Bicycle case confirms copyright protection in utilitarian works

By Larissa Holtzhausen on 25 January 2021

In the recent decision of the CJEU in Brompton Bicycle Ltd v Chedech/Get2Get (Case C‑833/18, SI) the court considered whether a design dictated in part by technical considerations may still qualify for copyright protection under EU law.  Ultimately it was found that the deciding factor will be whether the design reflects the personality of the author and is an expression of her/his free and creative choices. 

While copyright law is generally viewed as the appropriate mode of protection for traditional artistic works such as paintings and sculptures, its application spans much broader.  In fact, copyright can vest in a wide range of relatively mundane articles, including, for example, maps, product pricing systems, the shapes of containers and in this case, the design of a bicycle.  


This case dealt with the application of copyright law to utilitarian works.  

Brompton, an English company, has since 1987 marketed a folding bicycle ("Brompton bicycle").  The standout feature of the Brompton bicycle design is that it can be folded into three positions, enabling it to be easily stored and transported.  This foldable bicycle was protected by a patent that has recently expired.  

During 2017, Brompton discovered that a competitor, Get2Get, was marketing a bicycle called the Chedech, which has a very similar design which could likewise fold into three positions.  Brompton swiftly brought an action before the Companies Court in Belgium, alleging that the Chedech bicycle infringed Brompton’s copyright. 

Get2Get in their response to the claim, argued that the appearance of both bicycles was dictated by technical considerations (to ensure that the bicycle can fold) and that the design, being utilitarian, could therefore not be protected under copyright law.  

The legal questions  

In order to qualify for copyright protection, a "work" must meet two conditions; it must be original, and it must be expressed in material form.  Under Belgian law, shapes that are necessary to obtain a technical result are not considered to possess the requisite originality to qualify as a work for the purposes of copyright law, and therefore are excluded from copyright protection.  In this case, the Court had to decide whether the Brompton bicycle design was dictated by function and therefore ineligible for copyright protection.  

The Court held that although a shape or design will typically be excluded from copyright protection if it is necessitated solely by technical function, certain utilitarian shapes can benefit from protection provided they are original (a product of the author’s own intellectual creation).  To determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor that determined those features.  

The Court confirmed that where a work was dictated by technical considerations which have left no room for the creative freedom of the author or an expression of his individual creative choices, that subject matter will not be regarded as possessing the originality required for it to constitute a work and not be eligible for copyright protection.  For the same reason, if the features of the shape reflected the creative freedom of the author, the design would be eligible for copyright protection.  

Copyright protection can therefore apply to a shape which is, at least in part, necessary to obtain a technical result, provided that the choice of shape is the result of the author's own intellectual creation.  

The Court also addressed the "multiplicity of shapes theory".  In terms of this theory, a shape will not be considered necessary to achieve a technical result if other shapes can produce the same result.  The court held that the use of such other shapes, will be a factor to determine whether the choices made reflect the author's personality.  

Further, the Court held that the fact that the foldable ability of the bicycle was previously protected by a patent does not mean that it cannot benefit from copyright protection. The expired patent is relevant to the question of copyright only in so far as it reveals "what was taken into consideration in choosing the shape of the product concerned ".  Copyright protection can therefore cover products which also benefit from design or patent rights.  The fact that a work or design attracts a certain type of Intellectual Property ("IP") does not disqualify it from protection under another.  

Application in South Africa  

Under South African law, the bar for originality in copyright law does not require that a given work be an expression of the author's personality, but merely that the author expended sufficient skill, effort and labour in creating the work.  This is known as the "sweat of the brow" standard and is a lower standard than the one applied in the European Union.  For this reason, a broad range of utilitarian works that would typically fit the profile for design or patent protection, may potentially also qualify for copyright protection.  

It is important for creators, businesses and inventors to understand that various types of IP can exist in any given work.  Each type of IP has its own benefits and shortfalls, and each has a different scope and term of protection.  To ensure that the broadest possible protection is obtained, these types of IP can be used in conjunction to secure an owner’s rights.  

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