On 24 October 2024, the Court of Justice of the European Union (CJEU) delivered an important judgment in the Vitra/Kwantum case (C-227/23) : EU Member States cannot use reciprocity provisions to deny copyright protection to original works of applied art, even if these works originate from non-EU Member States that do not offer copyright protection. Once a subject matter can be classified as a ‘work’ within the meaning of EU copyright law, EU Member States must grant protection to such works in the EU, regardless of their country of origin or the nationality of their author. The ruling, which follows a referral from the Dutch Supreme Court, underlines the CJEU’s commitment to a harmonised copyright standard that prioritises ‘originality’ as the sole requirement for copyright protection under EU law.
Case background
The case concerns Vitra, a Swiss furniture manufacturer which owns the rights to the designs of US nationals Charles and Ray Eames. Those designs include the famous Dining Sidechair Wood (DSW Chair), a classic design created by Charles and Ray Eames in 1950 for a furniture design competition organised by the Museum of Modern Art (MoMA). Kwantum, a furniture retailer operating in the Netherlands and Belgium, marketed a similar product under the name “Paris chair”, which allegedly infringed Vitra’s copyright in the DSW chair. In order to protect its intellectual property, Vitra took Kwantum to court in the Netherlands. The Dutch Supreme Court referred the case to the CJEU, seeking clarification as to whether EU Member States could deny copyright protection to non-EU works on the basis of the criterion of material reciprocity laid down in the second sentence of Article 2(7) of the Berne Convention, whereas EU law does not provide for such a restriction.
The Legal Question: Reciprocity in the Berne Convention & EU Law
Under international law, the Berne Convention grants foreign authors from signatory countries the same protection as national authors. However, for works of applied art, a material reciprocity clause provides as a basic rule that works protected in the country of origin only as designs (and thus not by copyright) are entitled in another country only to the special protection afforded to designs in that country. The Dutch Supreme Court asked the CJEU whether EU member states could use this clause to exclude the copyright protection of works of applied art from third countries such as the United States.
The CJEU’s Ruling
The CJEU ruled that EU member states cannot use the reciprocity clause to limit protection for foreign works where EU copyright law applies. The EU Infosoc Directive 2001/29, which harmonises copyright law across the EU, does not allow EU Member States to take into account the country of origin or the nationality of the author when granting copyright protection to a work of art.
Besides other interesting considerations in the judgement, one can highlight four key points:
- Scope of EU law: The CJEU emphasises that copyright protection for works of applied art in the EU is based solely on the ‘originality’ standard, as clarified in previous cases such as Cofemel (C-683/17) and Brompton Bicycle (C-833/18). Once a subject matter of applied art marketed in an EU Member State can be classified as a ‘work’ within the meaning of the Infosoc Directive, meaning that it is the expression of the author’s own intellectual creation, it falls within the material scope of EU law.
- Harmonisation Objective: Allowing individual EU Member States to apply reciprocity clauses would undermine the Infosoc Directive’s objective of harmonising copyright law in the internal market, says the CJEU. Under the material reciprocity criterion, works of applied art originating from third countries could be treated differently in different EU Member States on the basis of provisions of treaty law applicable bilaterally between an EU Member State and a third country.
- Fundamental Rights Consideration: Since the copyright protection in question is protected under Article 17(2) of the Charter of Fundamental Rights of the European Union, any limitation on the exercise of those rights must, in accordance with Article 52(1) of the Charter, be provided for by law and respect the essence of the rights and freedoms protected. It is for the EU legislature alone, and not for national legislatures, to determine whether the grant of that copyright in the EU should be limited in respect of works or authors originating from a third country (see CJEU 8 September 2020, C-265/19, RAAP).
- General scope of the Infosoc Directive: Contrary to the duration of the copyright protection and to the “droit de suite”, the EU legislator did not make use of the possibility of reciprocity: the Infosoc directive 2001/29 is general and should apply as such regardless of the country of origin of the work or the nationality of the author.
Analysis, Comment and Impact of the Decision
Building on its previous case law on copyright, the CJEU unsurprisingly confirms that ‘originality’ is the sole criterion for copyright protection under EU law, thus creating a single system that treats all original works equally, regardless of their origin. It is also an important next step towards further harmonisation of copyright law across the EU, which will be further complemented by the three referrals currently pending before the CJEU in Case C-580/23, Mio / Asplund, Case C-795/23, Konektra / USM Haller and Case C-649/23, Institutul G. Călinescu. These referrals are expected to provide further insight into how the standard of ‘originality’ should be assessed and measured.
On the other hand, the CJEU’s reasoning raises important questions. By stating that the harmonisation of the concept of “work” by the Infosoc Directive inherently means that protection of works that meet the substantive criteria is automatically granted to foreigners, the CJEU arguably overlooks the distinction between substantive law and rules on foreigners’ access to copyright protection. It is far from certain that the EU legislator ever intended to regulate this aspect in the Infosoc Directive.
Nevertheless, the decision clearly opens up the EU market and now offers exclusive protection to non-EU works and to authors who do not enjoy the same protection in their home country.
Finally, while the CJEU’s reasoning is open to criticism, the same result would probably have been achieved by applying the principle of national treatment combined with the mandatory protection of designs under Articles 2 and 11 of the Paris Convention for the Protection of Industrial Property (as recently decided by the French-speaking Enterprise Court in Brussels in a judgment of 18 March 2024).
For any questions or assistance, please reach out to our
Intellectual Property Team | IP@simontbraun.eu – +32 (0)2 543 70 80
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This newsletter is not a legal advice or a legal opinion. You should seek advice from a legal counsel of your choice before acting upon any of the information in this newsletter.
