Charlie Chaplin won't come back from the dead, neither will Montis' copyright in the Chaplin chair

Montis' Chaplin chair

In the early 1980s, Mr Gerard van den Berg designed two chairs he named "Charly" and "Chaplin" (see images, but only briefly, otherwise your eyes might start to bleed). In 1988, he registered them as models under the Uniform Benelux Law on Designs and Models. In 1990 he assigned his copyrights in the chair designs to Montis Design BV. Now, at that time, the Uniform Law on Designs an Models contained a quite bizarre provision in its Article 21. It provided that designs could benefit both from the protection as registered models and from protection under copyright law if they have "outstanding artistic character", but

Cancellation of the filing of a design or model of outstanding artistic character or the extinction of the exclusive right derived from the filing of such a design or model entails the simultaneous extinction of the copyright relating to that design or model, provided that the two rights belong to the same person; that extinction will not however take place if the proprietor of that design or model submits, in accordance with Article 24, a special declaration seeking to maintain his Copyright.

In other words, to benefit from copyright protection, the author or his successor needed to file an explicit declaration (and pay a fee), generally before the five year term of protection as registered model expired. Montis and Mr van den Berg failed to file such declaration, and therefore both design and copyright protection in the Charly and Chaplin chair designs lapsed in the Benelux in 1993.

Needless to say, Article 21(3) Uniform Law on Designs and Models is contrary to Article 5(2) Revised Berne Convention, which provides that copyright must not be subject to any formality. Since Article 9(1) TRIPS Agreement requires that members of the WTO comply with Articles 1 to 21 of the Berne Convention, the Benelux countries were also in violation of the TRIPS Agreement. Having realized this, the governments of Belgium, the Netherlands and Luxembourg deleted Article 21(3) from the Uniform Law in 2003.

Montis' Charly chair

Problem for Montis, of course, was that at that time, its copyrights in the Charly and Chaplin chair designs in the Benelux had already lapsed for failure to file the maintenance declaration. So it sought to revive them. One argument was that the Term Directive (93/98/EEC) required that works be protected for life of the author plus 70 years, and "the terms of protection provided for in this [Term] Directive shall apply to all works and subject matter which are protected in at least one Member State, on [1 July 1995], pursuant to national provisions on copyright or related rights or which meet the criteria for protection under Directive 92/100/EEC". Directive 92/100/EEC (replaced by Directive 2006/115/EC) is, however, explicitly not applicable to buildings and to works of applied art (cf. Article 2(3)).

So Montis claimed that its copyright should be held to have been restored following the adoption of Directive 93/98, essentially because their extinction for lack of compliance with a formality was a violation of the Berne Convention and TRIPS Agreement. The Benelux Gerechtshof (Benelux Court of Justice) decided to refer to the Court of Justice the following question for a preliminary ruling:

Is the term of protection referred to in Article 10, in conjunction with Article 13(1), of Directive 93/98 applicable to copyright that was originally protected by national copyright law but which lapsed before 1 July 1995 on the ground that a formal requirement had not been satisfied (or was not satisfied in due time), more specifically because a maintenance declaration, as referred to in Article 21(3) of [the Uniform Law] had not been filed …?

Now that's a work of outstanding artistic
character. I needed some eye bleach. 

In its judgment of 20 October 2016 in case C‑169/15 the Court of Justice said no, basically. It observed that the use, in Article 10(2) Term Directive, of the present indicative tense in the wording of the two alternative conditions for the application of the terms of protection provided for in that directive, reveals that the aim was that legal effect should be given to the situation as existing precisely on 1 July 1995 and not on a date earlier than or later than that date. Consequently, if, because of the extinction of copyright pursuant to specific national legislation, prior to the date laid down in Article 13(1) Term Directive, that copyright was no longer protected on that date, under Article 10(2) Term Directive, the terms of protection laid down by that directive do not apply to the work concerned.

While it does indeed follow from Article 9(1) TRIPS Agreement that the European Union must comply with, inter alia, Article 5(2) Berne Convention, the TRIPS Agreement had entered into force only on 1 January 1995, in other words after both the date when Term Directive 93/98 was adopted and the date when that directive entered into force. In addition, under Article 65(1) TRIPS Agreement, the European Union was not obliged to apply the provisions of that agreement before 1 January 1996. There was therefore no obligation to restore lapsed copyrights and no need to interpret Article 10(2) Term Directive in the way suggested by Montis.

It should be obvious that the holding of this decision is rather narrow, as (deleted) Article 21 Uniform Law on Designs and Models is rather unusual. I am not aware of any other European country with a similar provision. Also note that Montis' best argument probably was the chair designs were protected under copyright law on 1 July 1995 in at least one Member State other than a Benelux country. It did make this argument, but too late according to the Hoge Raad der Nederlanden (see para. 26) and was not heard. Now, I don't mind hearing about these chairs, but if I ever have to see them again, I'm going to vomit.