2.7 - European non-discrimination

Non-discrimination. It is a principle of European law that “any discrimination on grounds of nationality shall be prohibited”. This principle is laid down in article 18 TFEU, but was also already part of previous EU treaties, like article 7 of the original EC-Treaty of Rome. The case law of the Court of Justice makes it clear that this doctrine has far reaching consequences for the application of intellectual property law within the European Union and that both national IP laws as well as IP-treaties, like the Berne Convention, have to give precedence to this European non-discrimination principle.

Phil Collins-judgment 1993. The possible impact of the European non-discrimination principle on the application of intellectual property rights within the European Union became apparent for the first time with the Phil Collins-judgment of the Court of Justice in 1993 (IPPT199310120). The judgment concerned two combined cases by the British musicians Phil Collins and Cliff Richard regarding the enjoyment of exclusive rights for performing artists under German law. At the time, those German rights for performing artists could – shortly put – only be invoked by German artists or with regard to live performances in Germany. The Court held that the non-discrimination provision of (at the time) article 7 of the EEC-Treaty precludes “legislation of a Member State from denying, in certain circumstances, to authors and performers from other Member States, and those claiming under them, the right, accorded by that legislation the nationals of that State, to prohibit the marketing, in its national territory of a phonogram manufactured without their consent, where the performance was given outside its national territory.”

Scope of application of the Treaty. Like previously article 7 of the EEC-Treaty, article 18 TFEU provides that the non-discrimination principle only applies “within the scope of application of the Treaty”. The Court left no doubt in its Phil Collins-judgment that national IP-rights – like copyright and related rights – fall within the scope of application of the Treaty  “by reason in particular of their effects on intra-Community trade in goods and services” because these rights distort competition, irrespective of whether or not these rights can be owned by holders with different nationalities.

Ricordi-judgment 2002. Following the Phil Collins-judgment of 1993 the non-discrimination principle again surfaced in a ruling of the Court of Justice of 2002 in Ricordi (IPPT20020606). The case concerned the German performance rights in the opera ‘La Bohème’. The proprietor of that copyright was German publisher Ricordi as a successor in title to the Italian composer Giacomo Puccini. Italian copyright originally had a term of protection of 56 years following the death of the author, while German copyright had a term of protection of 70 years after the death. Article 7(8) of the Berne Convention determines that the term of protection “shall be governed by the legislation of the country where protection is claimed.” However, it also provides that this term “shall not exceed the term fixed in the country of origin of the work”, unless the legislation of that country provides otherwise. Against that background the question arose whether the comparison of terms, as prescribed by article 7(8) of the Berne Convention, results in a form of discrimination that violates the European non-discrimination principle. That question was also triggered by the fact that Puccini died in 1924, while the European non-discrimination principle only came into effect with the entering into force of the EEC Treaty in 1958. The Court ruled that the European non-discrimination principle also applied to the protection of de copyright “in cases where the author had died when the EEC Treaty entered into force in the Member State of which he was a national” and that it “precludes the term of protection granted by the legislation of a Member State to the works of an author who is a national of another Member State being shorter than the term granted to the works of its own nationals.” 

Tod’s 2005 (IPPT 20050630). This case concerned the question whether the application of the country of origin of the work, as prescribed in article 2(7) of the Berne Convention, also has to be regarded as a prohibited form of discrimination based on nationality. Article 2(7) of the Berne Convention provides, among others, that it is “a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. It is then stated that if such works are “in the country of origin solely protected as designs and models”, such works shall, in in another country of the Union, only be entitled to such special protection as is granted in that country to designs and models. However, if that other country does offer such special protection for designs and models, such works shall be protected in that country as artistic work. In Tod’s the situation was that Italy was the country of origin of the design of the shoes concerned and where design was not protected by Italian copyright. During litigation in France the defendant argued that the consequence of the regime of article 2(7) of the Berne Convention was that the under these circumstances the design was not protected by French copyright either. In reply to a request for a preliminary ruling from the French court the Court of Justice ruled that using the country of origin as a distinguishing criterion was not allowed since it essentially resulted in indirect discrimination on grounds of nationality. Thus, the Court made it clear that it supports a broad application of the European non-discrimination principle.

Sony v Falcon 2009 (IPPT20090120). In this case the non-discrimination principle did not officially play a role but it seems to me that the ruling illustrates the broad application of that rule, in this case in connection with article 10 of the Term of Protection Directive of 2006. The Advocate General also referred to the judgment in Phil Collins in his opinion (under 47). The case was about the issue whether the 1965 album “Bringing It All Back Home” by the American artist Bob Dylan could be protected by a German related right in phonograms given that Germany did not recognize such rights for music recordings produced prior to 1 January 1966. The Court of Justice first of all considered pursuant to article 10 of the Term of Protection Directive it is only required that the recording concerned was at least protected in one Member State prior to 1 July 1965 and that it is not relevant whether or not the recording was actually protected in the Member State in which the protection is sought (under 22). The Court then considered that it is also not relevant whether or not the holder of such copyrights or related rights is a Community national nor whether this holder was protected in the Member State in which the protection is sought. The judgment learns that it is only relevant that the recording concerned was protected under national law in at least one Member State prior to 1 July 1965 irrespective of the nationality of the holder of that right.

European non-discrimination. In view of these cases, it is clear that the European non-discrimination principle is one of the pillars of European law and that the case law of the Court of Justice learns that a broad application of this principle is required.