In the Netherlands, copyright protection exists in literary, scientific or artistic works. The Supreme Court has held that a work must have its "own, original character" and "bear the personal stamp of the author" to attract copyright. According to the Supreme Court, this means that the form of the work "may not be derived from another work" and that it "must be the result of creative human labour and thus of creative choices, so that it is a production of the human mind".(1) The Supreme Court has emphasised on several occasions that this test is on par with the European Court of Justice's (ECJ's) originality test.(2) In the Netherlands, there is no limitation or higher (originality) requirement for copyright protection of works of applied art. The same originality standard applies regardless of the nature of the creation.(3)
Article 10(2) of the Copyright Act states that reproductions of works in a modified form (eg, adaptations) will be protected as separate works, without prejudice to the copyright in the original work. This applies to situations where the adaptations are made to works that have the same creator, but also to works that have a different author. In the latter situation, the author of the adaptation will most likely need to obtain the consent of the creator of the earlier design in order to avoid infringement (if the adaptation qualifies as a reproduction in an altered form).
Once it is established that a design meets the criteria to attract copyright protection, the copyright owner has the exclusive rights to reproduce and distribute the protected creation, including creations that have the same overall impression.
In a recently published judgment of The Hague Appeal Court, Philips and Lidl disagreed over the appearance of certain electronic shavers.(4) Philips claimed copyright protection in the design of the SensoTouch 3D (ST3D) shaver, which had been introduced in 2010. The appearance of the ST3D was not entirely new; many of the design features had already been included in one of Philips's previous models, the Arcitec shaver, which had been launched in 2007. In the proceedings, Philips argued that Lidl's Silvercrest shaver, which had been on the market since 2016, infringed its copyright in the ST3D.
The litigation started with summary proceedings, in which the preliminary relief judge granted an injunction on the basis of copyright protection. However, in the subsequent proceedings on the merits, The Hague District Court denied Philips's claims in the first instance.(5) Philips appealed.
In the appeal proceedings, one of the key points of discussion was whether Philips's copyright claim, which was based on the appearance of the ST3D, also included the features that had previously been incorporated in the Arcitec, or whether, to the contrary, protection could be claimed only for the design features of the ST3D that were sufficiently original when compared with the Arcitec.
Authors are free to create adaptations derived from their own works
If there is no serious doubt that the claimant in the proceedings is the creator of both the claimed work and the earlier design, it is generally considered that the creator is free to further develop its own creation into an adaptive work (within the meaning of article 10(2) of the Copyright Act). Although formally it must be separately established that the adaptation meets the originality requirements to qualify as a copyright-protected work, in situations as described herein, the courts tend to grant protection to the claimant for the adaptation quite easily. The adaptation will be considered an individual copyright-protected work for the design features that are original compared with its earlier design.
However, practice shows that the courts also tend to accept that the combination of the original features in the adaptation and the features in the earlier design is protected, in the sense that the copyrights to the further developed adaptation also cover the creative choices of the initial work, even if the creator has not expressly invoked copyright protection with regard to the earlier design.(6) That does not prevent the further developed design from having its own original character, including the features of the earlier design, insofar as the features are not derived from the works of others.
With regard to this matter, The Hague Appeal Court took a stricter approach and ruled differently in this case, in which Philips substantiated its copyright claim against Lidl solely with regard to the design of the ST3D as a further evolution or adaptation of the Arcitec.
Philips took the position that the ST3D should be regarded as a copyright-protected adaptation of the Arcitec. The Court assessed whether this adaptation met the requirements for copyright protection, in the sense that the ST3D, compared with the Arcitec, was an original design that was independently entitled to copyright protection. In this assessment, the Court considered that for the question of whether an adaptation is entitled to copyright protection as a work, only the creative choices made by the creator(s) of the adaptation are to be considered. Creative choices that were made by the author(s) in the earlier design on which the adaptation is based are not considered to be part of the adaptation as an object for copyright protection. Therefore, the Court ruled that the originality of the Arcitec could not contribute to the originality of the ST3D.
According to the Court, there is no difference if the copyright in the original work and that in the adaptation are owned by the same party. The Court therefore disagreed with Philips's assumption that because of the identity of the copyright holder, the original character of the Arcitec would be reflected in the originality of the ST3D. The Court opined that such an assumption is at odds with the rule that copyright in a work arises by its creation. Moreover, according to the Court, this would have the incongruous consequence that the originality of an adaptation increases or decreases with the transfer of the copyright in the adaptation or the copyright in the underlying work.
The Court emphasised that contrary to what Philips had suggested, this does not imply that the holder of a copyright in a product design loses its right as soon as the design is embellished or modernised in a subsequent expression. The introduction of the ST3D did not cause Philips to lose its copyright in the Arcitec. The question was only whether Philips could (in addition) claim copyright in the ST3D.
In this particular matter, the Court held that Philips's copyright claim failed. The Court held that the ST3D did not qualify as an adaption eligible for copyright protection (since it was insufficiently original compared to the Arcitec) and, in as far as the (alternative) claim of Philips was based on copyright protection for the Arcitec, this claim was insufficiently substantiated.
The Court's statement that it would be strange if the scope of protection of a work could alter after its creation as a consequence of a later transfer of copyrights seems plausible. Nevertheless, the Court's approach in this case is not necessarily in line with the approach taken by other courts in similar cases. The Court has set a rather high threshold for copyright protection of adaptations of earlier designs that have the same author. Although the Court stated that the claimant was still entitled to claim copyright protection for the earlier design and (separately) for the evolution thereof in an original adapted design, it seems that the approach has the potential consequence that the rights of the copyright holder are restricted in comparison with the situation where the claimant can enforce copyrights in the combination. The protection of the earlier design does not include the later additions, while the scope of protection of the adaptation is limited to the additional features since the other features belong to the original work.
On its face, the decision seems to make it more complex for copyright owners to enforce copyrights in an adaptation of an earlier work that has the same author. This decision clarifies that it is important to keep in mind that if a party claims copyright protection in an adaptation of an already existing work (that has the same author), the claimant should ensure that it bases its claim on the copyrights in both the original work and the adaptation (if it is considered sufficiently original). Nevertheless, even in such a situation, the claimant may not be able to fully profit from copyright protection for the combined creation.
Enforcing copyrights in both designs at the same time will not necessarily bring the claimant to the same situation as before, since the claims will have to be assessed separately for each design. In order to establish whether there is an infringement, the courts must consider the overall impression of the designs but only insofar as the overall impression is similar because of similar copyright-protected elements of the work. The overall impression of these individual creations based only on the (protected) creative and original features may well differ from the overall impression of the combination.
In early August 2021, it was announced that Philips has decided to futher appeal this decision and has asked the Supreme Court to clarify whether The Hague Appeal Court correctly applied the law.
For further information on this topic please contact Roderick Chalmers Hoynck van Papendrecht at AKD by telephone (+31 88 253 5000) or email ([email protected]). The AKD website can be accessed at www.akd.nl.
(1) Supreme Court, 30 May 2008, ECLI:NL:HR:2008:BC2153 (Endstra).
(2) For example, Supreme Court, 12 April 2013, ECLI:NL:HR:2013:BY1532 (Stokke/H3).
(3) ECJ, 12 September 2019, ECLI:EU:C:2019:721 (Cofemel).
(4) 6 April 2021, ECLI:NL:GHDHA:2021:1371.
(5) 10 October 2018, ECLI:NL:RBDHA:2018:12254.
(6) For example, Arnhem-Leeuwarden Court of Appeal, 23 June 2020, ECLI:NL:GHARL:2020:4773.