European Originality Doctrine – Another Step Further?

Story of European originality concept seems to be evolving with every possible court case. For those who don´t know what I am talking about, a brief summary first.
CJEU first in Infopaq C-5/08 expanded Union law concept of originality to the other works that photographs, databases and computer programs, which have their own directives. Later in BSA C-393/09 and Football Association Premier League C-403/08 it basically confirmed this position. Moreover, it strengthened the importance of this concept – setting it as the sole requirement for the copyright protection. On top of that, BSA invented so called functionality exclusion, which relates to expression-idea dichotomy and way of testing originality. This is being now quite heavily used also in regard to computer programs in pending SAS Institute C-406/10 case (BSA addressed works in general). Then last week, CJEU said in Painer C-145/10 little bit more about how he thinks this originality test should be applied in regard to photographs. He said that reflecting personality of the author is what matters, though photographs does not have to be too artistic. Today, Advocate General Paolo Mengozzi in Football Dataco C-604/10  put those bits together and now he is saying following:
37.      Now, on this point there is no doubt that, as regards copyright protection, the Directive espouses a concept of originality which requires more than the mere ‘mechanical’ effort needed to collect the data and enter them in the database. To be protected by the copyright, a database must – as Article 3 of the Directive explicitly states – be the ‘intellectual creation’ of the person who has set it up. That expression leaves no room for doubt, and echoes a formula which is typical of the continental copyright tradition.

38.      Clearly, it is not possible to define, once and for all and in general terms, what constitutes an ‘intellectual creation’. That depends on an assessment which, as I have said, is not necessary in the present case. In any event, if ever that assessment is required, it is for the national courts to undertake it on the basis of the circumstances of each individual case.

39.      The Court has made some statements on this matter and, in particular, has stressed that the copyright protection of databases under Article 3 of the Directive – like the copyright protection of computer programs under Article 1(3) of Directive 91/250 (14) or of photographs under Article 6 of Directive 2006/116 (15) – requires that the works be ‘original, in the sense that they are their author’s own intellectual creation’. (16)

40.      In that regard, the Court has also stated that a work is an intellectual creation if it reflects the personality of its author, which is the case if the author was able to make free and creative choices in the production of the work. (17) The Court has further specified that, in general, the necessary originality will be absent if the features of a work are predetermined by its technical function. (18)

Footnotes ..

FN 16 – Case C‑5/08 Infopaq International [2009] ECR I‑6569, paragraph 35. Moreover, it must be observed that the three directives just referred to use terminology which in some languages is identical and in others (for instance, Italian) clearly indicates, despite some slight differences, that the legislature intended to refer to the same concept.

FN 17 – Case C‑145/10 Painer [2011] ECR I‑0000, paragraphs 88 to 89.

FN 18 – Case C‑393/09 Bezpečnostní softwarová asociace [2010] ECR I‑0000, paragraph 49.

So, will the CJEU in Football Dataco mix functionality criterion and personal touch argument to apply it also to the databases originality? I guess the only next step would be then using this test in regard to works in general. Would anybody doubt about existence of this doctrine then?

5 thoughts on “European Originality Doctrine – Another Step Further?

  1. Francis Davey

    Hut'ko, I'm an avid reader of your blog from the United Kingdom and this theme is really interesting. I think I've said before that I'm surprised its not being more widely discussed over here. In several cases recently the judiciary have suggested they don't see a difference between common law "originality" and the EU standard "own intellectual creation", but I cannot see how that view can stand.

    Its worse: if there is a difference then, what effect does that have on UK copyright law? In some cases pre-EU law (i.e. before term extension and other fundamental changes) will govern works such as uncreative photographs. No-one seems to have given that any thought at all.

    I look forward to further developments.

  2. Huťko

    This comment has been removed by the author.

  3. Huťko

    Francis, thanks for your comment – I am also avid reader of your blog 🙂

    I have read on IPKat about some recent concerns of prof. Bentley + lately I have read this piece from prof. Griffiths which both suggest huge impact of this on the UK copyright law.

    I guess, UK might be the country to refer this last part of originality puzzle to the Court of Justice, as in case of UK, the difference is probably the most striking one. But we in Slovakia, have also similar issues, though not that significant. Courts here usually require that something original have to be even ´unique´ – which is definitely not the level CJEU seems to be adopting also for the works in general.

    I am also very curious about further developments of this .. If you bump to anything interesting (e.g. in UK practice), please let me know, I would be happy to read about that.

  4. Huťko

    I just realized that CJEU already has a chance to apply 'Football Dataco Mix' onto works in general. In SAS, CJEU is also assesing copyrightability of manual of a computer program under Art. 2(a) of Directive 2001/29.

