In its landmark Kwantum/Vitra decision, the CJEU ruled that EU Member States are not allowed to unilaterally apply the material reciprocity test of Article 2(7) Berne Convention (‘BC’). The decision (24 October 2024, C-227/23) has significant implications for international copyright enforcement in the EU.

Industrial designs and works of applied art that have a non-EU country of origin or a non-EU national as author (or both) are considered copyright protected in the EU, if they meet the standard test of qualifying as the author’s own intellectual creation. This applies regardless of whether such non-EU works are protected by copyright in their country of origin.

Facts

The decision stems from questions referred by the Dutch Supreme Court to the CJEU (ECLI:NL:HR:2023:508). The facts of the underlying case are as follows: 

Claimant Vitra is a Swiss manufacturer that holds the rights that vest in the (originally American) ‘DSW’ chair. The DSW chair was designed by the renowned US-designers Charles and Ray Eames. Defendant Kwantum is a chain of low-cost furniture stores. 

Vitra argued that Kwantum infringed its copyright with the marketing of Kwantum’s ‘Paris’ chair. Kwantum argued that Vitra could not invoke copyright in the Netherlands, because the DSW chair would not be protected by copyright under US law. 

Vitra DSW chair (left) and Kwantum Paris chair (right) (source: ECLI:NL:GHDHA:2020:1218).

Dutch courts

In the lower Dutch courts, an extensive discussion took place about the interpretation of the material reciprocity test of Article 2(7) BC. 

The main question was whether, under US law, the actual DSW chair would need to be copyright protected (‘concrete test’), or if it is sufficient that chairs in general could, as works of applied art, obtain copyright protection (‘abstract test’). However, to the surprise of both parties, the Dutch Supreme Court questioned altogether if EU law allowed Member States to apply the material reciprocity test of Article 2(7) BC, in absence of an EU regulation to that effect. 

Consequently, the Supreme Court referred questions to the CJEU.

CJEU Decision

In line with the Opinion of Advocate-General Szpunar, the CJEU’s answer was simple. Member States are not allowed to unilaterally apply the material reciprocity test of Article 2(7) BC. It would be for the EU-legislator to implement the material reciprocity test, but currently there is no such implementation in the EU copyright acquis. Consequently, works that originate from outside the EU or that have non-EU authors, are protected just like EU-works, regardless of whether such non-EU works are protected by copyright in their ‘home country’. 

The CJEU emphasised that the InfoSoc Directive (2001/29/EC) does not include a rule of material reciprocity. Allowing individual Member States to individually apply Article 2(7) BC would contradict the Directive’s aim of reducing fragmentation of the internal market, and its aim of high levels of protection.

Additionally, the CJEU noted that limitations of intellectual property rights, such as limitations to copyright, must be provided for by law (based on Article 17(2) and Article 52(1) of the EU Charter). The material reciprocity test of Article 2(7) BC has not been provided for by law, and therefore does not apply. 

Comments and a look ahead

As the dust settles from this decision, it is worth looking at its consequences, the broader picture and future implications. 

The consequence of the decision is remarkably simple. As it stands, no material reciprocity is to be applied by Member States regarding non-EU works and authors. However, while the CJEU’s argumentation might sound straight forward, it does raise several questions. A key question is whether the EU legislator, in adopting the InfoSoc Directive in 2001, intentionally chose not to implement the material reciprocity test of Article 2(7) BC. While the InfoSoc Directive aims to harmonise ‘certain aspects of copyright’, the concept of a ‘work’, or international application thereof, was not explicitly harmonised. The CJEU later harmonised this concept through its interpretation of the InfoSoc Directive.   

Furthermore, if the CJEU is in essence asked if a point of law should be fragmented or harmonised, arguably, it might be more inclined to choose the latter. But, if preventing fragmentation and internal market issues was the CJEU’s main goal, it could alternatively have chosen to interpret Article 2(7) BC as mandating material reciprocity (unless actively disapplied by legislation). 

It is clear however that this decision leaves open the possibility for the EU legislator to (expressly) implement the material reciprocity test of Article 2(7) BC. Whether the subject carries enough political weight to make this happen remains to be seen, although it is not inconceivable in view of current worldwide protectionist tendencies. Additionally, some thought would need to be given to the exact form of a possible implementation, in view of the EU itself not being a party to the Berne Convention.

Meanwhile, until such implementation takes place (if ever), the material reciprocity test of Article 2(7) BC is not to be applied by Member States or national courts. This is to the benefit of non-EU works and non-EU authors. Their works shall be treated as if they originated from the EU in this respect. Consequently, the Kwantum/Vitra decision may also lead to an increase in (successful) copyright infringement cases in the EU, as it will be easier for authors of non-EU works to establish and enforce their copyright.