European Union (EU) - Copyright in Shoes

Article 2(7) of the Berne Convention provides that for works of applied art a member country can restrict copyright protection for works originating from another country to works originating from countries that provide reciprocal protection for works of applied art originating from it. Article 12 of the European Communities Treaty states:

Within the scope of application of this Treaty, and without prejudice to any special provisions contained therein, any discrimination on grounds of nationality shall be prohibited.

In Tod's Spa v. Heyraud S.A. the Tribunal de Grande Instance in Paris was confronted with a case in which an Italian designer of shoes sued a French competitor for, inter alia, copyright infringement. There is still no harmonization of substantive copyright law throughout the EU. It was argued that since, unlike the position in France, Italian copyright law does not provide protection for utilitarian articles, the reciprocity provisions of the Berne Convention precluded any action in France for infringement of copyright in a work of applied art originating from Italy. The Paris Court referred the question of whether such a result complied with the European Community Treaty to the European Court of Justice (ECJ).

The ECJ first had to address the fact that the Berne Convention defines country of origin for published works as the country of first publication, whereas the European Community Treaty prohibits discrimination on the basis of nationality. The ECJ had no difficulty in concluding that most works were first published in the country of which the author was a national so that operation of the Berne Convention's test could be discriminatory against nationals of another EU-member state.

The ECJ went on, however, to consider matters further in the light of its prior case law that it was possible for objective circumstances to provide a defense that particular rules did not breach Article 12 of the Communities Treaty even though they could have a discriminatory effect. The French government argued that such objective circumstances exist because the purpose of the Berne Convention was to protect literary and artistic works and that works of applied art which did not qualify as being “artistic” were not entitled to general protection under the Convention. The ECJ rejected this view and regarded the provisions relating to works of applied art as part of the general scheme set out in the Berne Convention. This being the case, the ECJ then applied its own case law to the effect that members of the EU cannot make the implementation of their obligations contingent on reciprocity. It therefore returned the case back to the Paris Tribunal with a ruling that the right of an author to claim copyright protection in a member state may not be subject to a distinguishing criterion based on the country of origin of the work.