IIC (2018) 49:106–112 https://doi.org/10.1007/s40319-017-0657-z DECISION • COPYRIGHT LAW
Austria ‘‘Le Corbusier’’ Decision of the Supreme Court (Oberster Gerichtshof) 20 April 2016 – Case No. 4Ob61/16y Copyright Act, Secs. 16, 16a, 18a
Max Planck Institute for Innovation and Competition, Munich 2017
Keywords Distribution to the public Right of making available Exhaustion Parody Works of applied art 1. 2.
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Works of applied art are excluded from the application of a rental and lending right. Section 16a of the Copyright Act does not regulate an independent copyright exploitation right. Rather, this provision refers only to the exhaustion of rights under Sec. 16(3) of the Copyright Act and provides for special rules for the case that the right holder rents or lends the copy of the work. Section 18a of the Copyright Act does not restrict the right of making available to certain categories of works or to two-dimensional works. Such an interpretation likewise is not in conformity with the wording of Sec. 18a of the Copyright Act, which speaks only of a work in general. For an infringement of the right pursuant to Sec. 18a of the Copyright Act it is accordingly not necessary for third parties to be given the possibility of putting the work to practical use (by using the piece of furniture). The publishing of a photograph on the Internet in which a reproduction of the protected sofa is clearly recognisable, makes the work with its artistic value available to third parties and thus infringes the copyright of the author according Sec. 18a Copyright Act. In general the requirement of sensory perceptibility for an infringement of copyright requires only that the creative design elements of a work are adopted. This is also true of the infringement of the right of making available: an offence is given when the work in the form used is perceptible,
Translation by Allison Felmy.
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that is, when it very nearly conveys the sensory impression of the original work in its essential creative elements. On the one hand, the parody’s antithetical treatment requires a targeted adoption and distortion of essential features of the parodied work, so that a disturbance, if not a distortion, is as a rule to be affirmed. On the other hand, it is made clear to the viewer that the parody is precisely not a product of the author of the parodied work, but stems from the freedom of opinion and expression of the parodist.
Facts: 1 Le Corbusier (given name: Charles Edouard Jeanneret) in 1928 designed as the principle author in collaboration with co-authors Pierre Jeanneret and Charlotte Perriand a series of ‘‘Corbusier furniture’’, which became world-famous as classic modernist furniture design. The pieces were first produced by the French studio Thonet and sold in France. The legal successors of the authors assigned to the plaintiff the exclusive right to manufacture and sell the elements of this furniture series by contract of 20 November 2002. The defendant is the leaseholder operating the Hotel ‘‘court Wien’’. The fourth intervening party, who was commissioned by the (then) lessor to design the interior of the hotel (including furnishings), designed armchairs for the hotel lobby with steel pipe frames outside the seat cushions that bore similarities to the LC2 armchair – available in various models – by Le Corbusier. Twenty-four of these armchairs were furnished in the hotel lobby as seating for the hotel’s guests and other visitors. These pieces are in the possession of the current lessor. The defendant neither purchased the chairs nor arranged for their placement in the lobby…. The original LC2 armchair has the following appearance:
On the hotel website of the defendant the furniture placed in the hotel lobby was pictured as follows:
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The plaintiff initially requested to have the defendant enjoined from distributing copies or adaptations of the Corbusier LC2 armchair (first injunction request) and from making available to the public photographs of them (second injunction request). … The plaintiff submitted, in sum, that the defendant infringed the copyrights in the Le Corbusier armchair model LC2 by placing copies of this model in the lobby of the hotel run by the defendant and publishing photos of these imitations on the Internet. The placement of the imitations for use as seating by hotel guests is, in the plaintiff’s view, a distribution within the meaning of Sec. 16(1) of the Copyright Act, in respect of which an author of works of applied art can assert his or her rental and lending right according to Sec. 16a of the Copyright Act. By the publication on the Internet the defendant contravenes the right of making available laid down in Sec. 18a(1) Copyright Act to which the plaintiff is entitled. The defendant and the intervening parties responded, in sum, that the armchairs at issue were not illegal imitations but an independent intellectual creation by the fourth intervening party and that, regardless of this point, no act of distribution within the meaning of Sec. 16 of the Copyright Act is present. According to the case law of the CJEU, the defendant argues, such an act of distribution presupposes a transfer of ownership in the object. Therefore neither the mere fact that the public is given the possibility to use the armchairs at issue, nor the fact that a photo was published on the defendant’s homepage in which the hotel lobby and the furniture placed there can be seen, constitutes an infringing act in the sense of the Copyright Act. The court of first instance granted the action in its entirety. … The court of appeal confirmed the appeal against the decision brought by the defendant, the third intervening party and the fourth intervening party, modifying the decision to reject the claim. In reference to the CJEU decision of 17 April 2008, C-456/06, Peek & Cloppenburg KG/Cassina SpA, the court of appeal assumed that the placement of the armchairs in the hotel leased with furnishings by the defendant was not a distribution, because the defendant in doing so did not aim at the transfer of ownership. …
