Danish Supreme Court in Würtz v Coop confirms existence of "de minimis" copyright exception for use of applied art in marketing materials

The AmeriKat napping in a bowl - would this be
de minimis use under Danish law now?  

The AmeriKat's run-up to the holidays was full of hearings, decisions and IP developments.  The Danish Supreme Court was also busy making copyright waves when, on 18 December 2018, it delivered its long-awaited judgment in the case of Würtz v Coop (in Danish only).  It's decision gave Danish law a whole new case law-based copyright exception. The judgment is of major importance for anyone wanting to use photographs of applied art in marketing material in Denmark.  To explain what happened and what it means, the AmeriKat's friends Emil Jurcenoks and Peter Nørgaard of leading Danish IP firm, Plesner, report:

"The case

The Danish supermarket chain, Coop, used various photographs, taken by a photographer engaged by Coop, included photos of ceramic tableware designed by the Danish artist, Kasper Heie Würtz. The photographs were used in several advertising leaflets and on Coop's food packaging showing Coop's products.  For example, photos of potato chips, fish and beans, being served on the tableware designed by Würtz.

Würtz claimed that the use of the photographs of his tableware was a copyright infringement. Essentially Würtz argued the following infringements of the Danish Copyright Act:

• Infringement of Section 2(2): Right of reproduction.
• Infringement of Section 2(3): Making a work available to the public.
• Infringement of Section 3(2): Making a work available to the public in a manner or in a context which is prejudicial to the author's literary or artistic reputation or individuality (infringement of "moral rights").

Danish law has a related right protecting photographs as such, but Coop's rights to the photographs were not in dispute.

Moreover, Würtz claimed that the use of the photographs of his design was taking unfair advantage of his reputation and thus also constituted an infringement of Section 3 of the Danish Marketing Practices Act on good marketing practices ("unfair competition").

Both uses not de minimis 

Coop essentially argued that the ceramic design of Würtz did not enjoy copyright protection or had a reputation which was protected by the Marketing Practices Act. Moreover, Coop argued that using photographs of the tableware was nevertheless allowed due to either (1) a legal principle of de minimis use of copyright protected works ("de minimis non curat lex" - i.e. the law does not take account of trifles) or (2) a general commercial practice amounting to a legally binding custom regarding limited use of non-famous designs in commercial relations where the design is not the main object, but merely serves a practical purpose as a part of the natural setting in which goods are presented.

Not de minimis

In support of its arguments Coop provided results of a survey where approximately 550 consumers participated. Two per cent (2%) of the respondents answered that the tableware was of importance to them when showed the advertising material/the packaging material. None of the respondents could name Würtz as the artist without help. When helped, 1 % of the respondents could mention Würtz as the artist.

The ruling of the courts

The first instance Maritime and Commercial High Court ruled in favour of Würtz and found both infringement of copyright (including infringement of Würtz's moral rights) and violation of the Marketing Practices Act. The court also allowed Würtz DKK 200,000 in damages and compensation (approximately EUR 26,785).

The Supreme Court essentially agreed with the Maritime and Commercial High Court and dismissed Coop's appeal.

Both courts found that Würtz's design enjoyed copyright protection.

De minimis 

The Supreme Court agreed with the Maritime and Commercial High Court that Coop had not proved the existence of a legally binding custom in the advertising business and the food retail business that applied art protected by copyright can be used in the manner in question without the creator's consent.

Also, the Supreme Court agreed with the Maritime and Commercial High Court that the use of applied art protected by copyright - even in a commercial, marketing context - might be of such minor importance that the use is deemed not to constitute copyright infringement. However, since such an exception is not laid down in the Copyright Act it has to be interpreted restrictively and must not affect the normal exploitation of the work in a detrimental manner, and must not prejudice the interests of the creator unreasonably, i.e. in order comply with the three-step test in Article 5(5) of the EU Infosoc Directive.

With that background, the Supreme Court found that the majority of the relevant pictures of the tableware in Coop's advertising leaflets and on Coop's food packaging could not be deemed to be of such minor importance that Coop's use of the tableware was exempt from the scope of the copyright protection. In that respect the Supreme Court attached importance to whether the reproduction of the tableware was distinctive and whether the tableware must be deemed to constitute an essential element in the reproductions.

The Supreme Court did not address the issue of infringement of moral rights.

Impact

De minimis 

The judgment is of significant importance. Although it has been stressed by commentators and legal scholars that some sort of general rule of de minimis use probably applied within Danish copyright law, this has never previously been confirmed by Danish case law so explicitly. Also, it is rare that Danish courts create a case law-based exception to a right established by statute. As it is the case with most copyright acts, the Danish Copyright Act has a chapter with several carefully drafted exceptions to copyright.  Further, the act contains no general "fair use" exception comparable to § 107 of the US Copyright Law. Under such circumstances, the legislator could be said to have exhaustively considered what copyright exceptions to allow and what exceptions not to allow.

On the other hand, the impact of the de minimis exception should not be overstated. The exception is clearly very narrow (take an extra look at the infringing Grissini-packaging, above), so even though the Supreme Court established a new exception to copyright, the judgment must be seen as a victory for copyright owners.

The judgment is also of considerable practical importance, as it has so far been common practice in Denmark that, for instance, the advertising business uses applied art protected by copyright in the manner described without obtaining the consent of or paying the creator, as long as the object is not well-known or serves as a distinctive feature but is merely used for a practical purpose as a natural part of the setting."