Walking the Tightrope between Copyright and Technical Creations

The Bundesgerichtshof has recently issued a decision named "Seilzirkus" (I ZR 53/10) on the eligibility of utility items for copyright/author's right.

This question usually pops up in the field of furniture - in particular "design classics" by the masters of the Bauhaus era where the 70-years post-mortem term has not yet expired. However, author's rights are recently claimed quite often in more profane cases such as the climbing scaffold for children made up of ropes and clips and a central pillar shown on the right hand side.

Top view of the original climbing scaffold

It is well established case-law that features which are “exclusively due to technical reasons” (allein technisch bedingt) may not be used to establish copyright. The generally accepted reason for this is the desire of the legislator to keep technical subject-matter free to be used once the term of the technical protective rights (patents, utility models) has expired. Evidence for this “desire of the legislator” is found in Art. 8 (1) of the Community Design Regulation and Art. 7 (1) e) ii) of the Community Trademkark Regulation and in their counterparts in the national laws.

However, it is fairly difficult to distinguish the purely technical features from those which are (in addition to their technical implications) “artistically designed". Imagine a chair with four rectangular legs. The provision of the legs has obvious technical reasons as well as the rectangular profile, which facilitates the manufacturing. But are these reasons exclusive reasons or are there other reasons (e.g. aesthetical) to use four legs rather than three and to use a rectangular profile rather than a round one.

Allegedly infringing climbing scaffold

The Bundesgerichtshof now clarifies that

 a creation does not enjoy copyright protection if it consists of features which are freely exchangeable or selectable only and if no artistic achievement is recognizable. Exploiting the usual design options in craftsmanship and construction or exchanging a technical feature with another does not lead to an original (eigenschöpferisch) work of art.

Finally, the Bundesgerichtshof shifts the burden of clearly and precisely pointing out in what artistic aspects the creation extends beyond the shape as determined by the function to the holder of the copyright (Headnote II). The latter point will be of high practical relevance because it forecloses the right owner from hiding behind a flowery adulation of the work of art but rather forces him to point to the essential features from the onset.

Maximum Protection Conferred by EU Directive on Copyright

While we are used to interpret EU directives in the sense that they define minimum requirements the national laws have to fulfil, an exception to this rule may be found in the ECJ case (Cassina ./. Peek & Cloppenburg ), which was initiated by the BGH in the case I ZR 247/03, known as “Le-Corbusier-Möbel II”.

The defendant, a well-known brand of fashion shops in Germany, had legally bought armchairs designed by Le Corbusier in Italy. At that time, the Italian Copyright excluded furniture from protection. The armchairs have been used in Germany in a lounge in front of the changing room and as a decoration in the window of the shop.

One of the questions conferred to the ECJ was whether or not this use was a “distribution to the public” in the sense of Article 4(1) of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.

The ECJ answered in the negative by pointing out that since the directive is intended to implement at Community level the Community’s obligations under the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, the wording of the directive needs to be interpreted in the light thereof. Those Treaties link the concept of distribution exclusively to that of transfer of ownership.

The BGH argues that the german § 17 UrhG implementing the right to distribution to the public of Article 4(1) of Directive 2001/29/EC into german law has to be interpreted in conformity with the directive. This is not very surprising. More surprising is how this conformal interpretation is achieved. The BGH argues that the purpose of the directive is not only to ensure a minimum protection but rather to harmonize the application of copyright in the information society so as to prevent a refragmentation of the internal market due to significant differences in protection (cf. e.g. recital 6 of the directive). As a consequence, the interpretation has to respect this purpose.

The latter object, however, may only be achieved if the directive also defines a maximum protection conferred in the member states.

The interesting point for me is that the same argument can not only be applied to the right to distribution to the public but generally to any right conferred by the directive 2001/29/EC. It would be interesting to systematically check the consequences of this reasoning onto the national application of copyright law rather than waiting for the pertinent decisions of the BGH.