The European Court of Justice (ECJ) has held that the offer for sale or targeted advertising of a copyright work may fall within the distribution right under Article 4(1) of the Copyright Directive (2001/29/EC). (Article 4(1))
Authors should have the exclusive right to authorise or prohibit any form of distribution of their original works, or copies of those works, to the public by sale or otherwise (Article 4(1)).
In Peek & Cloppenburg KG v Cassina SpA, the ECJ suggested that distribution to the public within the meaning of Article 4(1) only occurred where there was a transfer of ownership (C-456/06).
Under UK law, copyright subsists in an original literary work (section 1, Copyright, Designs and Patents Act 1988) (CDPA), and is infringed if a person copies a work or issues copies to the public without the copyright owner’s consent (section 18, CDPA) (section 18).
K owned the copyright in various chair designs. D advertised furniture similar to K‘s designs on its German language website, in German newspapers and magazines, and in an advertising brochure. The advertisements offered the sale of the copyright furniture from Italy and stated that no payment needed to be made until collection or delivery of the furniture by a forwarding agent authorised to take payment, which service was available on request.
K issued proceedings against D in Germany for copyright infringement. The German Federal Court of Justice referred questions as to the meaning of the distribution right to the ECJ.
The ECJ held that distribution was an independent concept of EU law, not contingent on the legislation applicable to transactions in which a distribution takes place. Article 4(1) allowed the copyright-holder to prevent an offer for sale or a targeted advertisement of the original or a copy of the copyright work, if the advertisement invited consumers of the EU member state in which the work was protected to buy it. This was the case even if the advertisement did not give rise to the purchase of the protected work by an EU buyer.
Distribution to the public was characterised by a series of acts from the conclusion of a contract of sale to the performance of the contract by delivery. An invitation to submit an offer, or a non-binding advertisement for a protected work, fell within the series of acts taken with the objective of making a sale of the work.
Goods might also infringe the distribution right where it was shown that they were intended to be put on sale in the EU. The same principle applied by analogy in the case of a commercial act, such as an advertisement addressed by the trader of a member state, through its website, to consumers in another member state in which the works were protected. There might be infringement of the distribution right where an unauthorised trader addressed an advertisement, through its website, by direct mail or in the press, to consumers located in the territory of the member state in which copyright works were protected to invite them to buy the works.
So, it was irrelevant for a finding of infringement of the distribution right that the advertising was not followed by the transfer of ownership of the protected work or a copy of it to the buyer.
This expansionist decision represents a development of the law in Peek & Cloppenburg, although that decision may be distinguished on the basis that it was concerned with granting the right to use copyright works or exhibiting them in public. This decision appears to achieve a backdoor harmonisation by preventing manufacturers in countries which limit copyright in industrially produced designs to 25 years from advertising their goods in countries with longer protection periods.
Section 18 was regarded as being consistent with Article 4(1), so that no amendments were required to implement it into UK law. However, section 18 defines the right of distribution as the right to issue copies of the work: the act of putting into circulation copies of works not previously put in circulation. The UK position, that offering or advertising copies for sale is not capable of amounting to an infringement of the distribution right, seems no longer to be correct.
Case: Dimensione Direct Sales Srl and another v Knoll International SpA, Case C 516/13.
First published in the July 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.