[Guest post] Works of applied art – the difference between design and copyright law

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg) on the German Federal Supreme Court’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 USM Haller case (C-795/23) [IPKat here]. Here’s what Henning writes:

Works of applied art – the difference between design and copyright law

by Henning Hartwig

I.

USM Haller modular furniture

In 2011, the Court of Justice of the EU (CJEU), for the first time, had to decide on issues revolving around the protection of different categories of works under European copyright law. In ‘Painer’ (C-145/10), a pillar of copyright law since then, the CJEU held that copyright protection must be given a ‘broad interpretation’ (para 96) and then found (emphasis added):

97 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.

98 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.

99 In the light of the foregoing, the answer to the fourth question is that Article 6 of Directive 93/98 must be interpreted as meaning that a portrait photograph can, under that provision, 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.

Thus, as noted elsewhere, the test for finding copyright subsistence starts with the degree of creative freedom exercised by the author in light of the relevant prior art. However, for the sake of consistent terminology, ‘creative freedom’ should not be confused with ‘artistic freedom’, the latter notion being used by the German Federal Supreme Court, for instance in USM Haller (I ZR 96/22), but also, unfortunately, in the German version of Cofemel (C-683/17; para 31) while the English version uses the notion ‘creative freedom’ and the French ‘liberté créative’. In fact, what matters is whether the claimed work is an expression of the ‘free and creative choices’ (not: artistic choices) made by the author (not: artist) when creating/producing the subject matter – against the existing degree of creative freedom. Naturally, following Cofemel (para 31), when the realisation of a subject matter has been dictated by technical considerations, rules, or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work.

II.

That said, and when revisiting recent case law from the Cologne Appeal Court as part of the famous-infamous ‘Birkenstock’ saga, it is remarkable that this Court, on the one hand, conceded that the notion of the ‘artistic achievement’ as used by the German Federal Supreme Court (without having clarified where the boundaries lie between artistic and non-artistic achievement) has not been endorsed by the CJEU. On the other hand, the Cologne Appeal Court found:

The fact that design and copyright protection have different functions of protection does not preclude design from being granted copyright protection, but for this to happen, design must meet the independent criteria of protection for works of applied art, i.e., particularly be artistic and not just creatively selective. If this qualifying criterion were to be relinquished, design law would ultimately become obsolete. In addition, the long-term protection of product innovations would create a monopoly right that would many times exceed the term of protection of other technical and exclusive rights aimed at protecting functions. Competition in the market for product innovations would be massively restricted, without the aspect of promoting innovation being justified by this restriction. Copyright law, with its very long term of protection linked to the person of the author, starts with the idea that personally individual works of art often must search for their market first, artists often wait a lifetime for this success, and occasionally only their descendants can benefit from it. This is the price for the fact that the author can and should create completely without purpose. Product design, on the other hand, is regularly amortized in more limited periods of time through industrial production and market-oriented creation and exploitation. In this respect, protection must not be linked to the personal needs of the designer but to the time of registration or use. The resulting balance would also be disturbed if subjects of design were to be protected solely because their design is based solely on a choice between different possibilities but not on an artistic achievement.

These findings (issued only after the ‘USM Haller’ referral) are remarkable because they endorse the position taken by the German Federal Supreme Court over decades (i.e., proceeding from the concept of ‘artistic freedom’), and even more enthusiastically than the Supreme Court ever did itself. Yet, in terms of terminology, doubts remain how to distinguish ‘creative freedom’ from ‘artistic freedom’ or whether both terms eventually are synonymous. Interestingly, in ‘USM Haller’, that Court held (para 47):

Accordingly, the Senate assumes that the aesthetic effect of the design can (only) justify copyright protection insofar as it is based on an artistic achievement and expresses it. However, insofar as the aesthetic effect of the design is based on an artistic achievement, i.e., on free creative decisions, and expresses it, it also depends on the degree of aesthetic content whether this design reaches a level of originality that justifies copyright protection.

In other words: The German Supreme Court equates ‘artistic achievement’ with ‘free creative decisions’ (‘i.e.’), which inevitably raises doubts as to the position taken by the Cologne Appeal Court (in defending the concept of ‘artistic freedom’ over that of ‘creative freedom’).

III.

