Judgment of 20 Oct 2016, C-169/15 (Montis Design)

Montis designs and manufactures furniture. In 1983 Mr Gerard van den Berg, a former director and majority shareholder of Montis, designed the ‘Charly’ armchair and the ‘Chaplin’ chair. Those chairs differ in size, but are similar in form. On 19 April 1988, an international model registration was effected for the ‘Charly’ armchair and the ‘Chaplin’ chair, Montis being referred to as the proprietor of the rights relating to the models and Mr van den Berg as the author. The registration was recorded on 12 July 1988. In 1990 Mr van den Berg assigned his copyright in those chairs to Montis.
At the end of the period of registration of those models, Montis did not submit the maintenance declaration referred to in Article 21(3) of the Uniform Law. Consequently, both the rights relating to the models and the copyright that Montis held in relation to the chairs were extinguished on 18 April 1993.

In 2008 Montis brought, before the rechtbank ’s-Hertogenbosch (Court of ’s-Hertogenbosch, Netherlands), legal proceedings against Goossens, on the ground that the latter company had put on sale, in the furniture shops operated by it, the ‘Beat’ chair model which infringed its copyright in the ‘Charly’ and ‘Chaplin’ chairs. In its defence, Goossens contended that, in the absence of a maintenance declaration, that copyright had been extinguished. In response to that argument, Montis claimed, first, that its copyright should be held to have been restored by virtue of the repeal, on 1 December 2003, of Article 21(3) of the Uniform Law, since the effect of that repeal was, in its opinion, retroactive. In the alternative, Montis claimed that its copyright should be held to have been restored following the adoption of Directive 93/98.

The Benelux Gerechtshof (Benelux Court of Justice) decided to stay the proceedings and to refer to the Court the questions for a preliminary ruling. By its first and second questions, which were examined together, the referring court seeks in essence to ascertain, first, whether Article 10(2) of Directive 93/98, read together with Article 13(1) of that directive, must be interpreted as meaning that the terms of protection laid down by that directive are applicable to copyright which was initially protected by the national legislation but which was extinguished prior to 1 July 1995. The referring court, secondly, seeks, in essence, to ascertain whether Directive 93/98 precludes national legislation which initially granted copyright protection to a work, as in the main proceedings, but which, thereafter, caused that copyright to be definitively extinguished because of non-compliance with a formal requirement.

The Court decided as follows:

Article 10(2) of Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights, read together with Article 13(1) of that directive, must be interpreted as meaning that the terms of protection laid down by that directive do not apply to copyright which was initially protected by national legislation but which was extinguished prior to 1 July 1995.

Directive 93/98 must be interpreted as not precluding national legislation which, initially, had granted, as in the main proceedings, copyright protection to a work, but which, subsequently, caused that copyright to be definitively extinguished, before 1 July 1995, by reason of non-compliance with a formal requirement.

Judgment of 20 Jan 2009, C-240/07 (Sony)

Falcon distributes two phonograms containing recordings of performances by the artist Bob Dylan. The first CD is entitled ‘Bob Dylan – Blowin’ in the Wind’, the second ‘Bob Dylan – Gates of Eden’. Those phonograms include songs which feature on the albums ‘Bob Dylan – Bringing It All Back Home’, ‘The Times They Are A‑Changin’’ and ‘Highway 61 Revisited’. Those albums were released in the USA before 1 January 1966.

Sony, the applicant in the main proceedings, is the German subsidiary of the Japanese multinational of the same name. Sony applied to the competent Landgericht (Regional Court) for an injunction prohibiting Falcon from copying and distributing the phonograms ‘Bob Dylan – Blowin’ in the Wind’ and ‘Bob Dylan – Gates of Eden’, or from having others copy and distribute them on its behalf. Further, Sony asked the court to make an order for discovery against Falcon and to determine Falcon’s liability for damages. Falcon submitted that no phonogram producer owns the rights in Germany to Bob Dylan albums recorded prior to 1 January 1966.

