ECJ facilitates legal protection for works of applied art from third countries

In our article, we explain how the ECJ came to its decision and what new legal protection is now available to designers from third countries.

1. Legal framework

The decision focuses on Art. 2(7) of the Revised Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and its relationship with the Union's harmonised copyright legislation. The current version of the Berne Convention, which first entered into force in 1887 and to which 181 countries worldwide are parties, dates from 1971. The Contracting States are the Member States of the European Union, including Germany, but not the European Union itself – although the latter has undertaken to apply Articles 1 to 21 of the Berne Convention in the Copyright Treaty of the World Intellectual Property Organisation (WCT).

Art. 2(7) of the Berne Convention contains the principle of material reciprocity for works of applied art, according to which such works shall enjoy copyright protection in a Contracting State only if they are also protected by copyright in their country of origin – and not “only” as designs. On the basis of Art. 2(7) of the Berne Convention, works of applied art have often been denied copyright protection in Germany (e.g. Higher Regional Court of Hamm, judgment of 26 June 1992, case no. 4 U 100/92; see also the French Cour de Cassation, judgment of 7 October 2020, case no. D 18-19.441). The ECJ has now put a stop to this.

2. Facts and course of proceedings

The case concerned an alleged imitation of Vitra’s “Dining Sidechair Wood”. This is a chair designed by the late American couple Charles and Ray Eames, which is therefore also known as the “Eames chair”. The defendant, Kwantum, operates a chain of furniture stores in the Netherlands and Belgium. Vitra considered the “Paris Chair” sold by Kwantum to be an infringement of its copyright in the Eames Chair and brought an action before the Dutch courts.

At first instance, the Rechtbank Den Haag found no infringement and dismissed the case. The Court of Appeal in The Hague then came to the opposite conclusion, finding an infringement of Vitra’s copyrights and upholding the claim. The Hoge Raad der Nederlanden stayed the subsequent appeal proceedings and referred five questions of interpretation to the ECJ, essentially concerning the relationship between Art. 2(7) of the Berne Convention and EU copyright law.

3. The decision of the ECJ

The ECJ found that EU copyright law prevents Member States from applying the principle of material reciprocity under Art. 2(7) of the Berne Convention to works of applied art whose country of origin is a third country or whose author is a third-country national.

The ECJ reached this conclusion by first stating that Art. 2(a) and Art. 4(1) of Directive 2001/29 (Copyright Directive) also apply to works of applied art whose country of origin is a third country or whose author is a third-country national. The criterion for copyright protection is not the geographical origin of the work or its author, but solely whether the object in question meets the substantive requirements for protection. Moreover, the Directive’s objective of harmonising copyright protection in the internal market would be jeopardised if the conditions for protecting works of applied art from third countries were different in the Member States. The Copyright Directive should therefore be applied whenever copyright protection is sought for a work in the internal market.

In a second step, the ECJ states that copyright is protected by Art. 17(2) of the Charter of Fundamental Rights (CFR) and that the application of Art. 2(7) of the Berne Convention constitutes an impairment of this fundamental right. However, according to Art. 52(1) CFR, such impairment of a fundamental right must be provided for by law. Since the EU has harmonised copyright law, only the EU – and not the Member States – is entitled to decide whether and under what conditions the fundamental protection of copyright may be restricted.

4. Significance of the rules and practical advice

It is hard to understate the importance of this decision. Not only does it provide important legal clarity, it also strengthens the protection of rights holders based outside the European Union, for example in the US. This opens up new possibilities for legal protection: Provided that the object in question meets the requirements for protection as a work of applied art according to the standards of Union law, it can no longer be denied copyright protection in the European Union. Proof of copyright protection in the country of origin will no longer be required. This will significantly reduce the barriers to, and the complexity and cost of, enforcing rights in the European Union.

In addition to prosecuting infringements in the European Union, the decision also paves the way for border seizure applications to prevent the import of infringing products at the Union's external borders.

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