Introduction

On 23 May 2017 the Arnhem-Leeuwarden Appellate Court referred questions regarding which kinds of object can be classified as copyrightable works to the European Court of Justice (ECJ) (for further details please see "Heks'nkaas: an appetising copyright matter"). The case addresses the interesting question of whether certain tastes can be protected under copyright law. The specific taste for which protection was sought was Levola's popular cheese product Heks'nkaas.

Advocate General Wathelet recently advised the ECJ not to allow tastes to be granted copyright protection.

Background

In the earlier instances in the Netherlands, Levola obtained contradicting outcomes in its enforcement attempts. The Hague District Court held that Levola's claim for copyright infringement had been sufficiently substantiated and granted a request for the ex parte seizure of goods, while the Gelderland District Court denied the copyright claim in proceedings on the merits. Finally, The Hague District Court also denied Levola's copyright claim in proceedings on the merits. The most important argument for denying the claims in substantive proceedings was that Levola had failed to show exactly what constituted the object for which protection was sought (which automatically resulted in the courts being unable to assess whether the allegedly copied taste constituted an infringement of the claimed subject matter).

In the proceedings before the ECJ, the parties debated whether a creation:

  • is automatically eligible for copyright protection once it meets the criterion of originality (within the meaning of ECJ case law);(1) or
  • must fulfil additional conditions.

Advocate general's opinion

The advocate general held that originality in itself is insufficient for copyright protection, which is granted only where it is established that:

  • the creation qualifies as a 'work'; and
  • the work meets the originality threshold.

The obvious next question was whether tastes qualify as works. Since the EU Copyright Directive (2001/29/EC) does not define the term 'work', the advocate general sought guidance from international agreements, including the Berne Convention for the Protection of Literary and Artistic Works. Article 2 of the convention sets out a non-exhaustive list of works, which does not include tastes or similar creations, such as scents or perfumes. Although these creations are not explicitly excluded from protection either, the list clearly contains only works that can be perceived visually or aurally. As no other provision of international law provides that the taste of a foodstuff can be protected by copyright, the advocate general was of the opinion that this indicates that they are not intended to be protected by such.

According to the advocate general, there are two additional considerations that rule out copyright protection for tastes (or scents):

  • The first consideration is the legal concept of the idea-expression dichotomy, which excludes copyright protection for mere ideas and makes clear that protection is granted only to the expression of the underlying idea. The advocate general emphasised that, with regard to foodstuffs, copyright protection is not available for recipes, since they constitute the idea of the creation. Rather, such protection is available only for the physical expression of the recipe.
  • The second consideration is the fact that original expressions should be determined with sufficient accuracy and objectivity. The advocate general referred to the ECJ decision in the trademark matter of Sieckmann,(2) in which the court had to answer the question of whether scents can be valid trademarks, as trademark law requires marks to be graphically represented. The advocate general stated that the same requirements envisaged for the graphic representation of a mark in trademark law (ie, that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective) also apply in copyright matters.

The advocate general deemed that, in light of the current state of the art, it is impossible to precisely and objectively identify a taste, particularly given the subjective character of the taste experience and its transient, volatile and unstable nature. Under those circumstances, the advocate general opined that legal certainty for all parties involved (ie, the rights holder, but mostly third parties that ought to know which acts may constitute an infringement of the exclusive rights of others) demands that copyright protection be granted to neither tastes nor scents. However, future technological developments may enable the precise and objective identification of tastes, after which copyright protection may come back into play.

Comment

It will not be a surprise if the ECJ's judgment follows the opinion of the advocate general. The main argument that the identification of a taste lacks legal certainty is convincing. The lower Dutch case law in this regard confirms that the judges were constantly faced with this problem when dealing with whether copyright infringement to a claimed taste had occurred. It remains to be seen whether the advocate general's reasoning – in particular, the application of trademark law in this copyright matter – will be followed by the ECJ.

If the ECJ's opinion follows that of the advocate general, it would clarify that previous case law of the Netherlands Supreme Court (Hoge Raad) no longer stands. In 2006 the Supreme Court held that scents were eligible for copyright protection.(3)

For further information on this topic please contact Roderick Chalmers Hoynck van Papendrecht? at AKD by telephone (+31 88 253 5000) or email (rchalmers@akd.nl). The AKD website can be accessed at www.akd.nl.

Endnotes

(1) Infopaq, Case C-5/08.

(2) Case C-273/00.

(3) Supreme Court, 16 June 2006 judgment, ECLI:NL:HR:2006:AU8940.

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