big Ben (a video game accessory seller) was merely “citing” Nintendo’s work in order to explain how to use its products on a video game console. The court therefore concluded that Big Ben’s use of a protected graphic design owned by Nintendo in order to explain or demonstrate the use of its accessories with Nintendo products was a legitimate, non-commercial use and did not constitute copyright or design law infringement, even without prior authorization from Nintendo.
It is clear that the Court got this idea from the fair use and fair dealing concepts of US law. Although the EU does not formally recognize a broad judge-made exception to copyright and design law protection, the Court of Justice was still willing to create an exception in order to tidy up its own law.
What that potentially means is that, when considering protection of designs in Europe, start your analysis at the EU level and work down from there to the individual national legal systems that may be involved. And, as with so much of design law worldwide, be prepared to expect the unexpected.
 The EU was formerly known as the European Community
 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
 Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, also known as the InfoSoc Directive.
 F. Pollaud-Dulian, The dragon and the white whale : three steps test and fair use, in Intellectual Property in Common law and civil law, Elgar publishing 2013, p. 158