In a big win for brands that produce and sell physical products, and designers of those products, the EU’s top court has decided that products can benefit from copyright protection in the EU even where they would not be protected in their country of origin. This means that non-EU brands will better able to stop lookalikes and copies of their products from being sold in EU countries. 

‘Works of applied art’

Intellectual property protection for works of applied art (i.e. physical products in which copyright may subsist) has been a fiddly issue for copyright protection internationally as well as closer to home. 

In a judgment released today, the ECJ makes clear that protection is available for all ‘works’ irrespective of the author’s nationality or the work’s country of origin. If a work meets the threshold for EU copyright protection, an owner can enforce copyright in the EU, even if the work does not qualify for protection in its country of origin. 

The Berne Convention

The Berne Convention provides reciprocal copyright protection in countries that are signatories to it, meaning a work that has copyright protection in, say, the US can be protected in all other signatory countries. 

A ‘reciprocity’ exception exists in relation to works of applied art. Article 2(7) of the Convention provides that for works of applied art, if the work would not be protected by copyright in the country of origin, the country in which copyright is being claimed in enforcement proceedings can decline to provide protection. The carve out is in place because there is disparity on how countries treat ‘products’ in terms of copyright. For instance, the US has a restrictive view on whether a product can gain copyright, rather than design protection, focusing on whether the aesthetic features can be separated from the utility of the work. The Convention sought to offer signatories the option to even out the irregularity of one work having much broader protection in its own country than it could ever have had in its country of origin, or vice versa. The EU, while not a signatory to the Berne Convention, has through international treaties agreed to abide by Articles 1 to 21. 

The case

The question to the ECJ was whether EU member countries could apply this Berne exception in light of the harmonisation of substantive and procedural copyright protection in the EU. 

The main players in the dispute are 1. the product, the Dining Sidechair Wood (which was designed by the famous American couple Charles and Ray Eames, the “DSW Chair”), a chair designed by US nationals that does not have US copyright protection; 2. The rightsholder, a Swiss company called Vitra that owns what intellectual property there is in the DSW Chair; 3. The ‘infringer’,  Kwantum a company operating furnishing shops in the Netherlands and Belgium making a ‘Paris chair’ that allegedly infringes the DSW Chair. 

Vitra brought proceedings for copyright infringement in the Netherlands against Kwantum. The Supreme Court of the Netherlands referred several questions to the Court of Justice, with the main aim to establish whether the Netherlands could apply its own Berne reciprocity rule and deny the DSW Chair copyright protection, even though it may qualify under EU law. 

In agreement with the Advocate General decision of 2 September 2024, the ECJ found that an EU member state cannot apply the Berne reciprocity exception. Terms concerning EU copyright protection such as  ‘work’ or ‘author’ are defined without any territoriality, therefore the nationality of the work or author cannot be relevant. This is in contrast to EU law’s treatment of the duration of copyright protection, Article 7(1) of Directive 2006/116 expressly sets provisions such that when copyright (if it exists) expires in the country of origin, it will expire in the EU (provided the country of origin duration does not exceed the upper limit for EU protection).  Consequently, territorial considerations cannot be implied; they have to be express. This decision is in keeping with the overall objective of the free movement of goods and services in member states; to have a different protection in one EU state over another for the same third country goods would inhibit this free flow. Under the Charter of Fundamental Rights of the European Union, these sorts of limitations must be provided for by EU law, not national law. 

So what does this mean for brands? 

It’s good news for brands and designers. Where the product in question can be shown to be original, it can be protected by copyright across the EU. This will be the case even if those kinds of works i.e. a designer chair, would not be entitled to copyright protection in the country in which it was designed. 

Whilst this decision is framed under the Berne Convention, there’s no reason to believe that the rule would be any different for non-signatories given the court’s reasoning. For IP owners, this could open up the possibility to enforce their rights in the EU where their national rights (e.g. designs) have expired. 

While the law in the UK remains unsettled as to scope of copyright protection for works of applied art, it is now clear that those rights can be enforced in the EU. This will be the case even if the UK decides to depart from EU law to adopt a more restrictive delineation between designs and copyright.

See the judgment here: CURIA - Documents