Case C‑227/23

Kwantum Nederland BV
and
Kwantum België BV

v

Vitra Collections AG

(Request for a preliminary ruling from the Hoge Raad der Nederlanden)

Judgment of the Court (First Chamber) of 24 October 2024

(Reference for a preliminary ruling – Intellectual and industrial property – Copyright – Directive 2001/29/EC – Articles 2 to 4 – Exclusive rights – Copyright protection for subject matter of applied art the country of origin of which is not a Member State – Berne Convention – Article 2(7) – Criterion of material reciprocity – Division of competences between the European Union and its Member States – Application by the Member States of the criterion of material reciprocity – First paragraph of Article 351 TFEU)

1. Approximation of laws – Copyright and related rights – Directive 2001/29 – Harmonisation of certain aspects of copyright and related rights in the information society – Scope – Work of applied art originating in a third country designed by a national of such a country – Included

   (Art. 52 TEU; European Parliament and Council Directive 2001/29, recitals 6, 9 and 15, Arts 2(a), 3(1), 4(1) and 10(1))

   (see paragraphs 45-47, 51, 59-66, operative part 1)

2. Approximation of laws – Copyright and related rights – Directive 2001/29 – Harmonisation of certain aspects of copyright and related rights in the information society – Scope – Work – Concept – Autonomous and uniform interpretation – Classification of a subject matter as a work – Cumulative conditions

   (European Parliament and Council Directive 2001/29, Arts 2 to 4)

   (see paragraphs 48-50, 56)

3. Approximation of laws – Copyright and related rights – Directive 2001/29 – Harmonisation of certain aspects of copyright and related rights in the information society – Rights of reproduction and distribution – Exceptions and limitations – Scope – Exception or limitation other than those provided for in the Directive – Precluded – Inapplicability of the criterion of material reciprocity laid down in the Berne Convention for the Protection of Literary and Artistic Works – Exclusive competence of the European Union to establish such a limitation

   (Charter of Fundamental Rights of the European Union, Arts 17(2) and 52(1); European Parliament and Council Directive 2001/29, Arts 2(a), 4(1) and 5)

   (see paragraphs 68-79, operative part 2)

4. International agreements – Agreements concluded by the Member States – Agreements concluded before the accession of a Member State to the European Union – Agreement allowing the Member State to adopt a measure contrary to EU law – Obligation of the Member State to refrain from adopting such a measure – Incompatibility resulting from a development in EU law – Not possible for the Member State to rely on that agreement in order to exempt itself from the obligations that have arisen from that development – Inapplicability of the criterion of material reciprocity laid down in the Berne Convention for the Protection of Literary and Artistic Works

   (Art. 351, first para., TFEU)

   (see paragraphs 83-91, operative part 3)

Résumé

Hearing a request for a preliminary ruling from the Hoge Raad der Nederlanden (Supreme Court of the Netherlands), the Court of Justice rules on the applicability of the criterion of material reciprocity laid down in the Berne Convention, which makes copyright protection of certain works conditional upon the existence of similar protection in the country of origin. ( 1 ) According to the Court, EU law precludes the application of that criterion, by the Member States, in respect of a work of applied art originating in a third country and the author of which is a national of such a country.

Vitra Collections AG (‘Vitra’), a company governed by Swiss law, is a manufacturer and holder of the intellectual property rights over the Dining Sidechair Wood chair (‘the DSW chair’). That chair was designed by two nationals of the United States of America as part of a furniture design competition organised by the Museum of Modern Art in New York (United States) and exhibited in that museum from 1950.

Kwantum Nederland BV and Kwantum België BV (together, ‘Kwantum’) operate, in the Netherlands and in Belgium, a chain of shops selling interior design articles and market a chair called the ‘Paris chair’. According to Vitra, that marketing infringes its copyright in the DSW chair.

Hearing an action brought by Vitra, the rechtbank Den Haag (District Court, The Hague, Netherlands) held that Kwantum did not infringe Vitra’s copyright in the Netherlands or in Belgium. That judgment was set aside by the Gerechtshof Den Haag (Court of Appeal, The Hague, Netherlands), according to which Kwantum infringed Vitra’s copyright in the DSW chair in those two countries.

Hearing an appeal, the referring court asks the Court, first of all, whether the situation at issue in the main proceedings falls within the material scope of EU law. Next, it seeks to ascertain, in essence, whether Article 2(a) and Article 4(1) of Directive 2001/29, ( 2 ) read in the light of the Charter, ( 3 ) and Article 351 TFEU, preclude the national court from applying the criterion of material reciprocity, as laid down in the second sentence of Article 2(7) of the Berne Convention ( 4 ) (‘the criterion of material reciprocity’), in the dispute in the main proceedings.

