Janssen van Raay, James

Archive of European Integration

,fr/@.1
European Communities
EUROPEAN PARLIAMENT
DOCUMENT 1-?16184
Wbrking Documents
1984- l98s
REPORT
drawn up on behaLf of the LegaL Affairs
on United Kingdom Copyright Design Lau
Rapporteur: Mr James JANSSEN VAN RAAY
Commi ttee
PE 89.5791fin.

At jts sitting of 10 October 1983, the European Parliament referred
the motion for a resoLution by Mr RogaIta on united Kingdom copyright
design Law (Doc. 1-746183) to the LegaL Affairs Committee.
At its meeting of19 October 1983, the committee appointed Mr. Janssen
van Raay rapporteur.
The committee examined the draft report at jts meeting of 24 and
25 Apri L 1984, and adopted it unanimousty at this meeting.
The folowing were present at the vote: Mrs VeiL, Chairman;
Messrs Luster, Turner and chambeiron, vice-chairmen; Mr Tyrrett, acting
rapporteurl Messrs DrAngelosante and De Gucht, Mrs Macciocchi, Messrs MaIang16,
Siegterschmidt and Vi6.
This report was tabLed on 2 May 19E4.
The deadLine for the tabting of amendments to this report appears in
the draft agenda for the part-session at uhich it wiLL be debated.
-3- PE 89.5791fin.
CONTENTS
RESOLUTION
STATEMENT
for a resotution (Doc . 1-746183) 
".. "..
PagE
5A. IqOTION FOR A
B. EXPLANATORY
ANNEX: Itlotion
7
1Z
-4
PE 89.579ttin.
The LegaL Affairs
foLLowing motion
A
Comm'ittee hereby submits
for a resolution together
to the European ParLiament the
with expLanatory statement:
United Kingdom
The EucqBean-Par!ieE9Q!,
- having regard to the motion
copyright design Law (Doc-
u9uqN-E9E-A-BElqtuUqN
on
Copyright Design Law
for a resoLution on United Kingdom
1-746t83),
- having regard to the jurisprudence of the Court of Justice of the
European Communities onnationaL inteLLectuaL property rights and
Community taw, and in particutarits decis'ion of 14 September 1982
in Case 144181 (Kegf!eep-9'V. v NeOgy-KeCn-9fl!S-E=V.),
- having regard to the reLevant United Kingdom Government pubL'ications
on the subject of inteLLectuaL property rights,
- having regard to the position of the commiss'ion of the European
Communities as expressed in its ansh,ers to written questions by
Members of the European Partiamentrl
- having regard to the report of the LegaL Affairs Committee(Doc.1-216t8Q,
A. whereas it has long been estabLished that the exercise of national
'inteLtectuaL property rights can, in some circumstances, constitute
a vioLation of Community Lar,
B. uhereas imports into the United Kingdom of certain types of goods
are being impeded by the exercise or threatened exercise of rights
arising from provisions for copyright protection.on industriaI
designs in that Member State,
C. whereas the appLicat'ion of Community law to this factuat situation
has not yet been authoritativeLy dec'ided upon,
D. whereas both the authorities in the United Kingdom and the Commission
of the European Communities are current[y examining the probLems to
which the present United Kingdom Legis[ation gives rise,
See, for exampIe
W.Q. No. E55/83
W.Q. No. 856183
W.Q. No 2017182
by Mr Von Wogau,
by Mr Von Wogau,
by llr Sea L : 0J C 189,
0J c 335, 12 December
0J C 326, 30 November
-5-
14 JuLy 19E3, p.7;
19E3, page 17;
1983, page 6
PE 89.5791tin.
1. CaLLs upon the Member States to ensure the fuLlest respect for the
prov.isions of community Law, in particuLar, reLating to the free
movement of goods and the maintenance of competition, in their
Leg.isLation on protection fo.r cbpyright'on industriaL designs;
2. CaLts upon the commission to exercise fuLLy its duty as guardian of
theTreatytoensurethefuLLestrespectfor'theprovisionsof
Community LaH, to fuLLy investigate individuaL compLaints of
breaches of community Larr, and to take the appropriate action within
a reasonabLe Period of time;
3. Notes that a number of questionsconcerning the apptication of
Community Law and the exercise of intetLectuaL property rights
arising from the Law of the United Kingdom on protectjon for
copyright on industriaL designs have been'raised;
4. CaLLs upon the commission to examine the situation of functionaI
articLes in its forthcoming green paper on copyright and design
protection as an area deserving priority consideration and, if
necessary, Leg'isLative action at Community LeveL;
5. Instructs its President to forward this resoLution to the counciL
and the Commission of the European Communities'
-6- PE 89.579 ltin.
