by Professor Luís Couto Gonçalves, Integrated Member of CEDU

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1. Copyright

In what concerns the copyright, the (now) European Union made a first harmonization effort following a position taken by the European Commission, on its 1998 Green Paper[1] which intended to reinforce the protection of the copyright and  related rights.

Based on this orientation, several directives were adopted: on the legal protection of computer programs[2], on rental right and lending right and on certain rights related to copyright in the field of intellectual property[3]; on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission[4]; on the harmonization of the term of protection of copyright and certain related rights[5]; on the legal protection of databases[6]/[7].

The circumspect nature of these legal instruments was intended in order to avoid the establishment of fundamental principles of copyright. It is true, however, that if we read them combined it is possible to extract some general principles or, at least, the genesis of some of the principles that would appear expressly recognized in the following directives.

A second phase of harmonization was justified by the need to adapt copyright to the digital environment. In 1995, a true reflection was triggered by the publication of the European Commission document entitled “Green paper on Copyright and Related Rights in the Information Society”[8] followed by a complementary Communication on the proposals contained in the first document[9], and the presentation of the first version of a directive proposal on the copyright in the information society. This process culminated in 2001, with the approval of the Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society. Also part of this harmonization logics, there is the approval of a directive on certain permitted uses of orphan works[10]. Accordingly, a similar route would take the approval of a legal instrument of harmonization of the collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market[11].

A third stage regards the harmonization, also of horizontal nature, of the means of protection of intellectual rights – including, therefore, both the copyright and the industrial property rights – seeking to provide the existence of capable means, namely the arrangements for applying provisional measures, which are used in particular to preserve evidence, the calculation of damages, or the arrangements for applying injunctions or the rules[12]. It is also, apparently, a turning point in what concerns the joint treatment of the areas of Copyright and Industrial Right, whenever the problems at stake occur in parallel. Contrarily to what happens with some industrial property rights, the field of Copyright never evolved in terms of the implementation of unitary copyright or related rights. However, in mid-2001, the European Commission acknowledge the possibility of, in parallel with the possible development of the European Copyright Code – including the codification of the several existent directives on the topic and also the reexamination and updating of the set of limits of the exclusive rights that are enshrined in the mentioned directives – examining the viability of the creation of unitary copyrights, even if only of an optional nature, based on Article 118 TFEU[13]. At the end of 2015 – in the name of the goal to build a prosperous European economy and a space where the diverse cultural and intellectual production can “travel” as freely as possible – the Commission reiterates this intention without disregarding the complexities of this goal[14].

2. Industrial Property

The fragile balance between the principle of free circulation of goods and industrial property rights results from the provision of Article 36º TFEU. The European solution admits that the protection of industrial property may constitute an exception to the mentioned principle. However, this results in an exception to the exception. The protection of industrial property (extended to the protection of copyright) cannot represent either an arbitrary mean of discrimination or a disguised restriction for the commerce among the Member States. The legal option is understandable but its concrete application it is not a simple or easy task.

The legislator started by assigning to the ECJ the main and more challengingly role. For summarizing, the ECJ respects the existence of the right of national origin (the so-called “specific object” of each right) but gives itself the right to control the respective exercise. In this sense, for instance, it emerged the principle of exhaustion of industrial and commercial property rights (also including copyrights) according to which since the moment that, directly or indirectly, through a third party with his consent, the holder of the right makes protected products available in the market of the EU, the possibility of controlling the respective commercial circuit is exhausted.

In what concerns industrial property, the increasing need of building an integrated market made clearer that the jurisprudential route was not enough to solve the problem. There was the need for a more efficient way that would not expose the functioning of the market to the risks of a less predictable or reasonable judicial orientation regarding the balance between the principles of free circulation with the respect for the intellectual rights protected by the diverse national legal orders. The right conditions were set for the approval of Directives of approximation of national laws. It is a second stage of evolution. We, therefore, highlight the Directives on trademarks[15], designs[16] and biotechnological inventions[17].

In a third moment (after the TEU, in 1992) of consolidation and improvement of the single market, the road of the legal integration preferably entailed, and still does, the attribution of an European propriety title and the adoption of a Community legal instrument: the Regulation.

At is at stake here is the attribution of a single and unitary supranational title that confers legal certainty to his holder and that does not cause a conflict with the principle of the free circulation of goods.

The first step, and the most important one, was taken with the approval of the Community trademark through the Regulation (EC) No 40/94 of 20 December 1993[18] – amended in the meantime by the Regulation (EC) No 207/2009 of 26 February 2009 (codified version)[19] – and the creation of the Office for Harmonization in the Internal Market (OHIM), based in Alicante. This Office provides the unitary registration of the Community trade mark valid throughout the EU. The system of the Community trademark was aimed at putting an end to the potential conflict between the national trademark and the principle of the free circulation of goods and services.

On January the 5th 2002 the Regulation (EC) No 6/2002 of 12 December 2001, on community designs[20] was published. The OHIM is also in a condition to provide a unitary legal title on this industrial right.

