Copyright protection in Europe for useful articles designed in the United States

In its decision of 24 October 2024 in Kwantum Nederland BV and Kwantum België BV v Vitra Collections AG (C-227/23), the Court of Justice of the European Union (CJEU) has opened the door to nationals and habitual residents of countries outside the European Union (EU) obtaining copyright protection within the EU for useful articles that may not be protectable by copyright in their home countries.
 
Background
 
Europe and the United States have long taken different views as to the extent that copyright protection is available for useful articles, with Europe taking the more relaxed position.
 
The U.S. statute (17 USC 101) only provides copyright protection for useful articles “if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.The most recent Supreme Court decision (Star Athletica, LLC v. Varsity Brands, Inc. 580 U.S. 405 (2017),relating to ornamentation on cheerleaders’ uniforms) put it this way:
 
The question… is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.
 
Continental Europe on the other hand has tended to have a broader concept of what can be protected by copyright. In Germany, the 1965 Copyright Act provides protection of works in the literary, scientific and artistic domain. For example, a chair that had been exhibited in Museum of Modern Art in New York was found to be protectable by copyright. In France, the law on author’s rights gives protection for works of the mind created by an author, whatever their kind, form of expression, merit or purpose, although works that are exclusively utilitarian or functional are not protected. In the United Kingdom, the statute provides protection for works of artistic craftsmanship.
 
The Berne Convention
 
Against this background, the Berne Convention generally provides copyright protection in all member countries for works created by an author who is a national or habitual resident of one of the member countries. Article 2(7) of the Berne Convention states that member countries may determine the extent to which they grant protection to works of applied art including subjecting a requirement that protection for such works is available in the country in which the work originated (the so-called reciprocity provision).
 
EU law on copyrightable work
 
In 2001, the European Union adopted the Copyright and Information Society Directive (Directive 2001/29), which in Article 2(a) required Member States to provide protection to authors for “their works”. The meaning of this has been considered by the Court of Justice of the European Union, most notably in the cases of Cofemel - Sociedade de Vestuário, SA v G-Star Raw CV(C-683/17) and Brompton Bicycle Ltd v Chedech / Get2Get (C-833/18). Essentially, these cases held that the requirement for protection by way of copyright under the directive was simply that the work was “an intellectual creation of the author that is expressed in a manner that makes it identifiable with sufficient precision”. In the Brompton Bicycle case, the Court explained that to be original, “the subject matter reflects the personality of its author, as an expression of his free and creative choices”. There is no requirement that the work is artistic or aesthetic. Thus, in the Cofemel case, if the originality requirement was met, copyright protection could exist for G-Star’s designs for jeans, sweatshirts, and t-shirts which Cofemel was alleged to infringe. Similarly, in the Brompton Bicycle case, provided the originality requirement was met, copyright protection could exist for a folding bicycle as long as its shape was not dictated by its function.
 
EU protection for works of applied art originating outside the EU
 
Questions remained as to whether by application of Article 2(7) of the Berne Convention, EU member countries could prevent nationals of countries from qualifying for copyright protection works under the requirement for an artistic element given the EU’s more liberal approach.
 
This was the question addressed in the Kwantum case,where the Dutch Supreme Court sua sponte requested an opinion from the CJEU on whether, notwithstanding Article 2(7) of the Berne Convention, copyright protection could be granted in the EU for works of applied art originating outside the EU, even though such protection was not available in the country in which the work originated. The work in question was a chair designed by Americans and originating from the United States.
 
After noting that Directive 2001/29 stated that it served to implement the EU’s obligations under the Berne Agreement and that by adopting that Directive, “the EU legislature is deemed to have exercised the competence previously devolved on the Member States in the field” so that “the Member States are no longer competent to implement the relevant stipulations of the Berne Convention” meaning that adoption of the reciprocity provisions of Berne Article 2(7) were not mandatory. The CJEU went on to point out that Directive 2001/29 had adopted reciprocity provisions relating to the terms of protection for certain works and with respect to resale rights, but had not adopted any reciprocity provisions for works of applied art. It therefore followed that copyright protection was available in the EU for anything that met the requirements of CJEU case law – such as Cofemel and Brompton Bicycles – and that individual Member States could not apply Article 2(7) of the Berne Convention to impose any reciprocity requirement to prevent this.
 
Conclusion
 
All member countries of the EU must recognise copyright protection for works of applied art created outside the EU, provided those works meet the criteria of reflecting the personality of its author, as an expression of his free and creative choices, and is not dictated by function.