Sadly, in its referral to the CJEU, the German Federal Supreme Court did not address this delicate issue. Rather, in Question 1 and Question 2 (following the working translation provided by the CJEU; C-795/23), the Court asked (emphasis added):

1. Is there a rule-exception relationship between design protection and copyright protection in the case of works of applied art, such that, when assessing the originality of those works for copyright purposes, higher requirements are to be imposed with respect to the creator’s free and creative choices than for other types of work?

2. When assessing originality for copyright purposes, is it (also) necessary to consider the creator’s subjective view of the creation process and, in particular, does the creator have to make the free and creative choices knowingly in order for them to be regarded as free and creative choices within the meaning of the case-law of the Court of Justice of the European Union?

Free ...

Only in Question 3, the adjective ‘artistic’ is used albeit not as an expression of the concept of ‘artistic freedom’ (emphasis added):

3. If, in the context of the assessment of originality, the decisive consideration is whether and to what extent artistic creation was objectively expressed in the work: Can circumstances occurring after the date of design creation that is relevant for the assessment of originality, such as the presentation of the design in art exhibitions or museums or its recognition in professional circles, also be taken into account for the purposes of that assessment?

The phrase ‘artistic creation objectively expressed in the work’ reminds us on similar words used by the CJEU in ‘Cofemel’ (emphasis added):

30 As regards the first of those conditions, it follows from the Court’s settled case-law that, if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices.

35 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.

Ignoring, for the time being, the unfortunate shortcomings of ‘Cofemel’ in comparison with ‘Painer’ as explained elsewhere the phrase used by the German Federal Supreme Court (‘artistic creation objectively expressed in the work’) needs to be re-phrased (following the CJEU), reading ‘subject matter as an expression of the degree of creative freedom exercised by its author’.

This language, firstly, avoids uncertainties with respect to delineating ‘creative’ versus ‘artistic’ (or ‘free creative decisions’ versus ‘artistic achievement’). Secondly, the proposed language should clarify that it is about the specific degree of creative freedom ‘exercised’ by the specific author, rather than simply a hypothetical or abstract ‘free and creative choice’.

IV.

... and creative

Turning again to Question 3, and the German Supreme Court’s suggested answer that when assessing originality, circumstances occurring after the date of creation, such as the presentation of the work in art exhibitions or museums or its recognition in professional circles, should be considered relevant, we note that the Court, once again, cites ‘Brompton’ (para 37):

26 According to this view, subsequent developments in shape are, in particular, irrelevant. However, it should be possible to take into account circumstances subsequent to the creation of the product, such as assessments in the technical world, in so far as they may provide an indicator for assessing whether, at the time of its design, the subject matter was its author’s own intellectual creation. This enables national courts to carry out their task of taking account of all the relevant facts of the case as they existed when the subject matter was designed (judgment of 11 June 2020, Brompton Bicycle, C-833/18, EU:C:2020:461, paragraph 37).

However, Brompton (C-833/18) reads as follows (emphasis added):

37 In any event, it must be noted that, in order to assess whether the folding bicycle at issue in the main proceedings is an original creation and is thus protected by copyright, it is for the referring court to take account of all the relevant aspects of the present case, as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product.

Overall, it seems that the straight-forward answers to Questions 1 – 3 should be ‘no’, ‘no’, and ‘no’ as opined elsewhere as well.

V.

Revisiting the issue of differences between design and copyright protection – in the context of works of applied art –, the main distinction is the nature of comparison:

Under copyright law, when testing whether a specific subject matter must be perceived as an expression of the degree of creative freedom exercised by its author, the test is a two-step test: Firstly, one need to identify the abstract degree of creative freedom in view of the submitted prior art. Second, one need to compare the prior art taken as a whole with the specific subject matter (as also observed here identifying prominent and non-prominent features, by way of an overall comparison to find out whether the specific author exercised the existing abstract creative freedom, and to what extent).

Under design law, it is common sense that the comparison is simply a one-to-one comparison (both when testing validity and infringement).

Unfortunately, the German Federal Supreme Court – unlike many German lower instances only recently (here, here and here), and also Danish and Swiss tribunals – did not apply/address/confirm the overall-comparison test as a paramount standard of delimitation but, rather, started an unhelpful discussion on artistic freedom (Question 1), subjectivity (Question 2), and retrospectivity (Question 3), unintentionally promoting legal uncertainty.