BEXPLANATORY STATEMENT
In!redse!lea
1. The motion for a resotution (Doc.1-746/E3) tabted by Mr RogatLa
raises a number of compLex [egaI issues concerning the exercise of
nationaI intettectuaL property rights to prevent the importation of
certa"in types of goods into one Member State of the Conmunity. l4r RogatLa
atIe<1es that the bchaviour of certain Brit ish manu{,]ctrrrers, reLyin0 on
therr rights under British [aw, may constitute a barrier to the free
movement of goods not justifiabLe under Artjcte j6 EEC and,'is capabte
of amounting to an abuse of a dominant position contrary to ArticLe 86
of the Treaty of Rome". He therefore calts upon the Commission to
propose a directive to harmonize the taws of the Member States on copy-
right in the design of functionat articies.
?. It shoutd also be noted, though the r,rotion for d resolution does not
mention this expresslY, that the continuance in {orce by the united Kingdom
of IegaI provisions rhich g'iv'e r.ise to viotations of community tau
rcutcj a[so be consicjered a breach by the United Kingdom of its obtigations
under ArticLe 5 of the EEC Treaty, by which the Member states are bound to
take "atI appropriate measures, whether generaI or particuLaq, to ensure
futfitment of the obLigations arising out of this Treaty,,and to
"faci titate the .rchievement of the Community, s tasks,,.
i' The expression "functionaL articLes" is understood to describe those
articles whose design is dictated by their funetion; this indLude! .,,.
many types of spare parts and especiaLLy spare parts for cars and for
e[ectricat goods- under united Kingdom [aw, functionaI articles are
excLuded from the procedure for design registration (Registration of
Design Act 1949 and copyright Design Act 1g6il; they are however, er.igibLefor fuil. copyright protection such as is provided tor, say, originaLIiterary or musicaL works, notwithstanding their tack of,'artistic quaIity,,if derived either from an originaI engineering drawing or from an originat
three-dimensionaI prototype. T.he term l,reproduction,' for the
-7- PE 89.579/f in.
purposes of copyright covers two to three or three to two dimension form
conversion and hence any copying of the articLe wouLd amount to an
infringement of the copyright in the design.
4. The resulting protection for purely functional articles is in some
respects greater than that which can be accorded registered designs or
patents. The hoLder of the copyright in the drawing of a functionaL
art'icLe giving h'im the right to prevent infringement in three dimensionaL
form can cLaim compensation estimated on the basis of the SaleS of a
product rather than on the pggfllg gLeaned from the saLes; the protect'ion
Lasts for 50 as opposed to 15 years; yet to acquire the reg'istration of
a design a fixed procedure must be fotlowed and a number of conditions
must be satisfied, whiLe copyright protection for functionaL articLes
is acquired automaticatIy.
Dssr gn-sspynsh!-pr9!9s!r9n-rn-9!het-EsqEsr-!!e!es
5" The Commission wi[[ have to compare the s'ituation in Britain with
that in the other Member States where different degrees or types of
protection appear to exist (apart from Iretand which partiatLy fo[lows
United Kingdom Law).
App!rse!ten-eI_qeEEsu.!y-!el
6. The Limits of the appLication of Community Law to the area of design
protect'ion has recentLy been examined by the European Court of Just.ice
in a reference under ArticLe 177 EEC from a Dutch court (Case 144181"
19E2 EcR, page 2E53). The court of Justice noted that',the protection
of designs comes under the protection of industriaL and commerciaL property
w'ithin the meaning of ArticLe 3d'feec treaty]l"inasmrch as its aim is to
define exctusive rights which are characteristic of that property,,.
7- 0n the question of whether a particu[ar nationaL Law (in this case
the Uniform Benelux Law on Designs) comeswithin the scope of Articl.e J6,
the Court couLd onty state that
"in the present state of community Law and in the absence of
community standard'ization or of a harmonization of Laws the
determination of the conditions and procedures under which
protection of designs is granteci is a matter for nationaL ru[es',.
(NengX_Keen_9f!!S 19EZ E.c.R. 285s, at 2871)
-E- PE E9 .5791f in.