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Findings: .… The appeal on the law filed by the plaintiff against this decision is admissible in order to clarify the legal situation and is also partially founded. 1. On the distribution right pursuant to Sec. 16 of the Copyright Act: 1.1 The plaintiff bases its corresponding injunctive action on the distribution right pursuant to Sec. 16 of the Copyright Act. … 1.3 In its decision published on 7 June 2008 in the Official Journal of 17 April 2008, C-456/06, Peek & Cloppenburg KG/Cassina SpA, the CJEU had the task of clarifying the term ‘‘distribution to the public’’ within the meaning of Art. 4 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (Copyright Directive). 1.4 This provision corresponds in substance to Sec. 16 of the Copyright Act. … 1.5 The decision of the CJEU was based on a proceeding before the German Federal Supreme Court in which the party that is here also the plaintiff asserted an infringement of its exclusive distribution right in the furniture of Le Corbusier. It raised a claim against the trading company defendant in that case because in the company’s affiliates rest areas had been set up for customers using furniture of the LC2 series that were manufactured by a company without the consent of the plaintiff (cf. decision of the German Federal Supreme Court, Case No. I ZR 247/03 [42 IIC 224 (2011)] – Le Corbusier). 1.6 The CJEU ruled as follows (para. 41): … the concept of distribution to the public, otherwise than through sale, of the original of a work or a copy thereof, for the purpose of Article 4(1) of Directive 2001/29, applies only where there is a transfer of the ownership of that object. As a result, neither granting to the public the right to use reproductions of a work protected by copyright nor exhibiting to the public those reproductions without actually granting a right to use them can constitute such a form of distribution. … 1.10 In the CJEU judgment, in a case comparable with the situation to be assessed here, a distribution within the meaning of Art. 4(1) of the Copyright Directive was not found, because the furniture was neither sold, nor was the ownership in it transferred, but the furniture was made otherwise available to the customers. The case to be assessed here does not differ in its essential features from the situation that the CJEU had to decide. The requirement of an interpretation in conformity with the Directive is basis enough for the Court to see no reason to evaluate the
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questions already answered by the CJEU in a divergent manner, and thus encroach on the CJEU’s interpretational jurisdiction. 1.11 The first injunctive request indeed cannot be based on Sec. 16a of the Copyright Act. Besides the fact that works of applied art are excluded from the application of a rental and lending right [citations omitted], Sec. 16a of the Copyright Act does not regulate an independent copyright exploitation right. Rather, this provision refers only to the exhaustion of rights under Sec. 16(3) of the Copyright Act and provides for special rules for the case that the right holder rents or lends the copy of the work [citation omitted]. 1.12 Whether the defendant violated the distribution right of Sec. 16 of the Copyright Act is to be determined solely according to this rule, whose scope of application … has been sufficiently clarified by the CJEU. … 2. On the right of making available pursuant to Sec. 18a of the Copyright Act: 2.1 The plaintiff bases the second injunctive request on Sec. 18a(1) of the Copyright Act. … 2.2 This right of exploitation is relevant for the Internet and other network technologies and does not refer to the individual enjoyment of a work, but to the transmission of the work by third parties [citations omitted]. Making available in the sense of this provision presupposes a corresponding power to dispose of the work and control access to it [citation omitted]. 2.3 In the view of the court of appeal this rule concerns only certain categories of works (‘‘works of language, photography and cinematic art’’). This is evidently making reference to the case law of this Court on Sec. 18a of the Copyright Act, in which it was repeatedly emphasised that whoever ‘‘without authorisation places works of language, photographs or cinematic works on an Internet site for the purpose of interactive access’’ contravenes the exploitation right of Sec. 18a of the Copyright Act [citations omitted]. 2.4 The reference to these work categories was made in the cited decisions only by way of example. It cannot be deduced from the case law of the Court that Sec. 18a of the Copyright Act restricts the right of making available to certain categories of works in this sense or to two-dimensional works. Such an interpretation likewise is not in conformity with the wording of Sec. 18a of the Copyright Act, which speaks only of a work in general. 2.5 The view of the court of appeal would also contradict the evolution in Union law of the right of making available. Section 18a of the Copyright Act, namely, implements Art. 3(1) of the Copyright Directive (Explanatory Memorandum to Government Proposal 40 BlgNR 22. GP 3) …. This rule as well is not based on certain categories of works and goes beyond the rules in the WIPO Copyright Treaty, which is limited to works of literature and art and thus does not cover, for example, scholarly works. Article 3(1) of the Copyright
