Tuesday, 13 November 2018

The Levola Hengelo CJEU decision: ambiguities, uncertainties ... and more questions

As announced earlier today, the Court of Justice of the European Union (CJEU) has finally issued its (short) judgment in Levola Hengelo, C-310/17, holding that copyright cannot vest in the taste of a food product (a spreadable cheese in the background Dutch proceedings).

The case is important for a number of reasons, and especially because it is probably the first time that the CJEU has been given directly the chance to tackle the notion of 'work' under the InfoSoc Directive (but, I would say, the overall EU copyright acquis).

Let's see how the CJEU reasoned.

'Work' under the InfoSoc Directive

The Court started by noting that the InfoSoc Directive harmonizes a number of economic rights and related exceptions and limitations, which concern the exploitation of 'works'. Yet, that piece of legislation does not define what is to be intended as 'work', nor does it make any reference to the laws of individual Member States.

This means, unsurprisingly, that the notion of 'work' is an autonomous concept of EU law, that is to be given an autonomous and uniform interpretation throughout the EU.

With particular regard to the taste of a food product, this means that copyright protection may only vest in said subject matter if it can be regarded as a 'work' in a EU sense. According to the CJEU, this means that two cumulative criteria must be satisfied:
  1. The subject matter concerned must be original in the sense clarified in Infopaq and its progeny;
  2. The subject matter must be a 'work' 
This part of the judgment appears rather tautological as the CJEU suggests that a 'work' is a 'work'. But that is not all: the Court also appears to (oddly) suggest that only something that is original is a work, as if originality was a requirement for a certain subject matter to be classified as a work:
only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of Directive 2001/29
'Work' under Berne

Moving on from this headache-inducing part of the judgment, having clarified (?) what a work is under the InfoSoc Directive, the CJEU turned to Article 2(1) of the Berne Convention. By adopting the InfoSoc Directive, the EU implemented into the EU legal order the WIPO Internet Treaties and Article 1(4) WCT requires compliance with Articles 1 to 21 of Berne.

This means that:
  • the notion of 'work' must be intended having regard to Article 2(1) of Berne.
  • the idea/expression dichotomy, as found in Articles 2 WCT and 9(2) TRIPs must be also taken into account.
According to the CJEU, it follows from these two considerations (?) that 
for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
And even if the Court did not refer (as instead the AG had done) to the Sieckmann criteria in relation to the graphic representation requirement in trade mark law, it appeared to have them very much in mind when it used substantially the same language of that ruling in holding that:
first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. The same is true for individuals, in particular economic operators, who must be able to identify, clearly and precisely, what is the subject matter of protection which third parties, especially competitors, enjoy. Secondly, the need to ensure that there is no element of subjectivity –– given that it is detrimental to legal certainty –– in the process of identifying the protected subject matter means that the latter must be capable of being expressed in a precise and objective manner.
All this served the Court to conclude that the taste of a food product cannot be identified with precision and objectivity. This would make it different from "a literary, pictorial, cinematographic or musical work, which is a precise and objective form of expression". All this appears rather questionable, especially because the Court associated such presumed 'objectivity' to the way in which one appreciates those works, rather than how they perceive them:
the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable since they depend, inter alia, on factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed.
Spreadable Kat
But isn't the same be true for other types of copyright works as well? If what the Court suggests was true, then we would all like the same music, novels, and films ...

According to the Court the problem also relates to the current state of scientific development, ie to the same problem occurred for trade mark registration of less conventional signs, that is "to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind."

Because of all these considerations, the taste of a food product is not a work and cannot be protected under EU copyright law (and it would seem, international copyright law).


Despite being a fan of the CJEU, this time I have to admit that I am not sold. And that is not because of the particular outcome of the case (which, in a way, appeared necessitated), but because of the reasoning of the court in relation to the following points:

  • First, conflating the notions of works and originality (which the CJEU did to a certain extent, when it tried to define the notion of 'work' under EU law, and is something problematic that it had done already in cases like InfopaqBSA, and FAPL);
  • Secondly, deriving from the idea/expression dichotomy a requirement that a 'work' satisfies something that - let's put it bluntly - mirrors the graphic representation requirement in trade mark law, as interpreted in Sieckmann;
  • Thirdly, suggesting that copyright protection is subject to a requirement of 'objective' perception (and judgment).
All this said, however, the judgment is important and requires closer scrutiny. There are two additional, key points that deserve attention.

An EU fixation requirement

First, even if the CJEU denied that [at para 40], as a matter of fact, it mandated (as the AG had done before it) a fixation requirement in EU copyright law. Reference to the need for precision and objectivity of the subject matter appears in fact to imply that some sort of fixation is present. Would it be in fact possible to have subject matter that is precise and identifiable without it being also fixed in some material form? All this raises question marks in relation to Berne, as in principle member states are free to determine whether fixation should be or not a requirement in their own copyright laws.

Unconventional Kat
Subject matter categorization

The second point of interest, which I discuss more at length in this forthcoming book, relates to the fact that, under EU law, copyright protection under EU law arises when (1) there is an intellectual creation, that is (2) a work.

