On 24 October 2024, the European Court of Justice answered preliminary questions in a case between Kwantum and Vitra. In this landmark decision, the CJEU ruled that the substantive reciprocity test of Article 2(7) Berne Convention may no longer be invoked by EU-member states. This decision has far-reaching consequences: in short, it means that foreign creators can invoke unlimited copyright protection for works of applied art within the European Union. Margot van Gerwen and Charlotte Garnitsch of Taylor Wessing represented Kwantum in this case.
Background of the case
These more than a decade-long proceedings between Kwantum and Vitra, concerned the question whether Vitra was entitled to claim copyright protection in the Netherlands and Belgium for the 'Dining Sidechair Wood', originally designed by the American couple Charles and Ray Eames.
Kwantum marketed a similar chair that Vitra believed infringed its copyright. However, Kwantum argued that Vitra could not rely on copyright protection for the DSW in the Netherlands and Belgium because the Dining Sidechair Wood was not entitled to any protection in its country of origin, the United States. Indeed, the substantive reciprocity test of Article 2(7) Berne Convention states that if a work does not enjoy copyright protection in its country of origin (here: the United States), the work is not entitled to copyright protection in the requested country (here: the Netherlands and Belgium).
Ultimately, the Dutch Supreme Court - entirely on its own initiative and without this being part of the party debate - put preliminary questions to the Court of Justice EU on the admissibility of applying the reciprocity test of the Berne Convention to works of applied art from third countries (such as the US) now that European law does not provide for this per se.
CJEU ruling
Previously, the CJEU ruled that the substantive reciprocity test of Article 2(7) Berne Convention may not be applied within the EEA due to the free movement of services and goods. The CJEU now rules that the reciprocity test of Article 2(7) Berne Convention may also no longer be applied to works of applied arts from third countries. The Court ruled in line with the opinion of the Advocate General that the application of the reciprocity clause is not allowed under EU law, as it would disrupt the uniform protection of copyrights within the EU and lead to inconsistencies between Member States. In doing so, the Court notes that restrictions on intellectual property rights within the EU may be set by the Union legislature alone, as set out in Article 17(2) of the Charter of Fundamental Rights of the European Union.
This ruling has great impact. It gives third-country authors a free hand within the EEA: unlimited access to copyright protection for works created in third countries, even if such works have no protection in their country of origin. So while 'EU works' may not be protected or may be protected to a limited extent in non-EU countries, this will now be counterbalanced by unlimited protection in the EU.
This decision obviously has major implications for the cross-border enforcement possibilities of copyright protection for product design. Please let us know if you would like to receive more information. We will of course be happy to advise you.
Full text of the ruling here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.