8. It coutd be argued on the basis of this decision that the
United Kingdom copyright provisions do not come within the scope of
Articl,e 36 on the protection of industriaL and commerciaI property
preciseLy because the exctusive rights protected might be said not
to be characteristic of that property, either in most of the other
Member States or in terms of the genera[ scheme of
United Kingdom intettectuaI property Law. Indeed, it may be argued that
no copyright design protection for functionaI articLes is either necessary
or desirabte, or that were the European Court of Justice seized of a
question on the United Kingdom Law, it might just decide differentty from
the Netgy-@O-9.iLts case.
Bssi!ren-ht!hst!e-!aEen-bv-!he-9euuisgieo
9. In his motion for a resolution, Mr RogaLLa raises two types of
potentiaI viotation of the EEC Treaty, reLating to the ruLes of freedom
of movement of goods (ArticLes 30 to 34) and the prohibitionon the
abuse of a dominant position (ArticLe 86)" The possibLe appLication of
ArticLe 36, which attows derogations from the ruLes on free movement of
goods, is aIso considered.
10. As guardian of the Treaty, it is for the Commission of the
European Communities, under the supervis'ion of the Court, to estabLish
the existence of such violations of Community taw as may occuD rather
than the European ParLiament or its committees. In answer to a number of
written questions, the Commission has already hinted that there is a
certain amount of justification for the vietrs expressed by ltlr Rogatta. In
answer to lllritten Question No. 856/83 by Mr Von Uogau, the Commission
noted that
"'United Kingdom copyright taw is being used to prevent the marketing
there of certain functionaL objects such as spare parts fort 
,r.hines. As a consequence, imports of such products from other
Member States have in some cases been prevented"l'
The Commission does not indicate, however, what action it has taken to
aboLish such hindrances to the importation of functionaL artictes into
United Kingdom as cannot be justified by reference to ArticLe 36 EEC.
11. In a subsequent answer to another written question by the same member,
the Commiss'ion has indicated that it considers "that the use made of
industriaL property Laws incLuding copyright taws may in certain circumstances
constitute a disguised restriction on trade between the Member States uithin
T-----------
'OJ C 3?62 50 lYovember 19E3, Page 6
-9- PE 89.579 lf in.
the meaning of ArticLe 36. In order to reach sucn a concLusion, houever,
each case must be examined in the Iight of its particuLar facts"l-
The committee awa'its with interest the concLusion of the examination of
a number of such cases ulhich have aIreadybeenbrought to the attention
of the Commission.
12. As regards the possib[e breaches of ArticLe E6, the Commission has
indicated that the appL'icabi ['ity of this articte depends not onLy on the
industriaL orinteLLectuaI property rights in question, but atso on the
actuaL market conditions and the possibitity of substituting a given
product for the product protected by the property rights; hence "the
enforcement of a copyright is not of itself an abuse of market pohler.
The dec'isive question is whether the nationaL right as such is compatibte
w'i th the Treaty's prov'i sionS". In 'i tS answelto the Sante question, the
Comrnission has aLso opined that
"substantiaL differences in the extent of industriaI and inteLLectuaL
property rights protected by Member States are undesirabLe from the
point of view of Community Law, in part'icular of the ruLes on free
movement of goods and on competition"2.
Negessi!v-lqr-e-drcee!rve-e0-eepyrish!-design-pce!ss!ie!
13. The subject of nationaL inteLLectuat property rights and their
reLationship with Community Lau is a rather vast one. It is cLear that the present
uncertain state of affaiiris in the United Kingciom, clescribed in the mot.ion for
a resotution by Mr RogaLLarcannot be aLLowed to subsist; it is to be hoped
that the Commission and the United K'ingdom Government are making some
headuray in their negotiations and that the Commission is taking every
step 'in 'its pohrer to prevent breaches of Communi ty Law, i nc Ludi ng a thorough
and forcefuI examination of the individuat compLaints to which paragraphs
D and E of the motion for a resolut'ion advert.
14. The probLem of des'ign copyright has not yet shown itsetf to be of
generaLized extent throughout the European Community and it wouLd, therefore,
be unw'ise to take toohasty a decision on the desirabiLity of a directive on
copyright design protect'ion. Not on[y must the question of whether
Community LegisLation is necessary be examined (there are those who feeI
that the instruments provided by the EEC Treaty and derived teg'isLation
are adequate and that further legisLation r,loutd be mereLy a substitute for
effective act'ion), but if the repLy were affirmative, the form and content of
the necessary measure or measures must aLso be carefuLLy considered.
