Copyright - European originality
In Cofemel – Sociedade de Vestuario SA v G-Star Raw CV, Case C-683/17 (2019) the EU introduced a 2 stage test.
Stage 1 - is the subject matter of protectable types? i.e. is it of a type that leaves scope for the exercise of free and creative choices in its creation?
Stage 2 - is the subject matter protected? i.e. did its creation involve the exercise of free and creative choices and does it bear the 'personal mark' of its creator?
Do we have something that can be theoretically copyrightable. The idea is that something can be subject matter of protection if it leaves scope for the exercise of free and creative choice to the author. It must be a work were the creator could choose what to do. For instance, selection of words, sounds pictures. However, 1 word is not copyrightable subject matter, the author cannot choose.
Once these stages are passed you have an original creation. This means that you can sue other people.
the first of these stages establishes whether the subject matter is of a type capable of supporting copyright
the second establishes whether it and the manner of its creation are such as to trigger its protection by copyright.
Few subject matter will fail to satisfy this test so as to be unprotectable by copyright. One obvious example of a subject matter that will fail to satisfy it is a single idea or collection of ideas, including ideas for an authorial work, such as the plot of a novel or the theme for a television series. The reason is that unless and until they are expressed, ideas are not bounded expressive objects (works). It is therefore only through acts of authorial expression that such subject matter can be protected by copyright. This offers one explanation for the principle of Article 9(2) TRIPS Agreement that ‘[c]opyright protection shall extend to expressions and not to ideas … as such’ (see Case C–310/17 Levola Hengelo BV v Smilde Foods BV EU:C:2018:899 (Levola Hengelo)).
Although a a process of partial harmonization of copyright law has been inaugurated by the legislature in Europe, the Court of Justice has begun a more thoroughgoing harmonization of ‘originality’.57
While the Software and Database Directives require that a computer program or database can be protected by copyright only where the program or database is original in the sense that it is the ‘author’s own intellectual creation’58 (and a similar test was also introduced for photographs in the Term Directive),59 the Court of Justice has held that this standard is applicable to all works of authorship.
The key case was Infopaq.60
In this case, a Danish court had to decide whether an electronic news-clippings service infringed copyright when it reproduced 11-word snippets comprising the eight words either side of a search term.
The Court of Justice was asked whether this comprised a ‘part’ of an article protected by copyright. The Court took the view that to decide whether 11 words were a ‘part’ required an investigation of the conditions of protection for a work. Reviewing the Berne Convention and the Community acquis on copyright (the Software, Database, and Term Directives), the Court of Justice concluded that there was a generalized standard of originality—namely, the ‘author’s own intellectual creation’.61
As a matter of strict precedent, the Infopaq case might have been regarded as limited in its application to matters of infringement rather than subsistence,62 but it soon came to be applied to issues of subsistence. In Bezpečnostní softwarová asociace (or BSA)63 (as we noted in Chapter 3), the Court indicated that a graphic user interface would be protected under the Information Society Directive were it ‘its author’s own intellectual creation’, while in Football Association Premier League,64 the Court stated that football matches were not protected, because they lacked the relevant originality. There thus seems little doubt that, going forward, as far as ‘authorial works’ are concerned, it is necessary to apply the European standard of originality.65
The adoption of a generalized ‘originality’ test has a number of obvious advantages.
For one, it makes the European copyright regime more coherent than it would otherwise have been—both horizontally (treating different works according to a single standard) and vertically (in creating a coherent relationship between standards of infringement and subsistence).
the adoption of a single standard removes some of the difficulties that arise from the failure to harmonize the work concept: for example, if the standard of originality applicable to databases is the same as that applicable to ‘database-like’ entities (in UK law, ‘tables and compilations other than databases’), legal skirmishes over the precise meaning of a database are less likely to be warranted.66
Nevertheless, whatever its benefits, commentators have questioned whether deepening harmonization in this way is legitimate from a constitutional perspective and have highlighted the considerable uncertainties to which such judicial activism gives rise.
In addition, the choice of a single standard for all works removes flexibility that a number of member states employed to modulate the criterion in relation to different types of work (the most notorious example of which was the German level of creativity doctrine—Schöpfungshöhe—according to which a higher threshold of originality was required for works of applied art).
any works that were protected prior to the relevant dates under UK law according to the traditional standard should remain protected, because all of the directives indicate that their operation should be without prejudice to ‘acquired rights’.72 For this reason, the ‘traditional’ British jurisprudence will continue to be important at least in determining the subsistence of older works for many decades to come.