Findings of the Court

In the first place, the Court notes that the scope of Directive 2001/29 is defined not in accordance with the criterion of the country of origin of the work or of the nationality of its author, but by reference to the internal market, which comprises the territories of the Member States. Thus, a situation in which a company claims copyright protection for a subject matter of applied art marketed in a Member State, such as the DSW chair, provided that that subject matter may be classified as a ‘work’ within the meaning of that directive, falls within the material scope of EU law.

In the second place, first, the Court states that Article 2(a) and Article 4(1) of Directive 2001/29 apply to works of applied art originating in third countries or the authors of which are nationals of such countries. According to those provisions, Member States are to provide authors with exclusive rights to authorise or prohibit the reproduction and distribution to the public of their works. However, that directive does not lay down any condition relating to the country of origin of the work in question or to the nationality of the author of that work. In that regard, the Court finds that, in defining the scope of Directive 2001/29 by means of a territorial criterion, the EU legislature necessarily took into account all the works for which protection is sought in the territory of the European Union, irrespective of the country of origin of those works or the nationality of their author. It adds that that interpretation is consistent with the objectives pursued by Directive 2001/29, ( 5 ) which consists in the harmonisation of copyright in the internal market.

Second, the Court examines whether those provisions preclude the application, in national law, of the criterion of material reciprocity. It observes that, under that criterion, works of applied art originating in third countries might be treated differently in different Member States. Moreover, since intellectual property rights are protected under Article 17(2) of the Charter, any limitation on the exercise of those rights must, in accordance with Article 52(1) of the Charter, be provided for by law. The application of that criterion by a Member State may constitute such a limitation which must be provided for by law. In that regard, the Court recalls that, where a rule of EU law harmonises copyright protection, it is for the EU legislature alone, and not the national legislatures, to determine whether the grant in the European Union of that copyright should be limited in respect of works originating in a third country or the author of which is a national of such a country. ( 6 ) However, the EU legislature has not included in Directive 2001/29 or in any other provision of EU law a limitation of the exclusive rights granted to authors by Article 2(a) and Article 4(1) of that directive in the form of a criterion of material reciprocity.

The Court concludes on that basis that those articles of Directive 2001/29, read in conjunction with Article 17(2) and Article 52(1) of the Charter, preclude Member States from applying, in national law, the criterion of material reciprocity in respect of a work of applied art the country of origin of which is a third country and the author of which is a national of such a country. It is for the EU legislature alone to provide, by means of EU legislation, whether the grant in the European Union of the rights laid down in those articles of Directive 2001/29 should be limited.

Lastly, the Court holds that the first paragraph of Article 351 TFEU does not permit a Member State to apply, by way of derogation from the provisions of EU law, the criterion of material reciprocity in respect of a work the country of origin of which is the United States of America. That article states that application of the Treaty does not affect the commitment of the Member State concerned to respect the rights of third countries under an agreement preceding its accession to the European Union. In that regard, the Court holds that the Member States may no longer avail themselves of the option of applying that criterion, even though the Berne Convention entered into force before 1 January 1958. When an international agreement that has been concluded by a Member State prior to its accession allows but does not require it to adopt a measure which appears to be contrary to EU law, that State must refrain from adopting it. The Court adds that the Berne Convention does not prohibit the parties to that convention from granting copyright protection to a work of applied art which, in the country of origin of that work, is protected only under a special regime as a design. The parties to that convention have discretion in that respect.

( 1 ) Convention for the Protection of Literary and Artistic Works, signed in Berne on 9 September 1886 (Paris Act of 24 July 1971), as amended on 28 September 1979 (‘the Berne Convention’).

( 2 ) Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10).

( 3 ) See Article 17(2) and Article 52(1) of the Charter of Fundamental Rights of the European Union (‘the Charter’).

( 4 ) The second sentence of Article 2(7) of the Berne Convention provides that ‘ … it shall be a matter for legislation in the countries of the Union [established by this Convention] to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union [established by this Convention] only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.’

( 5 ) Recitals 6, 9 and 15 of Directive 2001/29.

( 6 ) See, to that effect, judgment of 8 September 2020, Recorded Artists Actors Performers (C‑265/19, EU:C:2020:677, paragraph 88).