The matter at hand

Vitra produces designer furniture, including the Dining Sidechair Wood (the DSW chair), designed by the now deceased couple Charles and Ray Eames, who were citizens of the United States of America. Vitra holds the copyrights on those chairs.

Kwantum operate, in the Netherlands and Belgium, a chain of stores selling household articles, including a chair under the name ‘Paris’ which, in the opinion of Vitra, infringes the copyright in the DSW chair.

After the court of first instance had denied Vitra’s claims, the court of appeal considered that Kwantum had infringed Vitra’s copyrights in the DSW chair in the Netherlands and Belgium. In appeal before the Hoge Raad der Nederlanden (the Supreme Court of the Netherlands), the parties debated whether the appeal court had correctly applied the reciprocity clause contained in Article 2(7) of the Berne Convention. This clause inter alia stipulates that ‘works protected in the country of origin solely as designs shall be entitled in another country of the Berne Convention only to such special protection as is granted in that country to designs’. 

With reference to the judgment in RAAP (case C-265/19), the Supreme Court of the Netherlands decided to raise preliminary questions to the ECJ relating to the protection which, under the InfoSoc Directive and Article 17(2) and Article 52(1) of the Charter, may be granted in the European Union to a work of applied art originating in a third country and the author of which is not a national of a Member State. 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 which protect those works solely under a special regime, even though the EU legislature has not provided for such a limitation.

The Judgment of the ECJ

In its judgment, the ECJ clarifies that a situation in which a company claims copyright protection for a subject matter of applied art 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 the InfoSoc Directive (paragraph 51).

Next, the ECJ considers that the EU legislature, in adopting the InfoSoc Directive, necessarily took into account all the works for which protection is sought in the territory of the European Union. Moreover, that directive does not lay down any criterion relating to the country of origin of those works or to the nationality of their author (paragraph 59).

The ECJ adds that the application of the material reciprocity clause contained in the Berne Convention would undermine the objective of the InfoSoc Directive, which consists in the harmonisation of copyright in the internal market, since, under that clause, works of applied art originating in third countries might be treated differently in different Member States (paragraphs 63 and 68).

Lastly, the ECJ points out that, since the intellectual property rights in question are protected under Article 17(2) of the Charter, any limitation of those rights must, in accordance with Article 52(1) of the Charter, be provided for by law (paragraph 71). It is for the EU legislature alone to determine whether the grant in the European Union of the rights laid down in the InfoSoc Directive should be limited (paragraph 72). In those circumstances, a Member State cannot rely on the Berne Convention in order to exempt itself from the obligations arising from that directive (paragraph 73).

Commentary

This judgment is a seismic shift for the protection of works of applied art of non-EU origin in the EU. Article 2(7) of the Berne Convention in practice implies that for works of applied art to be protected in another member state of the Berne Convention, it must make the threshold for copyright protection in both the country of origin and the country where the right is invoked. This is particularly prohibitive for works originating from countries excluding copyright protection for works of applied art and for countries with a high threshold for such protection. This includes countries with a great legacy of product design, like the USA and Japan. As EU Member States are, as we have now learned, not allowed to apply Article 2(7) of the Berne Convention, this extra hurdle does not exist in the EU. This implies that every work of applied art that makes the threshold for copyright protection of Case C-683/17 (Cofemel) will be copyright protected in the entire EU, irrespective of the country of its origin.