Personality and creative choices
What, then, does the requirement that a work be its ‘author’s own intellectual creation’ involve?
The legislation offers very little guidance.
The clear suggestion is that the test to be employed is something similar to that operative in some civil law droit d’auteur regimes, in which reference has frequently been made to the need for a work to bear the ‘imprint’ of the personality of its author.74
The Court of Justice has thus felt it necessary to give further content to the concept, referring to the need for the exercise of ‘creative choices’. Thus, in Infopaq itself, the Court explained that:
[W]ords … considered in isolation, are not as such an intellectual creation of the author who employs them. It is only through the choice, sequence and combination of those words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation.75
In the Painer case,76 the Court considered a portrait photograph of a young girl and indicated that this would be an ‘intellectual creation’ if the photographer had been able to stamp the work with their ‘personal touch’.
in Football Dataco,77 in which the Court was asked to advise on whether the creation of football fixture lists was an act of ‘intellectual creation’, the Court observed:
As regards the setting up of a database, that criterion of originality is satisfied when, through the selection or arrangement of the data which it contains, its author expresses his creative ability in an original manner by making free and creative choices … and thus stamps his ‘personal touch’.78
Non-functional
The Court has also sought to indicate when originality will not be present by indicating that where expression is ‘dictated by function’, then it is not original.
In BSA,79 the Court considered when a ‘graphic user interface’ would fall to be protected as an ordinary work (as opposed to a computer program).
The Court indicated that there was no originality where ‘the expression of [the] components is dictated by their technical function’, explaining that ‘the criterion of originality is not met since the different methods of implementing an idea are so limited that the idea and the expression become indissociable’.
In Football Association Premier League,80 the Court used equivalent reasoning to explain why sporting events cannot be regarded as intellectual creations:
‘[F]ootball matches, which are subject to rules of the game, leaving no room for creative freedom for the purposes of copyright.’ While no doubt, to anyone who plays or watches football, the claim that there is no ‘creative freedom’ because of the constraints provided by the ‘rules of the game’ may seem misguided (so that the absence of copyright in football matches may need to be explained in some other way), the Court is making the important point that where creative choice is highly constrained by rules or functional considerations, the resulting ‘work’ is unlikely to be original.
SI, Brompton Bicycle Ltd v Chedech/Get2Get (C-833/18), [2020] E.C.D.R. 10 (2020)
Facts
Decision [25]-[34]
... a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices.
The UK company ‘Brompton’ markets folding bicycles featuring a distinctive shape. This used to be protected by a patent (now expired)
Folding mechanism used to be protected by a patent.
In Belgium, the Defendant sold a bike almost identical to Brompton’s and argued that the shape of the bike was functional
The Belgian Court asked the ECJ to clarify wheter the Information Society Directive (2001/29) excludes functional shapes.
In that regard, it should be noted that the criterion of originality cannot be met by the components of a subject matter which are differentiated only by their technical function… Where the expression of those components is dictated by their technical function, the different methods of implementing an idea are so limited that the idea and the expression become indissociable.
In the present case, it is true that the shape of the Brompton bicycle appears necessary to obtain a certain technical result, namely that the bicycle may be folded into three positions, one of which allows it to be kept balanced on the ground. However … in order to establish whether the product concerned falls within the scope of copyright protection, it is for the referring court to determine whether, through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality.
Aside from ideas, only three categories of subject matter have been held by the Court of Justice to be incapable of satisfying the requirement for an authorial work: individual words and other building blocks of expression, sporting events, and tastes.
According to its decision in Levola Hengelo, for example, the subjective nature of tastes deprives them, in our current state of technological development at least, of the precisely and objectively identifiable expressive form required of a work protectable by copyright.
This followed the Court’s decision in Joined Cases C–403/08 Football Association Premier League Ltd v QC Leisure and 429/08 Karen Murphy v Media Protection Services Ltd [2011] ECR I-9083 (FAPL) that football games and other sporting events are sufficiently constrained by rules as to leave ‘no room for creative freedom for the purposes of copyright’ ([98]), and therefore fail the CJEU’s test for the existence of an authorial work at its first stage.