T-----------0J C 335, 12 December 1983, pages 17-18)
'oJ c 189, 14 JuLy 1983, pages 7-B
- 10 - PE E9.579lfin.
15. In the United Kingdom itseLf, it has al.ready been perceived in sor"
officiaL circtes that the "design copyright anomaLy" does not ensure the
best conditions of competition. In JuLy 19E1, a consuLtative document
on the "Reform of the Law reLating to Copyright, Designs and
Performers Protection" Uas presented to ParLiament by the Secretary
of State for Trade, which indicated that "the pureLy functionat shouLd
not be protected against copyingr indeed unLess it t
attracts patent protection as being inventive it shouLd not be protected
at atL,,1. lrlore recentLy in the report on "Inte[[ectuaL Property R'ights and
Innovation,', prepared by the Chief Scientific Officer in the Cabinet, presented
to the United KinEdom Partiament by the Prime Flinister in December 19E3, it uas
recommended that "there shoutd be further examination of the feasibitity
... of repLacing design copyright with registered designs as the inteLLectuaL
property right avaitabLe for functionaL articLes manufactured in quantity'a-
16. For its part, the Commission has aLready taken the first botd step
towards the harmonization of nationaL Laws on inteLLectuat property'in its
proposaI for a first directive to approximate the Laus of the Member States
reLating to trade marks (oJ c 351, 30 December 19EU, page 1), a step
which ParLiament approved whoLeheartedLy3. The area of copyright is
currentLy under examination by the Commission with a v'iew to the pubLication,
expected touard the Latter end of 19E4, of a comprehensive green paper
which shoutd identify key probLems for Corrrnunity Law in this fieLd and out[ine
a number of possibte soLutions. incLuding for the copyright protection of
functionat articLes.
11. 1;1hite the present expLanatory statement deats exctusiveLy uith the
situation of the taw of the United Kingdom on design copyright and the
retevant provisions of Community [aw, the principLes upon which it'is
based are of generat appLication. This is refLected in the motion for a
reso Lut i on.
1cmnd. 8302,
Zcmnd. 9117,
3o.t c 3or, 14
H.M.S.0., London 1981
H.M.S.0., London 1983
November 19E3, page 66: TURNER report, Doc. 1-6111E3
-11 - PE 89.5791fin.
lvlotion for a ResoLution (Doc. 1-746183)
tabLed by Mr 'RogaLLa
pursuant to RuLe 47 of the RuLes of Procedure
on the United Kingdom copyright design [aw
xr{NF X
The Eurooean Partiame!!,
A. having regard to the Commission'S ansrer to ilritten Ouestions 2015182'
zo16til2 and 2U17lE} rcJ C 1691? 14.7.E3), in rhich it indic6ted that
United Kingooro tegisLation rhich confers copyrignt protection for des'igns
of functionaL articLes constitutes at teast a potentiat barrier to traoe
betreen l'lember States,
B. rhereas the untied Kingdon is the onLy ilemoer State except IreIand vhich
has copyright l.ar rhich granrs protect'i on for oesigns of functionat art'i ctes,
c. uhereas the copyright Lau of aLt other r.temoer States requires some art'i stic
des'i gn betore protection is granteo,
o. rhereas the United Kingdom copyright tar pernits certain manufacturers to
naintain de facto monopo[ies in the sugpty of parts for their prooucts in the
Uniteo Kingoom by preventing imports of ccrnpeting products from other l4emDer
States rhere they are in free circuLation,
E- yhereas enforcement by a manufacturer of its copyright in drawings of funct'ionaL
articIes is capaoIe of amounting to an aouse of a Oominant position contrary
to Article 86 of the TreatY of Rcme,
F. Hnereas it is probaote that copyright in such designs does not constitute
industriaL or commerciat property unoer EEC Law (rrticte 36), since it is
unique to the United Kingoom and Iretano,
1. Cau.s on the Comm'i ss'i on to make prooosats f or a directive harmonising the Laws
of the Member States retating to cooyright in the oesign of funct'ionaI articLes,
requiring such oesign to possess a certain oegree of noveLty or artistic merit
before it receives copyright oroEect ion;
2. :nstructs lts Pres'ioent to forHaro thrs resoLution Eo rhe CounciL anO tne
icmmissron of the European Ccmmunities.
- 
'l? 