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Directive does away with this limitation to certain genres, so that the legal protection is extended to all works. It follows from Recitals 23 to 25 that this was done deliberately [citations omitted]. In the literature on Sec. 18a of the Copyright Act and on its counterpart Sec. 19a of the German Copyright Act this rule is consequently not discussed as being intended to encompass only certain categories of works. If the issue is explicitly discussed at all, the view is put forward that the protection includes all types of works [citations omitted]. The view of the court of appeal that it is per se not possible to make the work at issue in the dispute (the Le Corbusier armchair) available on the website is evidently based on the consideration that it is a three-dimensional work that serves primarily to be used as seating. This view, however, overlooks the fact that a work of applied art, besides its serviceability, also possesses an artistic value, in the absence of which it does not enjoy copyright protection. For an infringement of the right pursuant to Sec. 18a of the Copyright Act it is accordingly not necessary for third parties to be given the possibility of putting the work to practical use (by using the piece of furniture). Under a narrow interpretation of Sec. 18a of the Copyright Act in the sense of the appeal decision it would not be necessary in the first place for three-dimensional works, or works of applied art, to regulate the so-called catalogue freedom in Sec. 54(1), No. 1 and 2, of the Copyright Act, or the freedom of street appearance in Sec. 54(1), No. 5, of the Copyright Act if a use of such works as works is not even possible by means of (two-dimensional) reproduction in the first place. The Court therefore is of the opinion that the publishing of a photograph on the Internet in which a reproduction of the protected sofa is clearly recognisable, makes the work with its artistic value available to third parties and thus infringes the copyright of the author according Sec. 18a Copyright Act. 2.6 That the pieces of furniture shown on the Internet were copies and not the original work does not rule out an infringement under Sec. 18a Copyright Act. In general the requirement of sensory perceptibility for an infringement of copyright requires only that the creative design elements of a work are adopted [citation omitted]. This is also true of the infringement of the right of making available: an offence is given when the work in the form used is perceptible, that is, when it very nearly conveys the sensory impression of the original work in its essential creative elements. Whether an infringement is given must be evaluated in the copyright infringement proceeding based on a comparison between the original work and a copy in the form made available [citation omitted]. The first-instance court here correctly assumed that the piece of furniture showed on the defendant’s website presents no different overall impression than the original, and is not a new proprietary intellectual creation. 2.7 The second injunctive request cannot be refuted by the defence that the armchairs used by the defendant are a parody of the protected work. 2.7.1 The Court has [citation omitted] written in depth on the copyright evaluation of parody. In this examination it was clarified that in a parody a different, presumably well-known work is copied, with satirical, critical or polemical purpose
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and retaining characteristic formal elements, but with the opposite intended effect. To find a parody permissible, a strict standard must always be applied. A parodistic purpose may not be a free pass for non-free borrowing. The decisive criterion defining parody and satire is thus the artistic or content-wise treatment of certain statements and characteristics of the parodied work. On the one hand, the parody’s antithetical treatment requires a targeted adoption and distortion of essential features of the parodied work, so that a disturbance, if not a distortion, is as a rule to be affirmed. On the other hand, it is made clear to the viewer that the parody is precisely not a product of the author of the parodied work, but stems from the freedom of opinion and expression of the parodist. 2.7.2 The copies used by the defendant do not fulfil the requirements of a parody listed above. Neither is there an artistic or content-wise treatment of certain statements and features of the LC2 armchair by Le Corbusier, nor does the viewer realise that the parody is authored precisely not by the author of the parodied work. Also, an opposite intention or antithetical treatment is not in the least recognisable. 2.8 Finally, the defendant in the appeal on the law likewise cannot rely on the free use of a work under Sec. 54(1), No. 5, Copyright Act. Neither the defendant nor the intervening parties contested in their appeals the first-instance court’s rejection of the free use of the work. The relevant objection was no longer upheld in the appeal proceeding. This objection can no longer be taken into consideration in the appeal on the law under the aspect of legal error [citation omitted]. 2.9 The plaintiff’s appeal on the law was therefore, to the extent of the second injunctive request, to be confirmed, and the decision of the first-instance court modified by the court of appeal to this extent to be reinstated.
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