So too the Court held in Infopaq that words ‘are not as such an intellectual creation of the author who employs them’, since ‘[i]t is only through the choice, sequence and combination of … words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation’ ([45]).
Thus, and like tastes and sporting events, individual words are not protectable by copyright.
By contrast are short literary phrases, and by implication selections and combinations of other expressive elements such as sounds and pixels of colour, which have been recognized as capable of expressing an author’s own intellectual creation so as to be authorial works protectable by copyright in contrast to the individual elements comprising them.
Other types of subject matter sometimes said to lack the authorial nature of a copyright work are TV formats and works of applied art; the former owing to the opacity of their expressive boundaries and the latter to their utilitarian or functional purpose.
While there exists support for the protection of each in the domestic jurisprudence of EU Member States (see e.g. Case 18633/17 RTI Televisive Italiane Spa v Ruvido Produzioni Srl (Corte Suprema di Cassazione (Italian Supreme Court) regarding TV formats and Case 1644/2017 Jimena (Tribunal Supremo de España (Spanish Supreme Court) ES:TS:2017:1644 regarding architectural works), their status under the Information Society Directive is yet to be determined by the Court of Justice; albeit a preliminary reference with respect to works of applied art is currently pending in Case C–638/17 Cofemel v G-Star Raw CV.
In conclusion, the CJEU has, in Infopaq, FAPL, and Levola Hengelo, identified certain types of subject matter that are not protectable by copyright.
Nonetheless, the premise of the Court’s decision in each case and of its subsistence jurisprudence overall is an expansive definition of ‘authorial work’ as potentially including any selection and arrangement of any words, sounds, or other expressive elements that leave scope for the exercise of free and creative choices.
It was with reference to this definition that the Court of Justice in Case C–145/10 Painer v Standard VerlagsGmbH [2011] ECR I-12533 (Painer) confirmed that simplicity is no bar to protection by copyright.
That case involved a preliminary referral from the Handelsgericht Wien (Commercial Court of Vienna) in domestic proceedings involving the photographic portrait of Natascha Kampusch
One of the issues referred to the Court was whether such a portrait was too simple to support copyright.
According to the Court it was not, since the creator of a photographic portrait ‘can make free and creative choices in several ways and at various points in its production’ so as to ‘stamp the work created with his “personal touch”’ ([92]).
Given this, and consistent with the definition of authorial works outlined earlier, photographic portraits were held to be capable of protection by copyright. In addition, the Court of Justice confirmed in Painer that if a photograph is an authorial work protected by copyright, the simplicity or realism of its subject matter will not in any way limit the scope or depth of its resulting copyright protection.
The reason was its view of copyright as protecting all authorial works equally, consistent with the general EU legal principle of equal treatment. According to that principle, which is enshrined also in Article 20 CFR, comparable situations must not be treated differently unless the difference is objectively justified. While not referred to expressly by the Court in Painer, this principle explains the Court’s rejection of the argument presented to it in that case that the Information Society Directive, in light of the constitutional protection afforded to IP by Article 1 of Protocol 1 ECHR and Article 17(2) CFR, should be interpreted to mean that portrait photographs in particular ‘are afforded “weaker” copyright protection or no copyright protection at all against adaptation because, in view of their “realistic image”, the degree of formative freedom is too minor’ ([43]).
Since Painer it has been invoked expressly to similar effect in other cases. An example is Case C–463/12 Copydan Båndkopi v Nokia Danmark A/S EU:C:2015:144, where it was held to support an interpretation of the Information Society Directive as requiring that different technological components be treated comparably for the purpose of domestic private copying levies.
The Court has talked about ‘creative choice’ and it is clear that decisions that are limited by functional constraints or ‘rules’ are not to be regarded as ‘creative choices’, in part because there is no—or very little—choice.
choices can be creative even though they are not ‘artistic’: the scope of copyright in Europe certainly includes such matters as computer programs, technical manuals, and so on, which could hardly be so if the choices required by copyright were to be ‘artistic’ in nature.
The Court has referred instead to choices that focus on the form of the work: the choice, combination, and ordering of words, for example. One academic has gone further and argued that:
[A] creative choice is one made by the author that is not dictated by the function of the work, the method or technique used, or by applicable standards or relevant ‘good practice’. Conversely, purely arbitrary or insignificant selection is insufficient. A conscious, human choice must have been made, even though it may be irrational.82