The CJEU could have not stated that more clearly.

The implications of all this are that the same type of subject matter is to be protected across the EU. On the one hand, this would prevent protection by means of copyright of subject matter that does not fall within the EU notion of ‘work’ and, on the other hand, it would prevent Member States from excluding protection for works that, instead, fall within the EU notion. 

In this sense, closed national systems of protectable works (as is the case in Europe of the UK, Ireland, and Austria) would unlikely be compatible with EU law. This conclusion is in fact also prompted by the following consideration: if, on the one hand, we accept that solutions like the one of the Dutch Supreme Court in Kecofa v Lancôme, ie that copyright could vest in a perfume, may not be tolerated then, on the other hand, protection could not be denied in a certain work just because it does not belong to one of the categories envisaged by a certain Member State’s list of protectable works. At the time when the Dutch judgment was issued (2006) some commentators noted that disparities in the protection tout court of certain subject matter across the EU would raise, inter alia, free movement issues:
Dutch law is now out of step with that of all other EU member states. Parfumeurs welcomed the Dutch ruling, believing their work to be indubitably artistic. Such thinking sits comfortably with the Romantic vision of the author as uniquely entitled to proprietorship of created works, but this paradigm has been seriously challenged in post-modern times. It also draws on an aesthetic discourse of originality which cries loudly for protection but has a tendency to forget its own debts. TRÉSOR itself owes much to two earlier perfumes: Calvin Klein's ETERNITY and Sophia Grosjman's EXCLAMATION. In addition to the philosophical difficulties, there are practical problems. It will require considerable creativity to apply certain acts of copyright infringement (e.g. distribution, making available to the public) to fragrance, whose fundamental purpose is that it will perceived not only by the wearer, but also by those in the vicinity. Furthermore, the ruling creates an unacceptable impediment to the free movement of goods within the EU. Harmonisation will be essential if the Dutch approach is maintained.
The same would be true for works, possibly of a less conventional type, that are regarded as protectable in certain EU jurisdictions but not others. As a result, protection across the EU should be based on the same requirements and be subject to the same limitations.

[Originally published on The IPKat on 13 November 2018]

Friday, 2 November 2018

Criminal conviction over disparaging religious doctrines not a violation of freedom of expression: potential IP implications of the latest ECtHR ruling

A few days ago the European Court of Human Rights (ECtHR) issued yet another interesting judgment, which - albeit not directly related to IP - might be nonetheless relevant for the interpretation and application of public policy/morality exclusions, especially in the case of blasphemous and offensive subject matter.

The decision is the one in E.S. v Austria, Application No 38450/12.


The case related to the applicant's criminal conviction in Austria for disparaging religious doctrines (Articles 188 and 283 of the Austrian Criminal Code), and her claim that this violated her freedom of expression under Article 10 of the European Convention on Human Rights (ECHR).

More specifically, the conviction resulted from a series of public seminars entitled 'Basic Information on Islam' that the applicant had delivered at the right-wing Freedom Party Education Institute.

One of these seminars was attended by an undercover journalist, whose publication requested that a preliminary investigation be instituted against the applicant.

Eventually, the applicant was convicted due to her statements suggesting that Muhammad - because of his marriage to a six-year old child (Aisha) - had paedophilic tendencies, and would not be, as such, a worthy subject of worship. Austrian courts found that it could not be established that the applicant had intended to decry all Muslims. Rather, she had meant to criticize the unreflecting imitation of a role model. According to the courts at first instance and on appeal, it would not be correct to consider child marriage as akin to paedophilia. In particular, because paedophilia is behaviour which is ostracized by society and outlawed, it would be evident that the applicant’s statements were capable of causing indignation. According to the first instance court,
the applicant had intended to wrongfully accuse Muhammad of having paedophilic tendencies. Even though criticising child marriages was justifiable, she had accused a subject of religious worship of having a primary sexual interest in children’s bodies, which she had deduced from his marriage with a child, disregarding the notion that the marriage had continued until the Prophet’s death, when Aisha [with whom the marriage was consummated when she was 9] had already turned eighteen and had therefore passed the age of puberty. In addition, the court found that because of the public nature of the seminars, which had not been limited to members of the Freedom Party, it was conceivable that at least some of the participants might have been disturbed by the statements.
According to the Austrian courts, freedom of expression is not limitless, and is subject to duties and responsibilities, such as refraining from making statements which hurt others without reason and therefore do not contribute to a debate of public interest. A balancing exercise between the rights under Article 9 ECHR (religious freedom) on the one hand and those under Article 10 ECHR on the other needs to be carried out.

