CJEU Says Copyrighted Works of Art Get EU Protection Regardless of Standard in Origin Country

The Court of Justice of the European Union (CJEU) has ruled that EU Member States are required to protect works of applied art in the European Union, irrespective of the country of origin of those works or the nationality of their author.

The judgment in Case C-227/23 of 24 October 2024 (Kwantum versus Vitra) is a landmark copyright decision. The matter was referred to the CJEU by the Supreme Court of The Netherlands following a dispute between the companies Vitra and Kwantum.

Vitra, a Swiss company that manufactures designer furniture, holds intellectual property rights over chairs designed by Charles and Ray Eames, who were nationals of the United States of America. The furniture included the Dining Sidechair Wood (the ‘Eames’-chair), which was created as part of a furniture design competition organized by the MOMA in New York and exhibited in that museum from 1950. Kwantum, operating an interior furnishing chain in the Netherlands and in Belgium, marketed a chair called the ‘Paris-chair’, allegedly in breach of Vitra’s copyright in the Eames-chair.

Eames chair (Vitra)

Paris-chair (Kwantum)

           (source of images: Court of Appeal The Hague, ECLI:NL:GHDHA:2020:1218 (Kwantum/Vitra))

Vitra brought proceedings before the Netherlands courts to stop the alleged infringement. In international law, the Berne Convention provides that authors who are nationals of the signatory countries enjoy in the other signatory countries, in principle, the same rights as national authors. However, the protection of works of applied art constitutes an exception to that principle. The contracting parties have laid down a material reciprocity clause (article 7(2), Berne Convention) according to which works of applied art originating in countries in which such works are protected solely as designs and models are not entitled, in the other signatory countries, to copyright protection. Seeking protection as design or model in the EU typically no longer provides solace for designs such as the Eames-chair for the reason that once the design or model has been made available to the public (with a grace period of 12 months) such publication is novelty damaging for a later registration.

Hence, the reciprocity clause provides a serious copyright hurdle for works of applied arts originating from outside the EU Member States, making proceedings complex, costly, and unpredictable. The claimant will need to show that that the work of applied art is eligible for copyright protection in the country of origin, and courts will have to make an assessment on the bases of foreign law.

In the case at hand the parties were able to rely on opposing legal opinions of U.S. professors and U.S. lawyers as to the question whether the Eames chair would be eligible for copyright protection in the United States. In the first instance, the District Court of The Hague held that the Eames-chair was not eligible for copyright protection in the United States and rejected the claims of Vitra that were based on copyright. During appeal proceedings the  Athletica decision of the U.S. Supreme Court was rendered. The Court of Appeal in The Hague provided a lengthy interpretation of the implications of Star Athletica for the eligibility of copyright protection and how to perform the ‘separability’ test from Feist. It concluded the Eames chair was eligible for copyright protection in the United States. Kwantum filed a further appeal with the Supreme Court.

Referral to the CJEU

The Supreme Court of the Netherlands decided to refer questions to the CJEU for a preliminary ruling asking the CJEU to provide guidance in relation to the protection which, under EU Directive 2001/29 and Article 17(2) and Article 52(1) of the Charter of Fundamental Rights of the European Union (‘the Charter’), may be granted in the European Union to works of applied art originating in a third country in the situation that the author of the work is not a national of a Member State.

The referral by the Supreme Court was remarkable considering that neither any of the parties, nor the Advocate-General appointed to the case, questioned that the reciprocity clause of the Berne Convention would have to be applied. The Supreme Court on its own motion sought to ascertain whether the Member States are still free to apply the material reciprocity clause contained in the Berne Convention to works of applied art originating in third countries, even though the EU legislature does not provide for a limitation similar to the one laid down in Article 2(7) BC.

CJEU Decision

First of all, the CJEU clarified that a situation in which a company claims copyright protection for a subject matter of applied art that is marketed in a Member State falls within the material scope of EU law (provided that such subject matter may be classified as a ‘work’ within the meaning of EU Directive 2001/29).

Next, the CJEU found that the EU legislature necessarily took into account all the works for which protection was sought in the territory of the European Union. It did not lay down any criterion as to the country of origin of those works or to the nationality of their author. Consequently, the CJEU held that the application of the material reciprocity clause contained in the Berne Convention would undermine the objective of EU Directive 2001/29, which consists in the harmonization of copyright in the internal market.

Lastly, the Court pointed out that, since the intellectual property rights in question are protected as fundamental rights under Article 17(2) of the Charter, any limitation of those rights must be provided for by law (in accordance with Article 52(1) of the Charter). It is up to the EU legislature alone to determine whether the grant in the European Union of the rights laid down in Directive 2001/29 should be limited. Since there is no such limitation in the EU Directive 2001/29 a Member State cannot rely on the Berne Convention in order to exempt itself from the obligations arising from that Directive.

Implications

The decision has major implications for the possibility to enforce copyrights in works of applied art in the EU originating from “third countries” where a stricter approach to copyright protection applies in comparison with EU law.

Copyright law in the EU has largely been harmonized in recent years. According to case-law of the CJEU, first, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation. Second, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of EU Directive 2001/29. Most notably in Cofemel (C-683/17) and Brompton Bicycle (C-833/18), the originality requirement was extended to all types of works – including works of applied art. The CJEU has held that copyright can protect product design which is, at least in part, necessary to obtain a technical result, provided it is original. If the design is ‘solely dictated’ by function, copyright protection should be denied.

The threshold for acquiring copyright protection in the EU in general is considered to be relatively low. Despite the harmonization, there remain differences on how strictly the various national courts in the EU Member States apply the originality test. For instance, in Germany, Spain and Portugal courts traditionally are more reluctant in granting copyright protection to works of applied arts. By contrast, in the Netherlands the general assumption is that the threshold for copyright protection of works of applied art is very low.

Historically, from a Dutch law perspective, there would be no doubt that the cheerleader costumes from Star Athletica in principle would be eligible for copyright protection under Dutch and EU copyright law, and the same applies to the Eames-chair. A limitation of the protection basically resides where a design is almost exclusively the result of technical considerations or function.

This landmark decision by the CJEU should be lauded from the perspective of all “third country” creators, in particular those in the United States. All can now benefit from the more generous EU copyright protection towards their creations, allowing them to protect their interest in the EU market in relation to their works of arts, where in contrast they would perhaps be toothless in the United States in relation to enforcing their design of useful articles such as clothing, furniture, and kitchen appliances. Enforcement in addition will be more predictable and more cost efficient, given that only the EU copyright test will have to be applied and legal opinions on protection in the country of origin are no longer needed. The national copyright law in the EU Member States under circumstances also allows EU-wide injunctions.

Following this landmark decision, we expect to see more copyright enforcement actions in the EU based on works of art originating from the United States.