EU copyright takes it all … including Article 2(7) of the Berne Convention: AG Szpunar advises CJEU to rule that EU Member States can no longer rely on reciprocity clause for works of applied art

Vitra's DSW chair

One of the cornerstones of international copyright law – specifically: the Berne Convention (BC) – is the principle of national treatment under Article 5: authors who are nationals of a Berne Union member state are eligible for protection under the law of other member states at the same conditions as nationals of those countries.

Like all rules, there are exceptions though: one of them concerns works of applied arts. Under Article 2(7) BC:

… it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.

Turning to EU law, works of applied art are protectable under both design and copyright laws in accordance with the principle of rights cumulation.

Insofar as copyright is concerned, consistent case law of the Court of Justice of the European Union (CJEU) [IPKat here and more here] since Flos indicates that protection arises upon fulfilling a requirement of originality, not also other requirements (e.g., artistic value, aesthetic effect).

However, such a case law remains (oddly) contentious, and currently there are 2 further cases pending before the CJEU on copyright protection of works of applied art: they are Mio [IPKat here] and USM Haller [IPKat here].

The controversy is due to the fact that, under Article 17 of the Design Directive and Article 96(2) of the Design Regulation, it would appear that EU Member States are free to determine the conditions at which copyright in works of applied arts should arise.

Amidst what some might consider (dry) technicalities, a key substantial question arises:

Can EU Member States, relying on Article 2(7) BC (to which the EU in itself is not formally a party), set their own reciprocity rules for copyright protection of works of applied art or is such a possibility precluded by EU law?

The importance of this question cannot be overstated as it goes to the heart of the relationship between international, EU, and national law, as well as ... CJEU’s own copyright case law.

The CJEU has been asked to answer the above in the context of the referral, lodged by the Dutch Supreme Court, in Kwantum v Vitra, C-227/23.

Earlier this week, Advocate General (AG) Szpunar published his Opinion, advising the CJEU to rule that, no, since the adoption of the InfoSoc Directive, EU Member States have lost their freedom under Article 2(7) BC.

Let’s see how the referral came to be, how the AG reasoned, and what the potential implications of the Opinion would be, should the Court decide to follow it.

Background

Vitra produces the iconic and copyright-protected Dining Sidechair Wood (DSW) chair designed by American designers Charles and Ray Eames.

Kwantum also produces furniture, including the Paris chair which, according to Vitra, infringes the copyright in the DSW chair.

Further to an unsuccessful copyright infringement action at first instance, on appeal Vitra won and obtained a judgment declaring its copyright in the DSW chair infringed in both the Netherlands and Belgium.

Kwantum's Paris chair

According to the Court of Appeal of The Hague, Article 2(7) BC would not be applicable in the present case because the US – country of origin of the DSW chair – does not preclude in principle copyright protection of works of applied art. The circumstance that the chair would not actually enjoy protection in the US does not preclude copyright protection to be acknowledged in the Netherlands and Belgium.

Kwantum appealed to the Supreme Court, questioning the interpretation of Article 2(7) BC given by the Court of Appeal. The Supreme Court decided to refer 5 questions to the CJEU, which AG Szpunar summarized as follows:

The first question is worded in a very general way and concerns the applicability, in the dispute in the main proceedings, of EU law. The second, third and fourth questions concern whether, in the light of certain provisions of EU law, in particular the relevant provisions of [the InfoSoc Directive] and of Article 17(2) of the Charter, Member States are free to apply the reciprocity clause contained in Article 2(7) of the Berne Convention to works of applied art. Last, the fifth question concerns the applicability of the first paragraph of Article 351 TFEU.

EU copyright grants protection irrespective of country of origin of a work (or its author)

AG Szpunar considered that, in order to answer the first question, an answer to the second, third and fourth question would need to be provided first and be in the negative: EU law preempts Member States’ freedom under Article 2(7) BC.

That is so because works of applied art are protected under the InfoSoc Directive, irrespective of whether they originate in the EU/EEA or outside of it.