Apart from the community trademark and the community designs, in the present moment, we can highlight some European industrial rights: community plant variety rights[21], geographical indications and designations of origin of agricultural products and foodstuffs[22], designations of origin and protected geographical indications for wine[23], geographical indications of spirit drinks[24], supplementary protection certificate for medicinal products[25] and, more recently, the European patent with unitary effect (“sui-generis” right)[26].

The effective application of the European patent of unitary effect is dependent on the entry into force of the Agreement on the Unified Patent Court (AUPC) of 19 February 2013 under Article 18 paragraph 2 of Regulation (EU) No 1257/2012.

This relation of dependence between the European patent with unitary effect and the Agreement on the Unified Patent Court is fundamental to define the territorial scope of the unitary effect[27]. This effect operates in all Member States that participate in the enhanced cooperation procedure and that acceded to the Agreement on the Unified Patent Court[28]. The need of these two cumulative requirements means that, in practice, the unitary effect may not coincide with the 25 Member States covered, so far, by the enhanced cooperation[29]. In an optimistic projection, the UPC will not be in functional before 2017.

_References_

[1] CEC, Green paper on copyright and challenge of new technologies, COM (88) 172, 16/3/1989.

[2] Council Directive 91/250/EEC of 14 May 1991 codified by the Directive 2009/24 of 23 April 2009, transposed to the Portuguese legal order by Decreto-Lei n.º 252/1994 of 20 October.

[3] Council Directive 92/100/EEC of 19 November 1992 codified Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 and transposed by Decreto-Lei n.º 332/1997 of 27 November.

[4] Council Directive 93/83/EEC of 27 September 1993 transposed by n.º 333/1997 of 27 November.

[5] Council Directive 93/98/EEC of 29 October 1993 codified by Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 and amended by Directive 2011/77/EU of the European Parliament and of the Council of 27 September 2011 amending Directive 2006/116/EC on the term of protection of copyright and certain related rights, transposed by Decreto-Lei n.º 334/97 of 27 November.

[6] Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 transposed by Decreto-Lei n.º 122/2000 of 4 July.

[7] Later would appear the Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art transposed by Lei nº 24/2006, June 30.

[8] CEC, “Green paper on copyright and related rights in the information society, 20/11/1996”, COM(96) 568.

[9] Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works Text with EEA relevance transposed by Lei nº 32/2015 of 24/04/2015.

[10] Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014

[11] Corrigendum to Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004) – OJ L 195, 2.6.2004, p. 16–25.

[12] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

[13] Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions – A Single Market for Intellectual Property Rights. Boosting creativity and innovation to provide economic growth, high quality jobs and first class products and services in Europe of 24/05/2011, COM (2011) 287, p. 11.

[14] Document entitled “Towards a modern, more European copyright framework”, in which it can be read: “The full harmonisation of copyright in the EU, in the form of a single copyright code and a single copyright title, would require substantial changes in the way our rules work today. Areas that have so far been left to the discretion of national legislators would have to be harmonised. Uniform application of the rules would call for a single copyright jurisdiction with its own tribunal, so that inconsistent case law does not lead to more fragmentation. These complexities cannot be a reason to relinquish this vision as a long-term target. Notwithstanding the particularities of copyright and its link with national cultures, difficulties and long lead-times have also accompanied the creation of single titles and single rulebooks in other areas of intellectual property, notably trademarks and patents, where they are now a reality. The EU should pursue this vision for the very same reason it has given itself common copyright legislation: to build the EU’s single market, a thriving European economy and a space where the diverse cultural and intellectual production of Europe travel across the EU as freely as possible”.

[15] Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

[16] Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

[17] Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the Legal Protection of biotechnological inventions.

[18] OJ L 011, 14.1.1994, p. 1)

[19] OJ L 78, de 24/3/2009.

[20] OJ L 3, de 5/1/2002.

[21] Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (OJ L 227, de 1/09/1994)

[22] Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ  L 343, de 14/12/2012). The protected designations of origin and protected geographical indications for wine are under Article 33 and et seq.

[23] Council Regulation (EC) No. 479/2008 of 29 April 2008 on the common organization of the market in wine (OJ L 148 de 6/6/2008). The protected designations of origin and protected geographical indications for wine are set out in Article 33 and et seq.

[24] Regulation (EC) No. 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of spirit drinks (OJ L 39 de 13/2/2008).

[25] Regulation (EC) No. 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products (codified version) repealing Council Regulation (EEC) No. 1768/92 of 18 June 1992 (OJ L 182 de 2/07/1992).

[26] In this sense it was approved Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, covering 25 Member States, with the exception of Spain and Italy for language differences, and Croatia because it acceded to the EU after.

[27] The AUPC entered into force the first day of the fourth month after the deposit of the thirteenth instrument of ratification, acceptance, and approval, on the condition that Germany, France and United Kingdom were three of those countries.

[28] Portugal ratified the Agreement supra by the “Decreto do Presidente da República” nº 90/2015, of August 6 (Presidential decree). It was the eighth country that ratified the agreement after Austria, Belgium, Denmark, France, Luxemburg, Malta and Sweden.

[29] It was the case of Poland that participated in the enhanced cooperation but did not endorsed the AUPC.