- PE 89.5791f in./Ann.


Report drawn up on behalf of the Legal Affairs Committee on United Kingdom Copyright Design Law. Working Documents 1984-85, Document 1-216/84, 7 May 1984

,fr/@.1European CommunitiesEUROPEAN PARLIAMENTDOCUMENT 1-?16184Wbrking Documents1984- l98sREPORTdrawn up on behaLf of the LegaL Affairson United Kingdom Copyright Design LauRapporteur: Mr James JANSSEN VAN RAAYCommi tteePE 89.5791fin.At jts sitting of 10 October 1983, the European Parliament referredthe motion for a resoLution by Mr RogaIta on united Kingdom copyrightdesign Law (Doc. 1-746183) to the LegaL Affairs Committee.At its meeting of19 October 1983, the committee appointed Mr. Janssenvan Raay rapporteur.The committee examined the draft report at jts meeting of 24 and25 Apri L 1984, and adopted it unanimousty at this meeting.The folowing were present at the vote: Mrs VeiL, Chairman;Messrs Luster, Turner and chambeiron, vice-chairmen; Mr Tyrrett, actingrapporteurl Messrs DrAngelosante and De Gucht, Mrs Macciocchi, Messrs MaIang16,Siegterschmidt and Vi6.This report was tabLed on 2 May 19E4.The deadLine for the tabting of amendments to this report appears inthe draft agenda for the part-session at uhich it wiLL be debated.-3- PE 89.5791fin.CONTENTSRESOLUTIONSTATEMENTfor a resotution (Doc . 1-746183) ".. "..PagE5A. IqOTION FOR AB. EXPLANATORYANNEX: Itlotion71Z-4PE 89.579ttin.The LegaL AffairsfoLLowing motionAComm'ittee hereby submitsfor a resolution togetherto the European ParLiament thewith expLanatory statement:United KingdomThe EucqBean-Par!ieE9Q!,- having regard to the motioncopyright design Law (Doc-u9uqN-E9E-A-BElqtuUqNonCopyright Design Lawfor a resoLution on United Kingdom1-746t83),- having regard to the jurisprudence of the Court of Justice of theEuropean Communities onnationaL inteLLectuaL property rights andCommunity taw, and in particutarits decis'ion of 14 September 1982in Case 144181 (Kegf!eep-9'V. v NeOgy-KeCn-9fl!S-E=V.),- having regard to the reLevant United Kingdom Government pubL'icationson the subject of inteLLectuaL property rights,- having regard to the position of the commiss'ion of the EuropeanCommunities as expressed in its ansh,ers to written questions byMembers of the European Partiamentrl- having regard to the report of the LegaL Affairs Committee(Doc.1-216t8Q,A. whereas it has long been estabLished that the exercise of national'inteLtectuaL property rights can, in some circumstances, constitutea vioLation of Community Lar,B. uhereas imports into the United Kingdom of certain types of goodsare being impeded by the exercise or threatened exercise of rightsarising from provisions for copyright protection.on industriaIdesigns in that Member State,C. whereas the appLicat'ion of Community law to this factuat situationhas not yet been authoritativeLy dec'ided upon,D. whereas both the authorities in the United Kingdom and the Commissionof the European Communities are current[y examining the probLems towhich the present United Kingdom Legis[ation gives rise,See, for exampIeW.Q. No. E55/83W.Q. No. 856183W.Q. No 2017182by Mr Von Wogau,by Mr Von Wogau,by llr Sea L : 0J C 189,0J c 335, 12 December0J C 326, 30 November-5-14 JuLy 19E3, p.7;19E3, page 17;1983, page 6PE 89.5791tin.1. CaLLs upon the Member States to ensure the fuLlest respect for theprov.isions of community Law, in particuLar, reLating to the freemovement of goods and the maintenance of competition, in theirLeg.isLation on protection fo.r cbpyright'on industriaL designs;2. CaLts upon the commission to exercise fuLLy its duty as guardian oftheTreatytoensurethefuLLestrespectfor'theprovisionsofCommunity LaH, to fuLLy investigate individuaL compLaints ofbreaches of community Larr, and to take the appropriate action withina reasonabLe Period of time;3. Notes that a number of questionsconcerning the apptication ofCommunity Law and the exercise of intetLectuaL property rightsarising from the Law of the United Kingdom on protectjon forcopyright on industriaL designs have been'raised;4. CaLLs upon the commission to examine the situation of functionaIarticLes in its forthcoming green paper on copyright and designprotection as an area deserving priority consideration and, ifnecessary, Leg'isLative action at Community LeveL;5. Instructs its President to forward this resoLution to the counciLand the Commission of the European Communities'-6- PE 89.579 ltin.BEXPLANATORY STATEMENTIn!redse!lea1. The motion for a resotution (Doc.1-746/E3) tabted by Mr RogatLaraises a number of compLex [egaI issues concerning the exercise ofnationaI intettectuaL property rights to prevent the importation ofcerta"in types of goods into one Member State of the Conmunity. l4r RogatLaatIe<1es that the bchaviour of certain Brit ish manu{,]ctrrrers, reLyin0 ontherr rights under British [aw, may constitute a barrier to the freemovement of goods not justifiabLe under Artjcte j6 EEC and,'is capabteof amounting to an abuse of a dominant position contrary to ArticLe 86of the Treaty of Rome". He therefore calts upon the Commission topropose a directive to harmonize the taws of the Member States on copy-right in the design of functionat articies.?. It shoutd also be noted, though the r,rotion for d resolution does notmention this expresslY, that the continuance in {orce by the united Kingdomof IegaI provisions rhich g'iv'e r.ise to viotations of community taurcutcj a[so be consicjered a breach by the United Kingdom of its obtigationsunder ArticLe 5 of the EEC Treaty, by which the Member states are bound totake "atI appropriate measures, whether generaI or particuLaq, to ensurefutfitment of the obLigations arising out of this Treaty,,and to"faci titate the .rchievement of the Community, s tasks,,.i' The expression "functionaL articLes" is understood to describe thosearticles whose design is dictated by their funetion; this indLude! .,,.many types of spare parts and especiaLLy spare parts for cars and fore[ectricat goods- under united Kingdom [aw, functionaI articles areexcLuded from the procedure for design registration (Registration ofDesign Act 1949 and copyright Design Act 1g6il; they are however, er.igibLefor fuil. copyright protection such as is provided tor, say, originaLIiterary or musicaL works, notwithstanding their tack of,'artistic quaIity,,if derived either from an originaI engineering drawing or from an originatthree-dimensionaI prototype. T.he term l,reproduction,' for the-7- PE 89.579/f in.purposes of copyright covers two to three or three to two dimension formconversion and hence any copying of the articLe wouLd amount to aninfringement of the copyright in the design.4. The resulting protection for purely functional articles is in somerespects greater than that which can be accorded registered designs orpatents. The hoLder of the copyright in the drawing of a functionaLart'icLe giving h'im the right to prevent infringement in three dimensionaLform can cLaim compensation estimated on the basis of the SaleS of aproduct rather than on the pggfllg gLeaned from the saLes; the protect'ionLasts for 50 as opposed to 15 years; yet to acquire the reg'istration ofa design a fixed procedure must be fotlowed and a number of conditionsmust be satisfied, whiLe copyright protection for functionaL articLesis acquired automaticatIy.Dssr gn-sspynsh!-pr9!9s!r9n-rn-9!het-EsqEsr-!!e!es5" The Commission wi[[ have to compare the s'ituation in Britain withthat in the other Member States where different degrees or types ofprotection appear to exist (apart from Iretand which partiatLy fo[lowsUnited Kingdom Law).App!rse!ten-eI_qeEEsu.!y-!el6. The Limits of the appLication of Community Law to the area of designprotect'ion has recentLy been examined by the European Court of Just.icein a reference under ArticLe 177 EEC from a Dutch court (Case 144181"19E2 EcR, page 2E53). The court of Justice noted that',the protectionof designs comes under the protection of industriaL and commerciaL propertyw'ithin the meaning of ArticLe 3d'feec treaty]l"inasmrch as its aim is todefine exctusive rights which are characteristic of that property,,.7- 0n the question of whether a particu[ar nationaL Law (in this casethe Uniform Benelux Law on Designs) comeswithin the scope of Articl.e J6,the Court couLd onty state that"in the present state of community Law and in the absence ofcommunity standard'ization or of a harmonization of Laws thedetermination of the conditions and procedures under whichprotection of designs is granteci is a matter for nationaL ru[es',.