Cofemel & Cumulation
Updated: Sep 5
Should each object (whether it is a book or a pair of jeans) be only protectable by a single intellectual property right or is cumulative protection legitimate? In this guest post, Alicia Ogborn examines this complicated question.
There has long been tension and debates surrounding the cumulative protection of designs with copyrights in terms of conditions which need to be met. Previous decisions by CJEU (e.g. Flos, Infopaq) ruled that Member States were not able to exercise discretion in setting additional conditions which a creative work would have to meet in order to benefit from copyright.
Some Member States (notably Portugal and the UK) nevertheless have additional thresholds such as the requirement that a creative work fall within a specific category in order to qualify as a copyright work.
Cofemel v G-Star
This was a key issue that G-Star Raw faced when it tried to rely on copyright protection for its t-shirts, jumpers and jeans which it alleged had been copied by Cofemel in Portugal.
Following various arguments regarding the lack of compatibility with EU law, the Portuguese Court of Appeal referred the question of whether thresholds for copyright protection are legitimate to the CJEU.
The CJEU ruled that the originality test should be applied uniformly and the key question is was the work the "author’s own intellectual creation" as a result of their "free and creative choices".
The UK still uses a closed list approach, dictating what types of work may be protectable. This approach is incompatible with EU law but as the UK has now left the EU and is in the transition period, in practice, the situation is unlikely to change and the closed list approach to copyright works will likely remain in the UK for some time to come.
Response v Edinburgh Woollen Mill has been the first case to consider the impact of Cofemel. This English law decision consider the Copyright, Designs and Patents Act 1988 Act as compatible with the Infosoc Directive. As a consequence, the three dimensional fabric in issue was classified as a work of 'artistic craftsmanship' (one of the closed list categories) and therefore qualified as a copyright work.