At the end of last month the CJEU heard an interesting case which has been little reported to date. The case is C-169/15 Montis Design and was referred to the CJEU by the Benelux Gerechtshof.
Like all good referrals, the background to the case is complicated, as is the law which the CJEU has been asked to consider. I am grateful to the EU Law Radar website for their analysis of the case.
There are a number of 'pivot' points in the case, not least of which is the relationship between copyright and design right. For that reason, this article is rather more about the world of designs rights than is normally the case with the 1709 blog. But there is a stripe of copyright running through the centre.
The Montis Design case concerns a dining chair named Chaplin which was created by the Dutch designer Gerard van den Berg some time in the late 1980s, and the design was registered using the system set up by the Uniform Benelux Law on Designs and Models. Mr van den Berg then sold his rights to a Dutch furniture manufacturer, Montis Design, who made chairs to the Van den Berg design. However they failed to renew the registration when it became due in 1993, thus apparently leaving it open to other companies to manufacture chairs to the van den Berg design, which duly happened.
Montis then sued for infringement and the matter went as far as the Dutch Supreme Court which ruled, somewhat bizarrely, that the formalities set out in the Benelux Law on Designs were contrary to Article 5(2) of the Berne Convention on copyright. However the Supreme Court's finding did not mean that the Montis design right was re-activated. Montis Design returned to the fray in 2013, this time in the Benelux Gerechtshof, using the argument that since Article 17 of the EU Designs Directive 98/71/EC  stated that a registered design "shall also be eligible for protection under the law of copyright", the Chaplin design was being infringed as a matter of copyright law. Article 17 is qualified by saying "The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State". However the Chaplin design had been created and registered before the Designs Directive came into force, and so it was argued, this provision did not have the effect of either reviving the lapsed design right or of retrospectively affording copyright protection to the design, because neither Dutch domestic law nor the Benelux Design Law implemented Article 17 retroactively.
The Gerechtshof examined this argument in the light of the CJEU's earlier decision in Flos. Flos (Jeremy posted a piece on this case here) had involved some similarity in that it concerned the design of a piece of furniture (a lamp) which had apparently entered the public domain (although in the Flos case the design had never been registered) under Italiy's Intellectual Property Code. The Second Chamber of the CJEU in that case had to consider whether the margin of appreciation afforded to member states by the sentence quoted above, would allow a country not provide the element of copyright protection at all. In other words does 'shall be eligible for' mean 'shall be given' or 'may be given'? The CJEU ruled that a member state could not exclude a registered design from also enjoying copyright protection. However being the CJEU, they had to say so in the most convoluted way possible:
1. Article 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.
Despite the Flos ruling the Gerechtshof were still concerned about the retroactive aspect of Montis's argument invoking Article 17 of the Design Directive. For reasons that are not clear from the commentaries, the court felt it was necessary to seek clarification on whether Article 10 of the Copyright Term Directive 93/98/EEC meant that copyright might be revived in this case. This appears to arise because without the Article 17 provision, in some member states copyright will only subsist in a design if it meets some aesthetic criterion. I can find no mention in either of the Montis cases of it being argued that Mr van den Berg's design also met the originality criteria for copyright per se. A further clue to this lies in the wording of the second question of the referral shown below, which speaks about copyright in a work of applied art. From this I have to assume that perhaps Dutch copyright law (like the not-yet-repealed Section 52 of the Copyright Designs and Patents Act 1988) provides such works with a much shorter term than to other artistic works. Perhaps one of our readers can confirm this. The court's train of reasoning may have been: Art 17 only confers copyright protection on designs which have registered, but in the Montis case that registration had lapsed before Art 17 came into force therefore since it was not registered at the time, the design could not enjoy copyright protection.
Anyway the upshot was that in April 2015 the Benelux Gerechtshof referred the following questions to the CJEU:
1. Is the term of protection referred to in Article 10, in conjunction with Article 13(1), of Directive 93/98/EEC (the Term of Protection Directive) […] applicable to rights of copyright that were originally protected by national copyright law but which lapsed before 1 July 1995 on the ground that a formal condition had not been satisfied (in due time), more specifically because a maintenance declaration, as referred to in Article 21(3) of the Uniform Benelux Law on Designs and Models (old version), had not been filed (in due time)?2. If the answer to Question 1 is in the affirmative:
Must the Term of Protection Directive be construed as precluding a rule of national legislation under which the copyright in a work of applied art that lapsed before 1 July 1995 on the ground that a formal condition had not been satisfied is deemed to have lapsed permanently?If the answer to Question 2 is in the affirmative:
3. If, under national legislation, the copyright in question is to be considered to revive or to be revived at a certain time, from what date does such revival occur?
So far the Curia website does not indicate when we might expect to see the CJEU's decision.