[Guest post] Reciprocity in copyright law

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the Swedish Patent and Market Court of Appeal’s recent referral to the Court of Justice of the European Union (CJEU) for a preliminary ruling pursuant to Article 267 TFEU concerning the interpretation of Directive 2001/29/EC in the MIO case (C-580/23) [IPKat here]. Here’s what Henning writes:

Reciprocity in copyright law

by Henning Hartwig

On 21 September 2023, the Swedish Patent and Market Court of Appeal issued a court order (Mio and Others v Galleri Mikael & Thomas Asplund Aktiebolag, Swedish Patent and Market Court of Appeal, 21 September 2023, PMT 13496-22 (the matter is now pending before the CJEU; C-580/23), referring questions to the CJEU for a preliminary ruling pursuant to Article 267 TFEU concerning the interpretation of Directive 2001/29/EC (IPKat here). Question 4 a) reads as follows:

4. For the answer to question 3 and the question whether an allegedly infringing work of applied art falls within the scope of protection of a work and infringes the exclusive right to the work, what is the significance of

a) the degree of originality of the work for the scope of protection of the work?

The tables at issue in MIO

Background to this specific question is the finding of the Swedish Patent and Market Court of Appeal that, on the one hand, the CJEU, in ‘Cofemel’, had “(…) pointed out that the scope of that protection does not depend on the degree of creative freedom enjoyed by its author (…)” but, on the other, submits that it is unclear whether that case law refers to the “importance of originality for the scope of protection of the work” or whether it constitutes a “(…) statement that copyright works of different kinds (…) must be assessed and protected in the same way (…)” (para 44). Interestingly, ‘Cofemel’ reads as follows (para 35, referring to C-145/10, Painer, EU:C:2011:798, para 97-99):

Where a subject matter (…) constitutes a work, it must, as such, qualify for copyright protection (…), and it must be added that the extent of that protection does not depend on the degree of creative freedom exercised by its author, and that that protection is therefore not inferior to that to which any work falling within the scope of that directive is entitled.

However, revisiting ‘Painer’, it seems that ‘Cofemel’ is an unfortunate reduction of what the CJEU found in ‘Painer’ which reads as follows (emphasis added):

Moreover, nothing in Directive 2001/29 or in any other directive applicable in this field supports the view that the extent of such protection should depend on possible differences in the degree of creative freedom in the production of various categories of works.

Therefore, as regards a portrait photograph, the protection conferred by Article 2(a) of Directive 2001/29 cannot be inferior to that enjoyed by other works, including other photographic works.

In the light of the foregoing, (…) a portrait photograph can (…) be protected by copyright if, which it is for the national court to determine in each case, such photograph is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph. Since it has been determined that the portrait photograph in question is a work, its protection is not inferior to that enjoyed by any other work, including other photographic works.

In other words: The CJEU, in ‘Painer’, firstly, proceeded from the assumption that for finding whether a work is protected by copyright it is for the national court to determine in each case whether the work is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of the work. Second, only once it has been determined that copyright subsists in a specific work the question of scope of protection comes into play. The extent of such protection, third, does not depend on possible differences in the degree of creative freedom in the production of various categories of works. For that reason, fourth, the protection of a specific category of work is not inferior to that enjoyed by any other category of work. Thus, fifth, proceeding – correctly – from ‘Painer’, nothing supports the view that the scope of protection should not depend on or follow from the degree of creative freedom exercised by the author.

In fact, and much to the contrary, it has been established national law and practice – prior and after ‘Cofemel’ – that the scope of protection correlates with the level of originality which, in return, corresponds with the degree of departure from the existing design corpus (i.e., the “degree of creative freedom exercised by the author”). This concept of reciprocity is a well-established adage not only in copyright law but also in design law as demonstrated elsewhere.

Hopefully, the CJEU, when answering the questions referred by the Swedish Patent and Market Court of Appeal in ‘Mio’, will return to the clear and correct findings of ‘Painer’.