(NengX_Keen_9f!!S 19EZ E.c.R. 285s, at 2871)-E- PE E9 .5791f in.8. It coutd be argued on the basis of this decision that theUnited Kingdom copyright provisions do not come within the scope ofArticl,e 36 on the protection of industriaL and commerciaI propertypreciseLy because the exctusive rights protected might be said notto be characteristic of that property, either in most of the otherMember States or in terms of the genera[ scheme ofUnited Kingdom intettectuaI property Law. Indeed, it may be argued thatno copyright design protection for functionaI articLes is either necessaryor desirabte, or that were the European Court of Justice seized of aquestion on the United Kingdom Law, it might just decide differentty fromthe Netgy-@O-9.iLts case.Bssi!ren-ht!hst!e-!aEen-bv-!he-9euuisgieo9. In his motion for a resolution, Mr RogaLLa raises two types ofpotentiaI viotation of the EEC Treaty, reLating to the ruLes of freedomof movement of goods (ArticLes 30 to 34) and the prohibitionon theabuse of a dominant position (ArticLe 86)" The possibLe appLication ofArticLe 36, which attows derogations from the ruLes on free movement ofgoods, is aIso considered.10. As guardian of the Treaty, it is for the Commission of theEuropean Communities, under the supervis'ion of the Court, to estabLishthe existence of such violations of Community taw as may occuD ratherthan the European ParLiament or its committees. In answer to a number ofwritten questions, the Commission has already hinted that there is acertain amount of justification for the vietrs expressed by ltlr Rogatta. Inanswer to lllritten Question No. 856/83 by Mr Von Uogau, the Commissionnoted that"'United Kingdom copyright taw is being used to prevent the marketingthere of certain functionaL objects such as spare parts fort ,r.hines. As a consequence, imports of such products from otherMember States have in some cases been prevented"l'The Commission does not indicate, however, what action it has taken toaboLish such hindrances to the importation of functionaL artictes intoUnited Kingdom as cannot be justified by reference to ArticLe 36 EEC.11. In a subsequent answer to another written question by the same member,the Commiss'ion has indicated that it considers "that the use made ofindustriaL property Laws incLuding copyright taws may in certain circumstancesconstitute a disguised restriction on trade between the Member States uithinT-----------'OJ C 3?62 50 lYovember 19E3, Page 6-9- PE 89.579 lf in.the meaning of ArticLe 36. In order to reach sucn a concLusion, houever,each case must be examined in the Iight of its particuLar facts"l-The committee awa'its with interest the concLusion of the examination ofa number of such cases ulhich have aIreadybeenbrought to the attentionof the Commission.12. As regards the possib[e breaches of ArticLe E6, the Commission hasindicated that the appL'icabi ['ity of this articte depends not onLy on theindustriaL orinteLLectuaI property rights in question, but atso on theactuaL market conditions and the possibitity of substituting a givenproduct for the product protected by the property rights; hence "theenforcement of a copyright is not of itself an abuse of market pohler.The dec'isive question is whether the nationaL right as such is compatibtew'i th the Treaty's prov'i sionS". In 'i tS answelto the Sante question, theComrnission has aLso opined that"substantiaL differences in the extent of industriaI and inteLLectuaLproperty rights protected by Member States are undesirabLe from thepoint of view of Community Law, in part'icular of the ruLes on freemovement of goods and on competition"2.Negessi!v-lqr-e-drcee!rve-e0-eepyrish!-design-pce!ss!ie!13. The subject of nationaL inteLLectuat property rights and theirreLationship with Community Lau is a rather vast one. It is cLear that the presentuncertain state of affaiiris in the United Kingciom, clescribed in the mot.ion fora resotution by Mr RogaLLarcannot be aLLowed to subsist; it is to be hopedthat the Commission and the United K'ingdom Government are making someheaduray in their negotiations and that the Commission is taking everystep 'in 'its pohrer to prevent breaches of Communi ty Law, i nc Ludi ng a thoroughand forcefuI examination of the individuat compLaints to which paragraphsD and E of the motion for a resolut'ion advert.14. The probLem of des'ign copyright has not yet shown itsetf to be ofgeneraLized extent throughout the European Community and it wouLd, therefore,be unw'ise to take toohasty a decision on the desirabiLity of a directive oncopyright design protect'ion. Not on[y must the question of whetherCommunity LegisLation is necessary be examined (there are those who feeIthat the instruments provided by the EEC Treaty and derived teg'isLationare adequate and that further legisLation r,loutd be mereLy a substitute foreffective act'ion), but if the repLy were