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01 February 2021

Your bike could be a work of art!

Can copyright replace expired patents?

We love these simple vehicles that quickly take us through today's traffic jams. But the bicycle was invented long before cars conquered our streets. The first mechanically propelled, two-wheeled vehicle may have been built by Scottish blacksmith Kirkpatrick MacMillan in 1839, although the claim is often disputed.1 Since then its basic technical structure has changed very little: two wheels, a seat, a handlebar and pedals, all mounted on a fixed frame. Of course, there have been many technical advancements, like gears, back pedal brakes and so on. As with any innovative technical device, the intellectual property lawyer thinks primarily of possible patent protection. There was such a development at the end of the 20th century, when an inventor came up with the brilliant idea of a foldable bicycle. It can have three different positions: folded, unfolded and a stand-by position enabling the bicycle to stay balanced on the ground. Naturally the technical solution was patentable. This Brompton bicycle quickly became a cult item. Small, handy and, when folded, even a chic decorative object in a city office.

But much to the chagrin of technicians, patent protection basically ends after 20 years. This fate was shared by the Brompton bicycle and the technical solution became freely available to everyone after the patent expired. Unsurprisingly, the technical solution was soon taken up by a competitor with a similar-looking product.

Is there a way to protect this exquisite piece of technology against imitations even after patent protection has expired?

The idea arose to claim copyright protection for the Brompton bicycle. This protection has considerable advantages compared to the patent: it arises automatically, does not involve a costly registration procedure, is applicable worldwide and ends long after the death of its creator. Copyright protection is by no means remote even for a technical object. Although the concept of copyright chiefly brings to mind the works of painters, writers or composers, it also covers functional achievements, such as computer programmes or databases, as well as works of applied art, such as a teapot or the body-work of a racing car. So why not copyright the Brompton bicycle?

Of course, there were also counter- arguments: Wouldn't an affirmative answer to copyright protection lead to an inadmissible extension of the protection of inventions beyond the duration of the patent? Does the EU not offer a special, harmonised protection right for designs anyway? And do the EU rules on design protection not expressly exclude purely technical functional features from design protection?2 Should this principle not therefore also apply to copyright?

The InfoSoc-Directive3 does not provide an explicit answer to this question. A definition of the "work" protected by copyright is missing. To clarify this, a Belgian court4 requested a preliminary ruling by the ECJ. The ECJ's answer was straightforward.5 The concept of "work" has two conditions: First, it entails an original subject matter which is the author's own intellectual creation. Second, it requires the expression of that creation, i.e. the existence of a subject matter that is identifiable with sufficient precision and objectivity. This prerequisite was undoubtedly fulfilled with the Brompton bicycle. As regards the first condition, it is necessary and sufficient that the subject matter reflect the personality of its author, as an expression of his free and creative choices. Where the shape of the product is solely dictated by its technical function, that product cannot be covered by copyright protection. Although the shape of the Brompton bicycle appears necessary to obtain a certain technical result, it is for the referring court to ascertain whether, in spite of that fact, the bicycle is an original work resulting from intellectual creation.

Besides protection by a registered or unregistered design, copyright law can therefore certainly be a suitable additional instrument of protection for products which at first sight are primarily characterised by their technical solution. It is worth taking a second look to see whether the concrete form of the product is "an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality". Good news for those products whose patent (and perhaps design) protection has already expired.

But copyright protection cannot replace patent protection, for it does not grant comprehensive protection of the technical solution as such, regardless of its form. It must be examined in each case individually whether the infringing product copies that form of appearance which is the intellectual creation of its author.

2 Art. 8 of Council Regulation (EC) No 6/2002 on Community Designs states "A [European Union] design shall not subsist in features of appearance of a product which are solely dictated by its technical function."
3 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).
4 Tribunal de l'entreprise de Liège (Companies Court, Liège, Belgium).
5 CJEU C-833/18, Brompton Bicycle.

author: Guido Kucsko


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