After the Swedes, it's time for the Germans to ask the CJEU to clarify copyright protection of works of applied art in USM Haller referral

At what conditions can works of applied art be protected by copyright under EU law? If this question feels like déjà-vu, it is because it is.

Indeed, it was only some weeks ago that the Svea hovrätt, Patent- och marknadsöverdomstolen (Sweden) made a referral (Mio, C-580/23) [IPKat here and here] to the Court of Justice of the European Union (CJEU) asking how the assessment of originality needs to be conducted, specifically having regard to works of applied art.

Now it is the turn of the Bundesgerichtshof (BGH), Germany also to make a CJEU referral on essentially the same issues. The news was broken yesterday on the BGH website. The case number is C-795/23.

As we can read in the BGH press release [note that the referral is not yet available on the CJEU website], Germany's Federal Court of Justice is seeking further guidance on the notion of ‘work’ . 

The referral has been made in the context of proceedings brought by USM, the maker of the modular furniture system known as USM Haller against the seller of replacement and add-on parts for the USM Haller system, which it now also offers to assemble so to produce full pieces of furniture on customers’ own premises.

Examples of USM Haller modular furniture ...

USM’s position is the defendant’s assembly service (initially USM did not object to the sole making and selling of replacement and add-on parts) in essence ends up reproducing USM Haller, thus inter alia infringing copyright in it. 

While USM was successful at first instance, on appeal the Düsseldorf Higher Regional Court rejected USM’s copyright claim (though it accepted the one based on unfair competition), finding that USM Haller would not be protected under copyright law due to the lack of ‘free and creative choices’ and, thus, originality within the meaning of CJEU case law.

A further appeal to the BGH followed. In its referral, the BGH is asking:

[T]o first clarify whether, given that works of applied art may also be considered to be protected as designs, the court of appeal correctly assumed that copyright protection was of exceptional nature, with the consequence that when examining the originality of these works under copyright law greater requirements are to be made in terms of the author’s free creative choices than when examining other types of works.

What is also in question is whether, when examining originality under copyright law, account is (also) to be taken of the author’s subjective view during the creative process and of the fact that he or she must, in particular, consciously make creative decisions or whether an objective standard is to be applied.

Furthermore, it has not yet been equivocally clarified whether, when assessing originality, account can also be taken of circumstances which arise subsequent to the creation of the product, such as presenting the product at art exhibitions or in museums, or its recognition by specialist circles.

... complete with Kat module 

Comment

As stated, the new USM Haller referral has several points of contact with Mio – especially insofar as the second and third issue are concerned – and it is expected that, if the cases are not joined, then the resulting judgments are going to look very similar.

As regards the first issue, which concerns the interplay between design and copyright protection, it seems to me that the CJEU has already answered that in Cofemel [IPKat coverage here], when it (clearly) stated that works of applied art are to be treated like any other copyright work. In addition, the requirements for copyright and design protection are different and nothing does prevent that a design protected by a design right is also protectable under copyright provided that the specific requirements under the latter are fulfilled. Importantly, one should not conflate requirements for protection under different IP rights!

Turning to the second and third issue, both relating to how originality is to be assessed, as I wrote on The IPKat here, the test of originality should be an objective, not subjective one. In this sense, the relevance of the creative process, especially if this was intended as an intention to create something 'artistic', should not be part of the test at all.

To conclude on a clinical (and cynical) note, a referral like the present one does indicate – as I discuss here, Chapter 4 - that the post-traumatic stress disorder (to be kind) caused in some by the long and consistent string of CJEU decisions on ‘originality’ and ‘work’ is far from over. Will the CJEU clarify (and cure) things once and for all? Time will tell …