affirmative, the form and content ofthe necessary measure or measures must aLso be carefuLLy considered.T-----------0J C 335, 12 December 1983, pages 17-18)'oJ c 189, 14 JuLy 1983, pages 7-B- 10 - PE E9.579lfin.15. In the United Kingdom itseLf, it has al.ready been perceived in sor"officiaL circtes that the "design copyright anomaLy" does not ensure thebest conditions of competition. In JuLy 19E1, a consuLtative documenton the "Reform of the Law reLating to Copyright, Designs andPerformers Protection" Uas presented to ParLiament by the Secretaryof State for Trade, which indicated that "the pureLy functionat shouLdnot be protected against copyingr indeed unLess it tattracts patent protection as being inventive it shouLd not be protectedat atL,,1. lrlore recentLy in the report on "Inte[[ectuaL Property R'ights andInnovation,', prepared by the Chief Scientific Officer in the Cabinet, presentedto the United KinEdom Partiament by the Prime Flinister in December 19E3, it uasrecommended that "there shoutd be further examination of the feasibitity... of repLacing design copyright with registered designs as the inteLLectuaLproperty right avaitabLe for functionaL articLes manufactured in quantity'a-16. For its part, the Commission has aLready taken the first botd steptowards the harmonization of nationaL Laws on inteLLectuat property'in itsproposaI for a first directive to approximate the Laus of the Member StatesreLating to trade marks (oJ c 351, 30 December 19EU, page 1), a stepwhich ParLiament approved whoLeheartedLy3. The area of copyright iscurrentLy under examination by the Commission with a v'iew to the pubLication,expected touard the Latter end of 19E4, of a comprehensive green paperwhich shoutd identify key probLems for Corrrnunity Law in this fieLd and out[inea number of possibte soLutions. incLuding for the copyright protection offunctionat articLes.11. 1;1hite the present expLanatory statement deats exctusiveLy uith thesituation of the taw of the United Kingdom on design copyright and theretevant provisions of Community [aw, the principLes upon which it'isbased are of generat appLication. This is refLected in the motion for areso Lut i on.1cmnd. 8302,Zcmnd. 9117,3o.t c 3or, 14H.M.S.0., London 1981H.M.S.0., London 1983November 19E3, page 66: TURNER report, Doc. 1-6111E3-11 - PE 89.5791fin.lvlotion for a ResoLution (Doc. 1-746183)tabLed by Mr 'RogaLLapursuant to RuLe 47 of the RuLes of Procedureon the United Kingdom copyright design [awxr{NF XThe Eurooean Partiame!!,A. having regard to the Commission'S ansrer to ilritten Ouestions 2015182'zo16til2 and 2U17lE} rcJ C 1691? 14.7.E3), in rhich it indic6ted thatUnited Kingooro tegisLation rhich confers copyrignt protection for des'ignsof functionaL articLes constitutes at teast a potentiat barrier to traoebetreen l'lember States,B. rhereas the untied Kingdon is the onLy ilemoer State except IreIand vhichhas copyright l.ar rhich granrs protect'i on for oesigns of functionat art'i ctes,c. uhereas the copyright Lau of aLt other r.temoer States requires some art'i sticdes'i gn betore protection is granteo,o. rhereas the United Kingdom copyright tar pernits certain manufacturers tonaintain de facto monopo[ies in the sugpty of parts for their prooucts in theUniteo Kingoom by preventing imports of ccrnpeting products from other l4emDerStates rhere they are in free circuLation,E- yhereas enforcement by a manufacturer of its copyright in drawings of funct'ionaLarticIes is capaoIe of amounting to an aouse of a Oominant position contraryto Article 86 of the TreatY of Rcme,F. Hnereas it is probaote that copyright in such designs does not constituteindustriaL or commerciat property unoer EEC Law (rrticte 36), since it isunique to the United Kingoom and Iretano,1. Cau.s on the Comm'i ss'i on to make prooosats f or a directive harmonising the Lawsof the Member States retating to cooyright in the oesign of funct'ionaI articLes,requiring such oesign to possess a certain oegree of noveLty or artistic meritbefore it receives copyright oroEect ion;2. :nstructs lts Pres'ioent to forHaro thrs resoLution Eo rhe CounciL anO tneicmmissron of the European Ccmmunities.- 'l? - PE 89.5791f in./Ann.

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Report drawn up on behalf of the Legal Affairs Committee on United Kingdom Copyright Design Law. Working Documents 1984-85, Document 1-216/84, 7 May 1984

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