Federal Court of Justice submits questions to Court of Justice of the European Union concerning concept of “works” as used in copyright law

Ausgabejahr 2023
Erscheinungsdatum 21.12.2023

Nr. 210/2023

No. 210/2023

Decision of 21 December 2023 (I ZR 96/22)

The First Civil Panel of the Federal Court of Justice, which is assigned jurisdiction for copyright law, among other fields of law, has submitted questions to the Court of Justice of the European Union which seek further clarification regarding the use of the term “copyrighted work” as developed in the case law of the Court.

Facts and circumstances

The plaintiff, domiciled in Switzerland, manufactures a modular furniture system which it has been selling for decades under the name of “USM Haller”. The USM Haller system comprises high-gloss chrome-plated circular tubes which are assembled to form a frame using spherical connectors (balls). Metal panels or doors of different colours can be inserted into the frame. Individual modules created in this manner can be combined as desired and arranged next to or on top of each other.

Defendant no. 1, the director of which is defendant no. 2, sells replacement and add-on parts for the USM Haller system in its online shop. These correspond, in terms of form and for the most part also in terms of colour, to the plaintiff’s original components. The defendant’s activities were initially limited to selling replacement parts, to which the plaintiff did not object. However, in 2017/18, defendant no. 1 redesigned its online shop, which lists all the components which are needed to fully construct USM Haller items of furniture. Defendant no. 1 offers its customers an assembly service so that the delivered parts can be assembled to produce full pieces of furniture on customers’ own premises.

The plaintiff takes the view that the USM Haller system is a copyrighted work of applied art, at any rate, though, that it represents a performance result which is protected against imitation under fair trading law. The plaintiff sees the redesign of the online shop as constituting the realignment of the defendants’ business model, which is no longer solely aimed at selling replacement parts for the plaintiff’s furniture system but also at producing, offering and distributing its own furniture system which is identical to the USM Haller system.

The plaintiff filed an action against the defendants to cease and desist and to provide information and accounts, for reimbursement of the costs of a cease and desist letter and for determination of the duty to pay damages. This action is primarily based on copyright law, in the alternative on performance protection rights under competition law.

Previous proceedings

Düsseldorf Regional Court largely upheld the action which was based on copyright law. Düsseldorf Higher Regional Court, by contrast, rejected the claims under copyright law and only recognised the claims under competition law.

In its reasons the Higher Regional Court stated that the USM Haller system was not a copyrighted work of applied art within the meaning of section 2 (1) no. 4 and (2) of the Copyright Act (Urheberrechtsgesetz, UrhG). The Higher Regional Court held that it did not meet the requirements of a work established by the Court of Justice of the European Union in its recent case law, because its design features – even on the basis of the overall impression given – were not an expression of free creative choices.

The Higher Regional Court held that the plaintiff’s claims were well-founded as far as they concerned the system constituting a protected performance within the meaning of competition law. It stated that the USM Haller system had “competitive originality” because, on the basis of the overall impression given, its design features bear reference to the plaintiff as manufacturer. It held that the defendants’ offering was unfair pursuant to section 4 no. 3 (a) of the Act against Unfair Competition (Gesetz gegen den unlauteren Wettbewerb, UWG) because it caused avoidable deception of customers regarding the commercial origin of the products.

Both parties filed an appeal on points of law only (Revision) against this ruling. The plaintiff continues to uphold the claims under copyright law which were rejected by the Higher Regional Court. The defendants are seeking to have the plaintiff’s action entirely dismissed.

The Federal Court of Justice’s ruling

The Federal Court of Justice (Bundesgerichtshof) suspended the proceedings and submitted three questions to the ECJ concerning the interpretation of the term “works” as used in article 2 (a), article 3 (1) and article 4 (1) of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society. In the light of the request for a preliminary ruling submitted by the Swedish Patent and Markets Court of Appeal (Svea hovrätt) which is pending before the ECJ as Case C-580/23 and which also raises questions concerning the term “works”, the correct interpretation is not so obvious as to leave no scope for any reasonable doubt.

The ECJ has been asked to first clarify whether, given that works of applied art may also be considered to be protected as designs, the court of appeal correctly assumed that copyright protection was of exceptional nature, with the consequence that when examining the originality of these works under copyright law greater requirements are to be made in terms of the author’s free creative choices than when examining other types of works.

What is also in question is whether, when examining originality under copyright law, account is (also) to be taken of the author’s subjective view during the creative process and of the fact that he or she must, in particular, consciously make creative decisions or whether an objective standard is to be applied.

Furthermore, it has not yet been equivocally clarified whether, when assessing originality, account can also be taken of circumstances which arise subsequent to the creation of the product, such as presenting the product at art exhibitions or in museums, or its recognition by specialist circles.

Lower courts

Düsseldorf Regional Court – judgment of 14 July 2020 (14c O 57/19)
Düsseldorf Higher Regional Court – judgment of 2 June 2022 (20 U 259/20)

Relevant legal provisions

Section 2 (1) no. 4 and (2) of the Copyright Act

(1) Protected works in the literary, scientific and artistic domain include, in particular:
[…]
4. artistic works, including works of architecture and of applied art and drafts of such works;
[…]
(2) Only the author’s own intellectual creations constitute works within the meaning of this Act.

Article 2 (a) of Directive 2001/29/EC

Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part:
(a) for authors, of their works;
[…]

Article 3 (1) of Directive 2001/29/EC

Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.

Article 4 (1) of Directive 2001/29/EC

Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.

Karlsruhe, 21. December 2023