Issues relating to copyright protection of works of applied art in Spain: ruling by the Court of Appeals of Barcelona on several furniture models of the VITRA GROUP

On 8 May 2025 AG Spuznar issued his Opinion in the Mio/Konektra case (Joined Cases C-580/23 and C-795/23). This addressed the issue of the protection by copyright of works of applied art and the relationship with the protection under design law, the latter of which is specifically intended for utilitarian objects.

This Opinion was issued soon after the much-debated German Federal court of Justice (Bundesgerichstof) ruling on the well-known Birkenstock sandals, which many believe twisted EU design law to match old German practice where the originality analysis when determining if works of applied art are entitled to copyright protection hinged on the artistic merit of the work. 

In a recent ruling, the IP section of the Court of Appeals of Barcelona (Audiencia Provincial de Barcelona) – Judgment no. 134/2025 of January 24, 2025; ECLI:ES:APB:2025:1601- granted copyright protection to several models of chairs and tables of the VITRA group.  Following the judgment, which was not unanimous, it raises the question of whether the same disparity exists between the AG Opinion in the Mio/Konektra case and the practice of Spanish courts. 

The AG Opinion in the Mio/Konektra case

To summarise, the AG in Mio/Konektra argues in his Opinion that:

• Copyright and design protection are autonomous regimes, and an object may qualify for protection under both regimes if it fulfils the requirements of each.
• When analysing the originality of works of applied art, a higher threshold should not be required than for other types of works.
• The originality requirement is not “conditional on the artistic (or other) quality of the work” but rather on the “free and creative choices reflecting the personality of the author”. Furthermore, a design comprising existing elements may still exhibit originality (and thus be eligible for copyright protection) provided those elements are combined in a non-conventional way.
• When analysing copyright infringement in works of applied arts, courts should not rely on the ‘overall impression’ test, which belongs to design protection. Instead, they should assess whether the “creative elements of the protected work […] have been reproduced in a recognizable manner”.

In light of the above, an object may infringe the copyright of a prior design if it reproduces the protected (original) elements, regardless of whether the object produces a similar overall impression. It is possible as well that an object with a similar overall impression to a prior design that is protected by copyright may not infringe that copyright as long as it does not reproduce the elements that are protected.

The judgment of the Court of Appeals of Barcelona of 24 January 2025

Background

Various companies within the VITRA group sued the Spanish company JOSKORTEX for copyright infringement and unfair competition in relation to multiple works, including the well-known Eames armchair, numerous chairs a table and a coat rack. 

JOSKORTEX argued that the works were not original and thus not subject to copyright protection and that its actions could not amount to unfair competition, on the grounds that the works were in the public domain after their design protection had long expired and, as such, they were sources of inspiration for third parties, including the defendant.

Figure 1: Eames lounge chair and ottoman by VITRA	Figure 2: lounge chair design by JOSKORTEX
Figure 3: Noguchi coffee table by VITRA	Figure 4: coffee table design by JOSKORTEX

Ruling of first instance

The commercial court partially upheld VITRA’s claims, recognising originality for the majority of the works, with the exception of three specific chair designs (“FIBERGLASS”, “PLASTIC GLASS”, and “WIRE”). The Court found that the chairs in question consisted of two components exhibiting two basic shapes, and further  stated that the seat legs were not original. Furthermore, there was no complete coincidence between the works and the products marketed by JOSKORTEX, as the latter did not always reproduce both elements (seat and chair legs) of the works.

Figure 5: Fiberglass chair desing by VITRA	Figure 6: Plastic chair design by JOSKORTEX
Figure 7: Panton chair by VITRA	Figure 8: Plastic chair design by Joskortex

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The appeal and ruling of the Court of Appeals of Barcelona

VITRA appealed the decision arguing that the “FIBERGLASS”, “PLASTIC GLASS”, and “WIRE” chairs had a “visual aspect” that differed significantly from the chairs on the market at the time of their creation, thereby substantiating their originality. VITRA also argued that the originality requirement should not be analysed separately element by element, but rather considering the object in its entirety. While the seat and seat legs were not original components, in combination, they were.

