The Lionel, the Bezpečnostní softwarová asociace and the Wandering Court of Justice

Watch out, Court of Justice --
you can't appropriate jurisdiction
with impunity!

When the lion roars, do we not all sit up and pay attention?  How much so when it is more than a lion -- a Lionel, in fact -- and none other than Professor Lionel Bently, holder of the Herchel Smith chair in IP Law at the University of Cambridge, author, sage and lively commentator on a wide number of IP issues of which copyright is not the least significant.   Anyway, this member of tytoc collie team was intrigued by some high-powered and carefully thought-out email correspondence which crossed his path.  Lionel was bouncing some thoughts around; the bouncees (named at the foot of this post) were not shy to respond -- and they were not all by any means sympathetic to the plea of this Common Lawyer with regard to the fate of copyright subject-matter in Europe.  Resisting the temptation to insert a plot-spoiler at this point, the Kat will let Lionel say his piece, in his very own words:

"The decision of the Third Chamber of the CJEU in Case C-393/09 Bezpečnostní softwarová asociace –Svaz softwarové ochrany v Ministerstvo kultury has attracted some criticism from tytoc collie (per Jeremy, here) for the holding that copyright in a graphic user interface is not infringed by the broadcasting of an image of that interface (para. 57). The reasoning offered by the Court (via rapporteur Judge George Arestis, who largely followed the Opinion of Advocate General Bot) is that the essence of the graphic user interface lies in its interactivity, and interaction with the interface is not possible when the image of the computer screen is broadcast to the public. This is surprising because, having concluded that a graphic user interface is not a computer program one would have expected the infringement analysis to be as for any other work: that is, whether there had been communication to the public of a sufficient part of the work in question. Following Case C-5/08 Infopaq, that would have depended on whether the elements communicated were in themselves sufficient to constitute their author’s own intellectual creation. If they were, then the broadcaster would have communicated a “part” of the work and thus have infringed. The final analysis would be for the national court. Curiously, the ECJ had hinted at just such an analysis in relation to whether copyright would subsist in the interface (at [48]-[50]), but then failed to follow that reasoning when assessing infringement.

Nevertheless, from a British perspective, it is the first aspect of the decision that is most startling. This has two elements. First, uncontroversially (in my view), the CJEU holds that, as a matter of European law, a graphic user interface is not a computer program (at [42]) that must be protected under Directive 91/250 on the legal protection of computer programs. Second, and more startlingly, the Court indicated that the graphic user interface must be protected by copyright if it is original in the sense of being its authors own creation. The key paragraphs states:

“[44]...it is appropriate to ascertain whether the graphic user interface of a computer program can be protected by the ordinary law of copyright by virtue of Directive 2001/29.

[45] The Court has held that copyright within the meaning of Directive 2001/29 is liable to apply only in relation to subject matter which is original in the sense that it is its author's own intellectual creation...

[46] Consequently, the graphic user interface can, as a work, be protected by copyright if it is its author’s own intellectual creation.”

Although the language is not as clear as it might be, the CJEU seems to be saying that Directive 2001/29 requires that protection be afforded to any and every “intellectual creation”. In so doing, the CJEU has taken upon itself the task of identifying when a particular subject matter constitutes a work that is protected under the Information Society Directive 2001/29.

From a civil law perspective, this part of the judgment is rather unremarkable. Civil law jurisdictions typically offer copyright protection to all works falling within a broad category of "works of the mind" or something equivalent. Graphic user interfaces would clearly fall within those broad categories. However, some interesting questions might arise in relation to exotic subject matter such as perfumes, which some countries regard as works and others do not; and in any other circumstances where national laws purported to apply a more onerous standard of originality.

But for us in the UK (and Ireland), copyright protects a closed list of specified works. In the UK, the list comprises eight items: original literary, dramatic, musical and artistic works; films; sound recordings; broadcasts and typographical arrangements of published editions. In order to be protected a particular item of subject matter must fall within one of these boxes (as Jacob LJ has called them – Hyperion v Sawkins [2005] EWCA Civ 565, at [74]). Being a “work of the mind” is insufficient if the work claimed cannot be fitted within one of the boxes (Creation Records [1997] EMLR 444). In Nova v Mazooma [2007] EWCA Civ Jacob LJ explained that this was “an aspect of UK copyright law untouched by any EU harmonisation.”

Following Case C-393/09, it seems, the eight categories of work must now be interpreted to ensure compliance with European law (even though, for a good while, we are unlikely to know what the European conception of “work” comprises). There would, of course, probably be little problem with fitting some aspects of a graphic user interface within the concept of artistic works in section 4 – particularly “graphic works”: Navitaire v EasyJet [2006] RPC 111, 153 (para 98); Nova v Mazooma [2006] RPC 379 (para 100). But more difficult questions may well arise in relation to what counts as “work of artistic craftsmanship”, an “engraving”, a “dramatic work”, and a “sculpture” (cp. Lucasfilms v Ainsworth [2009] EWCA Civ 1328, and on appeal to the Supreme Court). Matters are made slightly more complicated in relation to the latter, as Professor Matthias Leistner has pointed out to me, by Article 17 of the Designs Directive 98/71 which contains a proviso to the effect that “the extent to which, and the conditions under which, such a protection [of registered designs by copyright] is conferred, including the level of originality required, shall be determined by each Member State.”

Moreover, one might wonder where the appropriation of jurisdiction over national copyright law by the European judicature will end. Is the recording requirement for literary, dramatic and musical works in section 3(2) of the UK's Copyright, Designs and Patents Act 1988 (CDPA) now to be done away with too? Can the UK courts refuse to offer protection to works they regard as immoral? Will the CJEU start laying down rules to identify where a work begins and ends? Is the division of songs into literary and musical works consistent with the European idea of the work? Is the question as to whether a title is a work in itself, or a part of a work to which it relates, now a matter for the CJEU to decide?

As a member of the Wittem Group of academics who formulated a draft European Copyright Code, in which harmonization of the work concept as well as originality are proposed, my objection to these developments is less substantive than procedural. Ultimately a European consensus on the concept of work and originality is in my view both inevitable and desirable.

But, at the political level, these matters were simply not agreed. (See e.g., on originality, Commission Staff Working Paper on the Review of the EC Legal Framework in the field of copyright SEC(2004)995, 14). Had an opportunity been offered to discuss the question, British interests would likely have objected. At a workshop held by SABIP in July 2009 (indeed, on the very day that Infopaq was decided) , many “stakeholders” indicated that they find a closed list easy to understand, and an open rubric to be dangerously vague, and worry that an open concept of work will generate unnecessary litigation and impose unnecessary costs on business.

Serious and careful consideration of what would be a suitable regime in the British cultural and legal context is important. Moreover, a political process would have offered an opportunity to consider transitional matters and, perhaps, whether changes in related areas of law might be desirable. Whether it be a consequence of jurisdictional ambition or a genuine attempt to make sense of the existing Directives in order to offer helpful assistance to the courts of Member states, the Court of Justice appears to be denying us these opportunities. Or am I reading too much into this?"

It is very much hoped that the Kat's copyright-focused readers will let us all know what they think. Please post your comments below!

Lionel thanks Dirk Visser, Thomas Dreier, Estelle Derclaye, Matthias Leistner, Annette Kur, Severine Dusollier and Antoon Quaedvlieg, with whom he has been discussing the case by e-mail.