[Guest post] How a chair makes the Berne Convention wobble: CJEU to answer questions on principle of reciprocity for works of applied art

The IPKat has received and is pleased to host the following contribution by former GuestKat Jan Jacobi on an important new copyright referral that the Dutch Supreme Court has recently made to the Court of Justice of the European Union (CJEU). Here’s what Jan writes:

How a chair makes the Berne Convention wobble: CJEU to answer questions on principle of reciprocity for works of applied art

by Jan Jacobi

Last year, this Katfriend wrote about two interesting cases before the Dutch courts. These cases concern the protection of works of applied art under the Berne Convention (BC). In one of the cases, Vitra v. Kwantum, the Dutch Supreme Court has recently submitted questions for a preliminary ruling by the CJEU. It is worthwhile to look at this case again and discuss the questions in greater detail.

Vitra v. Kwantum

For a detailed background and legal substance of the case, reference is made to the previous blog. In a nutshell, the case before the Dutch Supreme Court deals with the chairs as depicted below:

Dining Sidechair

Paris Chair

The first chair (the ‘Dining Sidechair’) was designed by American designers Charles and Ray Eames and therefore, as a work, originated in the US. The second chair (‘Paris Chair’) is sold by the Dutch company Kwantum in multiple markets, including the Netherlands and Belgium.

The main question in dispute is whether Vitra, which holds the rights to the Dining Sidechair, would be afforded protection in the Netherlands and Belgium. Kwantum alleges that, on the basis of Article 2(7) BC and the principle of reciprocity derived therefrom (as explained in the previous blog), the chair could only receive such protection if it was also protected in the US.

The case took a new turn when the Dutch Supreme Court, out of its own motion, studied the CJEU decision in RAAP (case C-265/19) more closely and began having fundamental doubts as to whether Member States could rely on article 2(7) BC at all. Put succinctly, the CJEU ruled in that case that the EU Charter does not allow a Member State to limit, through its own national law, fundamental EU rights, even if that limitation is based on the possibility given to contracting parties (in that case: the WIPO Performances and Phonograms Treaty (WPPT). Instead, such limitations should be set out in formal EU law.

Kat-approved Eames Lounge Chair

The Dutch Advocate-General (AG) Drijber contested the Supreme Court’s turn in his opinion of 6 January 2023. The AG pointed out that there are important differences between the facts in RAAP and the case at hand. Notably, the AG observed that the reciprocity test under Article 2(7) BC is a material provision of a treaty (to which the EU is not a party) that has direct effect in the Member States. In RAAP a Member State had adopted a limitation on the basis of the WPPT (which the EU is a party to) and subsequently set it out under its own national law. The AG concluded that the scope of Article 2(7) BC is not a matter of EU law, but rather of international copyright law.

Questions for referral

Despite the AG opinion, the Dutch Supreme Court saw sufficient ground for referring the matter for a preliminary ruling. Yet, the first and principal question demonstrates that the Supreme Court realizes that this case may not be for the CJEU to decide on after all, with such question being formulated rather broadly:

1.    Does the case at hand fall within the material scope of EU law?

If so, the subsequent four questions (out of five) are formulated more ambiguously, but in essence ask whether additional EU legislation is required for Member States to rely on Article 2(7) BC:

2. Does the fact that the copyright on a work of applied art is considered an integral part of the, by virtue of article 17(2) Charter, enshrined right of the protection of intellectual property law, lead to EU law, in particular article 52(1) Charter, prescribing that for a limitation of copyright (in the sense of Directive 2001/29/EG) of a work of applied art by means of the material reciprocity test of article 2(7) BC, such limitation must be set out in law?

3. Must, in light of article 2(7) BC, articles 2,3 and 4 of Directive 2001/29/EG and article 17(2) and 52(1) Charter be interpreted in such way that only the EU-legislator (and not the national legislators) can decide that the exercise of copyright (in the sense of Directive 2001/29/EG) may be limited in the EU through application of the material reciprocity test of article 2(7) BC with respect to works of applied art where the country of origin (within the meaning of the BC) is a third country and where the author is not a resident of an EU Member State and, if so, to set out such limitation in a clear and conscientious manner?

4. Must article 2, 3 and 4 of Directive 2001/29/EG, read in conjunction with article 17(2) and 52(1) Charter, be interpreted in such way that as long as the EU-legislator has not provided in a limitation to the copyright (in the sense of Directive 2001/29/EG) on a work of applied art by means of the application of the material reciprocity test of article 2(7) BC, the EU Member States are not allowed to use this test with respect to works of applied art where the country of origin in the sense (within the meaning of the BC) is a third country and where the author is not a resident of an EU Member State?

Comment

It will be interesting to see what direction the CJEU will take. To this Katfriend, it is conceivable that the CJEU may be tempted to accept that, in line with Cofemel and Brompton [Katposts here and here], the protection of works of applied art is covered by the InfoSoc Directive and limitations thereunder are a matter of EU law after all.

An interesting question is how the CJEU will respond to the 4th question: what happens if the CJEU does rule that the limitation under Article 2(7) BC must be set out in formal EU law? Will there, to avoid legal uncertainty and potential chaos, be a grace period during which Member States are still allowed to rely on Article 2(7) BC in anticipation of EU legislation that confirms the reciprocity rule thereunder? Or will there be a gap during which the limitations do not apply, and authors of third countries enjoy the same protection as authors of EU Member States? How will this affect ongoing proceedings (such as the case at hand) and past proceedings?