In this regard, four points (plus one) to note:

1. First, the Opinion considers it a given that copyright protection is solely dependent on fulfilling a requirement of originality, including for works of applied art;
2. Second, this response is also justified in light of the approach taken by the CJEU in RAAP having regard to performers' rights under Directive 2006/115;
3. Third, the EU would be bound to apply the principle of national treatment via Articles 9(1) TRIPS and 1(4) WCT. Regarding the latter, it is worth recalling that the InfoSoc Directive implemented into the EU legal order the WIPO Internet Treaties, including the WCT;
4. Fourth, through the InfoSoc Directive, the EU legislature had necessarily to take into account all works whose protection is required in the EU territory, irrespective of the country of origin of either the work in question or its author. That also applies to works/authors that could be protected under the InfoSoc Directive but that, on the date of transposition of the directive into a Member State’s law, were not protected under that national law because of the application of Article 2(7) BC.

The plus one point (see also further below) puts to rest once and for all the argument that requirements other than originality can be maintained in national law despite Flos and its progeny, including Cofemel and Brompton. The Opinion is adamant that neither Article 17 of the Design Directive nor Article 96(2) of the Design Regulation question that this possibility is precluded:

Those provisions therefore lay down not a principle of general scope governing the protection of works of applied art in EU copyright law, but a rule for overlapping protection regimes confined to the substantive scope of the acts concerned, namely the subject matter protected as designs under those acts.

The InfoSoc Directive preempts application of Article 2(7) BC by individual Member States

From the foregoing it follows that the InfoSoc Directive preempts Member States’ freedom to apply Article 2(7) BC. Where EU law provides for reciprocity, it does so explicitly: examples include the duration of protection and the resale royalty right (droite de suite). To sum up:

In law, silence can be as explicit as words. The use, in Directive 2001/29, of the terms ‘works’ and ‘authors’ without specifying the countries of origin of those works or the nationality or place of residence of those authors is therefore a sufficiently explicit expression of the EU legislature’s intention to waive application of the reciprocity clause in question. No additional confirmation is necessary in this case.

Hence, by adopting the InfoSoc Directive, the EU legislature exercised the competence previously held by Member States, which are no longer competent to implement the relevant stipulations of the BC. In so far as Article 2(7) BC is concerned, the EU has in essence decided not to take advantage of it. This is OK because, stressed the AG, that provision provides for an option, not an obligation.

Vitra's Eames chair with Kat

It follows from the above that, not only the answer to the first question referred by the Dutch court is that, yes, EU law governs this matter, but also that there is no need to consider the Charter and its Article 17(2). As regards the relevance of Article 351 TFEU, AG Szpunar interpreted the provision as not allowing a Member State to apply, by way of derogation from the provisions of EU law, the reciprocity clause currently contained in Article 2(7) BC against the holder of the copyrights on a work whose country of origin is the US.

Comment

Whether you like it or not (and, like with RAAP, it is anticipated that many people will not like it), the Opinion of AG Szpunar is perfectly aligned with established case law of the CJEU. As such, it appears likely that the Court, when it decides the case, will reason along similar lines.

The Opinion is also likely to have a substantial impact on the pending referrals in Mio and USM Haller, as AG Szpunar straightforwardly considers it settled that works of applied art are to be protected at the same conditions as other works and, thus, that no requirements other than originality are to be imposed under national law.

As noted, the Opinion is adamant that neither Article 17 of the Design Directive nor Article 96(2) of the Design Regulation question such a conclusion. That is because those provisions apply:

1. Subject to the subsequent harmonization of copyright at the level of EU law, effected in particular by the InfoSoc Directive, as interpreted by the CJEU;
2. Not to works of applied art in general, but only to designs registered in accordance with that Directive or to Community designs protected under that Regulation.

Given that Mio was referred in 2023, it may be likely that an AG Opinion is rendered sometime during the autumn. If you wonder how the appointed AG will reason, well, that seems clear already ... Nevertheless, and as always: stay tuned!