JOSKORTEX also appealed the decision, arguing that there were slight differences in their products in comparison to those of VITRA (i.e. their office chairs had slight size differences, there were also some differences in the shapes and finishes of some products).

The Court of Appeals of Barcelona found that the “FIBERGLASS”, “PLASTIC GLASS”, and “WIRE” chairs were indeed original pieces, based on their unique visual identity that differed significantly from the chairs on the market at the time of their creation. The Court referred to Cofemel, but rather than asserting that the chairs reflected the free and creative choices of the author, it argued that the chairs were original because of their novelty and their departure from previous furniture design trends, especially with regards to the materials used. The Court also referred to the design story of the pieces of furniture in support of their protection by copyright. Finally, the Court agreed with the plaintiff that originality should be assessed wholly, rather than element by element.

Regarding the defendant’s submissions, the Court stated that the minor differences between the products were attributable to either the infringing products being lower quality imitations or variations in accessory elements of the objects. These variations did not influence the plagiarism analysis, as they did not affect the overall impression created by the products.

The Court’s decision was reinforced by the fact that the plaintiff had clearly stated on its website that its products were imitations of well-known designs. This not only confirmed the status of the furniture as original works of art but also highlighted the intention to reproduce them.

The dissenting opinion in the judgment

Interestingly, the ruling also includes a dissenting opinion by one of the magistrates. This opinion criticises the majority’s opinion, noting that the originality analysis carried out conflates copyright protection with design protection. The dissenting magistrate argues that according to Cofemel, for an object to be considered a work under copyright protection, it needs to be original, and that originality needs to be an expression of the author’s free and creative choices. In particular, he states that the analysis of originality adopted by the Court is identical to the analysis of individual character applicable to designs.

In his opinion, the plaintiff did not sufficiently prove that the pieces of furniture were the result of the free and creative choices of their authors, and instead relied on their commercial success and recognition among consumers to justify their status as a work of applied art. Based on these reasons, in his opinion the claim should have been dismissed. 

The opinion also notes that the pieces of furniture should not have been considered works of art subject to copyright protection because their shape was determined, in the first place, by technical requirements, and the creativity of the designer took on a secondary role.

Conclusions

In this case, the Court of Appeals seems to have favoured an analysis that is reminiscent of the overall analysis applicable under design law rather than the originality assessment advocated by the AG Opinion in Mio/Konektra. Nevertheless, if the Court had followed the originality analysis, the result would most probably not have been significantly different. The AG Opinion in Mio/Konektra states that, when analysing if a work is the result of the free and creative choices of the author, the intentions of the author when creating the work and the recognition of the work by museums, experts and/or professionals, may be circumstances that help prove originality. While these circumstances may not be conclusive, they would likely have influenced the originality verdict for the works in this case.

With regard to the infringement analysis, the Court appeared to adopt an overall impression test, which differs from the recognisability test defended by the AG Opinion in Mio/Konektra. It is unlikely that the different tests would have had an impact in this case given the defendant’s admission of imitating the products on their own website, but it will be interesting to see whether the CJEU follows the AG Opinion in this aspect and whether further questions arise from the recognisability test when determining infringement.

On the other hand, the dissenting opinion seems to partially reflect the case law set by the CJEU in Cofemel and Brompton, as well as some of the aspects highlighted in the AG Opinion in Mio/Konektra by following the originality analysis. Furthermore, it also contains an important warning for litigants in this area of law, which is consistent with the AG Opinion: double protection is not automatic. When claiming copyright protection for works of applied art, it is the claimant’s responsibility to provide evidence of the originality requirement, which consists of a different test to that of individual character in relation to design protection.

However, the opinion seems to depart from the case law of the CJEU in that it imposes a very high threshold for copyright protection in works of applied art. It seems to consider that the pieces of furniture in the case should not enjoy copyright protection as their shape was determined in the first place by technical considerations.

Additionally, it also questions the retrospective analysis carried out by the Appeals Court based on the commercial success, reputation and design awards of the works. This also clashes with the above-mentioned considerations in this regard of the AG Opinion in Mio/Konektra.

All in all, it will be welcome to have a CJEU ruling that further clarifies the analysis to be conducted when assessing originality and infringement for works of applied art.