Harmonization by degrees: a book review

JIPLP's review section carries reviews of not just books but also of the occasional weblog or Twitter account -- as is only appropriate now that we live and work in the age of the social media. The book reviews are popular with publishers and authors, since the journal's book review policy means that virtually every book received will be reviewed.  New IP books are advertised on this weblog as being available for review, and prospective reviewers often have to compete in order to persuade the journal that they are the person best equipped to write the review. Reviewers who are slow to discharge their responsibilities are required to return their book so that it can in turn be reviewed by someone else.

Book reviews don't often feature on the jiplp weblog (though an earlier review by Christopher Wadlow was reproduced here), so we thought it was high time to post another one. The author of the book in question is the JIPLP Deputy Editor and the reviewer is a member of the judiciary who has done much to help direct the path of European IP law in recent years through the reference of questions to the Court of Justice of the European Union for preliminary rulings:
Originality in EU Copyright Law: Full Harmonization through Case Law, by Eleonora Rosati; published by Edward Elgar, 2013 ISBN 978-1-78254-893-5, Hard cover, 304 pp. Price: £80.00 
A review by Sir Richard Arnold (Judge of the High Court of England and Wales, Chancery Division)

Broadly speaking, there are two main approaches to law reform. The first is incremental and the second is holistic. The incremental approach proceeds one stage at a time. The stages may involve different areas of the field under review, or the whole field may be changed in small steps. The holistic approach considers the field as a whole and changes it all at once. Both approaches have their advantages and disadvantages.

Harmonization of European intellectual property laws has involved both approaches. Harmonization of copyright and related rights has proceeded incrementally through a series of 14 directives and is still incomplete. By contrast, harmonization of trade mark law was more holistic through a single directive-and-regulation package (now under revision). The incremental approach to copyright harmonization has involved sector-specific (eg computer programs, databases), issue-specific (eg term, re-sale right) and more wide-ranging (eg the Information Society Directive) measures. Among the advantages of this approach is that each measure can address a manageable amount of subject matter. Among the disadvantages are that the field is not considered as a whole. Further, there is an inevitable time lag between earlier measures and later measures. Both these factors conspire against coherence and consistency. These problems will inevitably be compounded if the reform process slows, as it did during the 2000s, and is not completed, as is presently the case.

Eleonora Rosati's book provides a case study of the advantages and disadvantages of the EU's incremental approach to copyright harmonization. Rosati begins by surveying the legislative reform process from 1988 to 2012. If one were to attempt a holistic approach to copyright law reform, one would surely start by asking what subject matters should be protected by copyright and according to what criteria. Because of the incremental approach it has adopted, the EU legislature has only given a partial answer to this question. It is clear that computer programs, database and photographs must be protected insofar as they are original in the sense that they are their author's own intellectual creation. But the legislature has given little guidance on this criterion of originality, and has not specified what other subject matter should be protected, or on what conditions.

As Rosati explains, the criterion of originality is a significant policy tool in shaping any copyright system, although I would argue that it is not quite as important as she suggests. A more important tool, as much of Rosati's own analysis shows, is that of protectable subject matter (scope of right and exceptions are still more important). It may therefore be regarded as unfortunate that the EU legislature has not properly addressed this question.

When legislatures fail to act, courts tend to feel impelled to step into the breach. This is particularly true of a harmonizing court like the Court of Justice of the European Union (CJEU) when confronted with piece-meal and incomplete legislation. Perhaps it should not have come as a surprise, therefore, that starting with its decision in Infopaq International A/S v Dankse Dagblades Forening, C-5/08, EU:C:2009:465 and continuing through the subsequent cases of Bezpečnost softwarová associace v Ministerstvo kultury, C-393/09, EU:C:2010:816; Football Association Premier League Ltd v QC Leisure, C-403/08 and C-429/08, EU:C:2011:631; Painer v Standard Verlags GmBH, C-145/10, EU:C:2011:798; Football Dataco Ltd v Yahoo! UK Ltd, C-604/10, EU:C:2012:115; and SAS Institute Inc v World Programming Ltd, C-406/10, EU:C:2012:259, the CJEU has boldly seized the initiative. This case law is analysed in detail by Rosati. The broad picture now seems reasonably clear, and can be summarized in three main propositions. First, the ‘works’ protected by the directives must be literary and artistic works within the meaning of Article 2 of the Berne Convention. Secondly, in order to be protected, a work must be original, in the sense that it is its author's own intellectual creation. It is not enough for this purpose that the creation of the work involved skill and labour. It must have involved the author's ‘creative freedom’ (FAPL), ‘personal touch’ (Painer) or ‘free and creative choices’ (Football Dataco). Thirdly, protection (at least in the case of the reproduction right) extends to parts of works which are original in this sense. As Rosati explains, however, beyond these broad propositions, little is clear.

Even so, the potential implications for the copyright laws of the Member States are profound. In the case of the United Kingdom, it seems clear that the effect is to raise the bar for the level of originality. But how much difference this will make in practice, other than in cases involving pure information, such as football match fixtures and the like, may be doubted. For example, a parallel case to the English case of Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565, [2005] 1 WLR 3281 (the case about performing editions of French baroque music) was decided in the same way in France. Would the new approach have led to a different result in either country? Further, it does not necessarily follow that the overall level of protection has been lowered. It is at least arguable that, although the CJEU has raised the bar on originality, it has lowered the bar when it comes to reproduction. Rather less clear is the effect on the UK's closed list system of protectable subject matter. Rosati suggests that this is no longer compatible with EU law, but she acknowledges that the CJEU has yet squarely to address this question.

Rosati examines theses issues through the prism of two recent English cases: Temple Island Collections v New English Teas Ltd [2012] EWPCC 1, [2012] FSR 9 (the ‘red bus’ case) and Lucasfilm Ltd v Ainsworth [2011] UKSC 39, [2012] 1 AC 208 (the Star Wars storm trooper helmet case). She is critical of the decision in Temple Island, but it is not clear to me why. Like many other commentators, she appears to have been confused by the judge's description of the claimant's work as a photograph. As both the judge and Rosati make clear, however, it was in fact a digital artwork derived from a photograph through an extensive process of manipulation. It follows that the correct criteria for protection were those applicable to true artistic works rather than those applicable to photographs. Once this is understood, I would suggest that the decision is less surprising than it may otherwise appear. Rosati's criticisms of Lucasfilm appear to me to be more cogent. It is very striking that the Supreme Court approached the issue as a pure question of the interpretation of the word ‘sculpture’ in the current domestic legislation viewed in its historical context, without a glance at the broader European context.

As Rosati explains, the approach taken by the CJEU in its case law also has profound implications for current harmonization projects such as the Wittem Group's European Copyright Code and more generally for the future of EU copyright law. Any future legislation about protectable subject matter and the criteria for protection will have to be framed with this case law in mind.

Rosati has made a valuable contribution to the study of European copyright law. The only flaws in the book are some hangovers from its origin as a PhD thesis, such as tables of cases listed in chronological, rather than alphabetical, order.
If you are interested in reviewing books for JIPLP, just keep an eye on this weblog for the next batch of books on offer.

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