[Guest post] Harmonized technical standards under EU copyright: the Public.Resource.Org judgment

The IPKat has received and is pleased to host the following guest contribution by Sunimal Mendis (Tilburg University) and Olia Kanevskaia (Utrecht University) on the judgment of the Court of Justice of the European Union (CJEU) in C-588/21 P Public.Resource.Org, concerning copyright protection of technical standards and access to public documents. Here’s what they write:

Harmonized technical standards under EU copyright: the Public.Resource.Org judgment

by Sunimal Mendis and Olia Kanevskaia

On March 5 2024, the CJEU issued a long-awaited appeal decision in C-588/21 P Public.Resource.Org (also known as the “Malamud” case, referring to the founder of Public.Resource.Org., Carl Malamud).

The case concerned the European Commission’s refusal to grant access to harmonized technical standards (HTS) produced by the European Committee for Standardization (CEN) due to CEN’s copyright over these documents.

While confirming that HTS form part of EU law and, therefore, should be accessible to the public, the CJEU remained silent on the consequences this may have for CEN’s copyrights. Interpretations of this aspect of the judgment differ: CEN argues that their copyright is undisputed, whereas commentators suggest that the ruling is a waiver to copyright protection of HTS in general.

In this blogpost, we explore whether HTS are copyrightable, given that they form part of EU law.

HTS and EU law

The EU “New Approach” policy distinguishes between legal and technical requirements: the Commission sets the “essential” legal requirements for health and safety; the three European standards bodies (ESOs), including CEN, produce voluntary HTS upon request from the Commission (as per Article 10 of EU Regulation 1025/2012). Compliance with HTS grants presumption of compliance with legal requirements.

Technical standards for Bengal Kats

Once HTS are drafted, the Commission approves them (sometimes with a recourse to, non-binding, harmonized standards (“HAS”) consultants) and publishes reference to HTS in the Official Journal of the European Union. HTS remain voluntary, but the CJEU has brought them into the realm of law due to their legal effects [Fra.bo, James Elliott, Anstar].

While developed to support European law and policy, HTS form a part of a broader standardization ecosystem. Standards created by other standards bodies, including the International Organization for Standardization, are sometimes transposed into HTS, and vice versa.

Copyright(ability) of harmonized standards

Public.Resource.Org. raises several fundamental issues that go to the core of copyright law’s rationale and its purpose and function. While Advocate General (AG) Medina’s Opinion attempts to grapple with some of these issues, the CJEU’s determination fails (presumably, on purpose) to deal with any of them in a meaningful way. The key question is: can HTS qualify for copyright protection?

EU law does not limit copyright protection to specific types or categories subject-matter but rather extends protection to a diverse array of literary and artistic expression (“works”) including content of a technical (as opposed to an aesthetic) nature such as computer programs, technical drawings and databases.

Article 2(4) of the Berne Convention allows member-countries the freedom to grant copyright protection to legal texts. As AG Medina notes at para 62 of her Opinion, all EU Member States except for Ireland have legal provisions that exclude laws, official decrees and official texts from the scope of copyright protection [see for example Germany, Copyright Act, S.5; France, Intellectual Property Code, Article L-122-5; Spain, Intellectual Property Law, Article 13]. However, there is no EU law principle that explicitly excludes official texts or laws from the scope of copyright protection. Given the contested status of HTS as “law” or an “official text”, the ability to exclude these from the scope of copyright protection forthwith becomes even more difficult.

Therefore, under EU copyright law there is no explicit bar to a HTS qualifying for copyright protection if it can fulfil the two requisite criteria for copyright protection. Namely, as frequently discussed by The IPKat, there has to be (1) literary or artistic expression is identifiable with sufficient precision and objectivity [Levola Hengelo], which is (2) original in the sense that it qualifies as its author’s own intellectual creation (AOIC) [Infopaq, BSA, Football Dataco, Painer].

HTS will easily qualify as literary expression that is permanently recorded in textual form (or as artistic expression if they predominantly incorporate visual components such as technical diagrams, illustrations etc). The AOIC standard of originality is more challenging to fulfil. This involves the following test.