The Austrian Supreme Court also sided with the lower courts, holding that the aim of the interference with the applicant' freedom of expression had been to protect religious peace and the religious feelings of others and was therefore legitimate. The court concluded that the applicant:
had not aimed to contribute to a serious debate about Islam or the phenomenon of child marriage, but merely to defame Muhammad by accusing him of a specific sexual preference, based on the assumption that he had had sexual intercourse with a prepubescent child, in order to show that he was not a worthy subject of worship.
Having exhausted all internal remedies, the applicant decided to bring her case before the ECtHR, claiming that her conviction under Austrian law had violated her Article 10 ECHR freedom of expression by wrongfully considering her statements are value judgments. Furthermore, she submitted that Austrian courts had overlooked to consider that religious groups have to be regarded as public institutions and therefore have to tolerate severe attacks, including those based on untrue facts, insofar as said attacks do not incite to violence.

The ECtHR analysis

The ECtHR admitted that the applicant's criminal conviction had interfered with her freedom of expression. However, any such interference would not violate Article 10 ECHR if it is
  • prescribed by law [which was the case here]
  • pursues one or more of the legitimate aims referred to in Article 10(2) ECHR [in this case, the aim would be to protect religious peace], and
  • is “necessary in a democratic society” in order to achieve the aim or aims in question.
"Necessary in a democratic society"

With particular regard to the latter, the Court highlighted how, on the one hand, those who choose to exercise the freedom to manifest their religion under Article 9 ECHR cannot expect to be exempt from criticism; on the other hand, freedom of expression does not extend to gratuitously offensive and profane remarks addressed at objects of veneration [readers might recall that the ECtHR made these very remarks in the recent decision in Sekmadienis Ltd v Lithuania, discussed here]:
Where such expressions go beyond the limits of a critical denial of other people’s religious beliefs and are likely to incite religious intolerance, for example in the event of an improper or even abusive attack on an object of religious veneration, a State may legitimately consider them to be incompatible with respect for the freedom of thought, conscience and religion and take proportionate restrictive measures . . . In addition, expressions that seek to spread, incite or justify hatred based on intolerance, including religious intolerance, do not enjoy the protection afforded by Article 10 of the Convention. 
The discretion of individual contracting parties

All this said, individual states enjoy a wide margin of appreciation when regulating freedom of expression in relation to matters liable to offend personal convictions within the sphere of morals or religion. In any case, they also have a positive obligation under Article 9 ECHR to ensure the peaceful co‑existence and mutual tolerance of all religions and those not belonging to a religious group.

Statements of fact and value judgments

The ECtHR then recalled that a distinction should be made between statements of fact and value judgments. As regards the latter, 
the proportionality of an interference may depend on whether there exists a sufficient factual basis for the impugned statement, since even a value judgment without any factual basis to support it may be excessive.

In light of all these principles, the ECtHR concluded that, although Austria would enjoy a wide margin of appreciation, the fact that the applicant had made her statements in public in the context of seminars entitled in such a way as to convey the impression of objectivity, meant that the seminars were attended by different groups of people. As such, she should have been aware that "her statements were partly based on untrue facts and apt to arouse (justified) indignation in others."

As such, Austrian courts did not unduly interfered with the applicant's freedom of expression.

Iconic photograph:
commuter reads 
Lady Chatterley's Lover
on the London Tube the day
the book went on sale to the general public

This latest ECthR decision is substantially in line with the approach taken in Sekmadienis Ltd v Lithuania, a case whose national proceedings related to advertisements using Jesus look-alike models and phrases referring to him. The difference between the two cases is that, while in Sekmadienis the expression found to be against public morals was arguably used in a humorous context, here the intent of the applicant was to criticize.

Whether one agrees or not with the analysis of the ECtHR in either case, both might be helpful when it comes to interpreting public policy/morality exclusions in IP law, especially with regard to trade mark applications and copyright enforcement.

With regard to trade marks, the test advanced by the ECThR in E.S. v Austria appears in line with the one that the Appointed Person has suggested for UK trade mark applications. Signs which "justifiably cause outrage or would be the subject of justifiable censure as being likely significantly to undermine current religious, family or social values" (Ghazilian's Application) would not be eligible for registration. This was for instance the case of JESUS for clothing, on grounds that branding that amply words or images with a religious significance can have a "seriously troubling effect on people with religious beliefs".

In the literary and artistic field, issues of alleged immorality or obscenity have been considered on a number of occasions. Under UK copyright law there remains a provision (section 171(3) CDPA) that leaves unaffected affects any rule of law preventing or restricting the enforcement of copyright, on grounds of public interest or otherwise.

Furthermore, in the past courts have considered copyright subject matter under the lens of obscenity. One of the best-known obscenity trials in the recent history of literature is probably the one concerning DH Lawrence's Lady Chatterley's Lover.

After the book was finalized in 1928, it did not have an easy life and was at the centre of obscenity proceedings both in the US and in the UK. As regards the latter, prosecution was brought under the Obscene Publications Act 1959 (R v Penguin Books Ltd [1961] Crim LR 176). Eventually, the jury found in favour of the defendant Penguin Books. This was arguably the beginning of new, more permissive era, for literature. Only a few days ago, a copy of Lady Chatterley’s Lover used by the judge who presided over the trials was sold for £56,250 at Sotheby’s auction house.

[Originally published on The IPKat on 2 November 2018]