    D – Protection for the user manual of a computer program under Article 2(a) of Directive 2001/29

    102. By its questions, the referring court seeks to ascertain, in essence, whether Article 2(a) of Directive 2001/29 is to be interpreted as meaning that the reproduction, in a computer program or a user manual, of certain elements described in the user manual for another computer program constitutes an infringement of the copyright in the latter manual.

    103. The SAS Manuals are technical works which exhaustively document the functionality of each part of each SAS component, the necessary inputs and, where appropriate, the expected outputs. They serve a utilitarian purpose and are designed to give users a large amount of information about the external behaviour of the SAS System. They do not contain information about the internal behaviour of the system.

    104. The referring court states that each SAS Manual is an original literary work which enjoys copyright protection under Directive 2001/29.

    105. Article 2(a) of that directive grants authors the exclusive right to authorise or prohibit the reproduction of their works ‘by any means and in any form’. In my view, the fact that the alleged infringement also concerns the reproduction of manuals to create a work taking a different form, such as a computer program, does not exclude such reproduction from the scope of that directive.

    106. In Infopaq International, the Court has already had occasion to rule on the scope of the protection provided for in Article 2 of Directive 2001/29. It stated that, according to recital 21 of that directive, acts covered by the reproduction right must be understood in a broad sense. That requirement of a broad definition of those acts is, moreover, also to be found in the wording of Article 2 of the directive, which uses expressions such as ‘direct or indirect’, ‘temporary or permanent’, ‘by any means’ and ‘in any form’. (44)

    107. Consequently, the protection conferred by Article 2 of Directive 2001/29 must have a scope which, in my opinion, includes both the reproduction of certain elements in the manual for another computer program and that in the computer program itself.

    108. The question now is whether, by including in the WPL Manual and the WPL System certain elements contained in the SAS Manuals, WPL infringed the copyright held by SAS institute in the latter manuals.

    109. As we saw in point 43 of this Opinion, copyright is guided by the principle that copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.

    110. In this case, the referring court states that WPL has, in particular, taken the keywords, syntax, commands and combinations of commands, options, defaults and iterations from the SAS Manuals in order to reproduce them in its program, as well as in the WPL manual.

    111. In my opinion, these elements, as such, do not qualify for the protection conferred by copyright.

    112. With regard to the programming language, we saw in points 69 and 70 of this Opinion that it is made up of words and characters and that it has its own rules of syntax and uses its own keywords.

  5. Huťko

    113. The options provided for in connection with various commands constitute a form of sub-behaviour in relation to a given command. Those sub-behaviours allow the details of the behaviour requested to be verified. This can be achieved by adding words after the command name.

    114. The defaults implemented in the event that a particular command or option is not specified by the user enable the SAS System to allow command names, options or data names to be omitted in certain circumstances, the defaults filling the gaps so created.

    115. With respect to the selection of statistical operations, it is clear from the observations submitted by WPL that the execution of statistical operations is prompted by the writing of instructions in SAS language. The SAS Manuals include a description of each statistical operation which is added to the successive versions of the SAS System. The WPL system offers the same selection of statistical operations to users writing application programs in SAS language. The WPL System does not reproduce the description of those statistical operations but simply executes them.

    116. WPL further submits that the mathematical formulae presented in the SAS Manuals describe the output to be calculated on the basis of the input. This is not the program code necessary in order to perform a series of calculations. A mathematical formula can be implemented in numerous ways. The WPL programmers have written a source code capable of performing the calculations as described in the mathematical formulae.

    117. Finally, the SAS System contains a specific statistical operation terminating on eight iterations. Since that value has an impact, according to WPL, on the final outcome, the programmers, after reading the SAS Manuals, created a source code which is also capable of performing eight iterations.

    118. In my view, it follows from the foregoing considerations that those various components correspond to ideas, procedures, methods of operation or mathematical concepts. Consequently, they are not, as such, eligible for the copyright protection conferred by Article 2(a) of Directive 2001/29.

    119. The expression of these ideas, procedures, methods of operation or mathematical concepts, on the other hand, is eligible for protection under that provision if it is original in nature.

    120. It is only through the choice, sequence and combination of such elements that the author may express his creativity in an original manner and achieve a result which is an intellectual creation. (45)

    121. In any case, it will be for the national court to examine whether that is the case in these proceedings.

    122. In the light of the foregoing, I propose that the Court rule that Article 2(a) of Directive 2001/29 is to be interpreted as meaning that the reproduction, in a computer program or a user manual, of certain elements described in the manual for another computer program may constitute an infringement of the copyright in the latter manual if – a question which will be for the national court to determine – the elements reproduced in this way are the expression of their author’s own intellectual creation.

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