Bundesgerichtshof (Federal Court of Justice) decided to stay proceedings and to refer questions to the Court for a preliminary ruling:

By its first question, the national court asks whether the term of protection provided for under Article 10(2) of Directive 2006/116 should be applied to subject matter that has never been protected in the Member State in which that protection is sought.

By the second question, the national court asks whether national provisions governing the protection of holders of copyright related rights who are not Community nationals constitute national provisions within the meaning of Article 10(2) of Directive 2006/116.

The Court decided as follows:

1. The term of protection laid down by Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights is also applicable, pursuant to Article 10(2) thereof, where the subject‑matter at issue has at no time been protected in the Member State in which the protection is sought.

2. Article 10(2) of Directive 2006/116 is to be interpreted as meaning that the terms of protection provided for by that directive apply in a situation where the work or subject‑matter at issue was, on 1 July 1995, protected as such in at least one Member State under that Member State’s national legislation on copyright and related rights and where the holder of such rights in respect of that work or subject‑matter, who is a national of a non‑Member State, benefited, at that date, from the protection provided for by those national provisions.

Judgment of 29 Jun 1999, C-60/98 (Butterfly Music)

Butterfly, which is engaged in the production and distribution of music media, produced in November 1992, with the agreement of CEMED, a phonogram producer which held the rights over the original recordings, and with authorization from the Società Italiana Autori e Editori (Italian Society of Authors andPublishers; ‘SIAE‘), a compact disc entitled ‘Briciole di Baci‘ (‘the CD) containing 16 songs interpreted by the singer Mina, which had been recorded in theperiod from 1958 to 1962.

Those recordings entered the public domain at the end of 1992, but subsequently,in accordance with the Directive, the Decree-Laws referred to in paragraph 5above and Law No 52/96 increased the term of protection for rights of producersof phonograms and of performers from 30 to 50 years.

TheTribunale Civile e Penale, Milan, referred to theCourt for a preliminary ruling under Article 234 EC  a question on the interpretation of Article 10 of Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights.

By its question, the national court asks the Court whether Article 10(3) of the Directive precludes a provision of national law such as the provision which, in Law No 52/96, as amended, lays down a limited period in which soundrecording media may be distributed by persons who, by reason of the expiry of the rights relating to those media under the previous legislation, had been able to reproduce and market them before that Law entered into force.

The Court ruled as follows:

1. As a matter of principle, amending legislation applies, unless otherwise provided, to the future consequences of situations which arose under the previous legislation. Although the principle of the protection of legitimate expectations is one of the fundamental principles of the Community, it cannot be extended to the point of generally preventing new rules from applying to the future consequences of situations which arose under the earlier rules.

2. It is clear from Article 10(2) and (3), read together, of Directive 93/98 harmonising the term of protection of copyright and certain related rights that the Directive provides for the possibility that copyright and related rights which had expired under the applicable legislation before the date of its implementation could be revived, without prejudice to acts of exploitation performed before that date, while leaving it to the Member States to adopt measures to protect acquired rights of third parties. Such measures must be regarded as measures which the Member States are under an obligation to adopt, but the details of which are left to the discretion of the Member States, provided, however, that those details do not have the overall effect of preventing the application of the new terms of protection on the date laid down by the Directive.

Accordingly, Article 10(3) of Directive 93/98 does not preclude a provision of national law which lays down a limited period in which sound-recording media may be distributed by persons who, by reason of the expiry of the rights relating to those media under previous legislation, had been able to reproduce and market them before the subsequent legislation entered into force. Such legislation satisfies the obligation imposed on the Member States to adopt measures to protect acquired rights of third parties and, by thus limiting that protection with regard to the distribution of sound-recording media, meets the need to circumscribe a provision of that kind, which must necessarily be transitional in order not to prevent the application of the new terms of protection of copyright and related rights on the date laid down by the Directive, that being the Directive’s principal objective.

Judgment of 9 Feb 2012, C-277/10 (Luksan – related also to communication to the public

Judgment of 1 Dec 2011, C-145/10 (Painer) – also related to exceptions