A) Free and creative choices

Firstly, the process within which an HTS is drafted should accord the drafter(s) sufficient freedom to exercise their own personal creative choices in determining the way the technical specifications are expressed. This will not be the case when the drafting process is dictated and constrained by technical considerations, rules or restrictions thereby leaving no space for the exercise of personal creative choices [BSA, Football Dataco]. As per the idea-expression dichotomy of copyright law (analogous to the “merger doctrine” in US law), if technical and functional constraints dictate that a concept or procedure can only be expressed in a specific way (or in a limited number of pre-determined ways) then it is not possible for the person(s) expressing that concept or procedure to invest the expression with their own personal choices.

AG Medina thought that the requisite freedom will not be present in the process of drafting an HTS: “as regards the content of [technical standards] and the layout, these are constrained by the […] secondary legislation from which the HTS are derived and by the Commission’s mandate. In principle, the above heavily restricts room for creativity and originality.” [para. 94 of the Opinion] Indeed, in light of the EU 2022 Standardization Strategy, the Commission’ requests for developing HTSs are getting stricter. Yet, it is possible that the actual extent of freedom available to the drafters can vary considerably depending on factors such as the relevant technological domain to which the technical standard belongs, the nature of the Commission’s mandate, and procedures applicable to the drafting process etc.

B) Personal touch

Secondly, the drafter(s) should make use of the above freedom to engage in personal creative choices resulting in the HTS being stamped with their personal touch [Painer].

Let's consider the following extract from a technical standard (Toy Safety Standard EN 71-12:2013] that was under review in the dispute. It may be possible to argue that the choice of words, sentence structure and syntax reflects the exercise of personal creative choices. On the other hand, these may also be attributed to mere skill, know-how and compliance with standard procedures and rules of drafting technical standards, which would not suffice for obtaining copyright protection:

7.3.2 Sample preparation for other toys or parts of toys than balloons

If the approximate surface area of the toy or the elastomeric part of the toy is less than 10 cm2, test the whole toy or the elastomeric part of the toy uncut. At least 0,2 g of the samples are needed per analyses.

In other cases, select the most appropriate part of the elastomeric part of the toy, from which to obtain a test portion of (10 ± 1) cm2, in such a way as to minimise the inaccessible and internal surfaces. Where possible, choose a test portion from a thin part of the toy. Remove a disc, or other shaped piece if these reduces the amount of cut edges, with a surface area of (10 ± 1) cm2 using a suitable cutting instrument. Measure the approximate surface area of the test portion taking into account the thickness when greater than 1 mm. The edges of the test portion should be smooth in appearance.

Thus, the determination of whether a technical standard can fulfil the originality criterion will require a case-by-case analysis that takes into account the nature of the drafting process and the applicable rules and constraints.

In any event, the Commission’s presumption that the originality criterion is fulfilled on the basis that the “length of the text implies that the authors had to make a number of choices (including the structuring of the document) […]” [paragraphs 47 to 49 of the General Court’s decision] is ill-founded. As AG Medina correctly points out: “the vague reliance on the length of a document is not sufficient in order to prove that [a technical standard is] the result of genuine creative choices […]” (para 94 of the Opinion).

Balancing commercial and public interests

In our opinion, the most fundamental issue raised by the dispute is the extent to which copyright could be asserted to prevent the public from exercising their right to access a HTS. Given that HTS have mandatory legal effects, denial of access to such an HTS has the ability to undermine the exercise of fundamental rights, including the right to information (EUCFR Article 11), freedom to conduct a business (EUCFR Article 16) especially as regards SMEs and Start-Ups, and consumer protection (EUCFR Article 38). In addition, as upheld by the CJEU, given their potentially mandatory legal effects, denial of access could have adverse consequences for upholding the rule of law.

As per the incentive theory which is the dominant theoretical justification for copyright law in the EU, it is important to prevent copyright from being subverted or weaponized as a tool for enabling profit-maximization or rent-seeking behaviour. This is especially the case where the exercise of copyright can adversely impact on the public interest and particularly the fundamental rights and freedoms of the public.

Achieving this delicate balance as regards HTS that qualify for copyright protection requires investigation on the actual impact that such free public access could have on the ESOs’ business model and their ability to sustain the innovation process. At present there are conflicting claims made in this regard [see here and here] and a comprehensive unbiased investigation into these claims is required. If free public access could in fact undermine the ESOs’ business model, the introduction of FRAND licensing for HTS could be a possible solution.

As the Commission is receiving an unprecedented number of requests to access HTS, and given the different interests involved in standards’ accessibility and copyrightability, a solution that relies on a case-by-case assessment is not desirable. Rather, stakeholders should enter a dialogue which, in the long run, may result in the review of the EU standardization system.