On 13 November 2018, the Court of Justice of the European Union (CJEU) handed down its judgment in case C-310/17 Levola Hengelo v Smilde Foods.
The CJEU held that copyright does not protect the taste of cheese. This case is important first because it implies that other similar works like perfumes are not copyrightable either and second, because works do not have to fall in rigid categories and therefore more works are protectable. This latter proposition may sound counterintuitive but in fact it is not. It is because continental European countries have a different way of apprehending copyright law than the UK and Ireland do. In the UK and Ireland, until the Levola decision, it was not sufficient for a creation to be an original expression, it needed to fit in one of the eight categories provided in the copyright act. In continental Europe, to be protected by copyright, creations do not have to fall within categories, they just have to be an author’s original expression.
This is why this case came to the CJEU. A Dutch company making spreadable cheese sued a competitor for copyright infringement as it argued their cheese had a similar taste. The competitor counterclaimed that the taste of cheese was not copyrightable. Up to the decision in Levola, Dutch courts had found that perfumes were copyrightable. So why not tastes as well? As long as the creation was their author’s original expression, copyright should protect it. The Dutch cheese-making company sued and the Dutch court asked this very question to the CJEU.
The CJEU replied that apart from being an author’s original expression, a work also had to “be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.” So there are three sufficient and cumulative conditions for a work to be protected by copyright: an (1) original (2) expression (3) identifiable with sufficient precision and objectivity. It concluded that because tastes do not pass this third hurdle, copyright cannot protect them. But it added that if, in the future, technology could identify tastes with enough precision and objectivity, copyright could protect them. So, it did not completely close the door to the protection of tastes and smells. The Court also said that at least literary, pictorial, musical and cinematographic works are presumed to pass the third condition.
What are the consequences of this decision for the UK and Ireland?
This decision is great news for British and Irish artists because it de facto abolishes the requirement of categorisation or at least it is very hard to argue the case does not imply this. This is because it only requires three conditions for a work to be protected by copyright: an (1) original (2) expression (3) identifiable with sufficient precision and objectivity. The work does not even have to fit in the literary and artistic domain, as the Court says that tastes could be protected in future if technology allows. Before Levola, some British and Irish artists were not protected. A famous case is the scene on the album cover of Oasis’s “Be Here Now”1. The album cover can be seen here and consisted of a scene namely a hotel outdoor swimming pool with a Rolls-Royce inside it and arranged around it, a number of ‘objets trouvés’ (a clock, a moped, a phonograph…) and some of the members of the band. The UK courts held that this scene was not protected by copyright because it could not fall in one of the categories of works. It could not be a work of artistic craftsmanship as it was not crafted, it could not be a collage as the objects were not stuck to the ground with glue, it could not be sculpture as it was not carved, modelled or made in any of the other ways in which sculpture is made, and it could not be a dramatic work as there was no action (all objects and persons were static). With Levola, these sorts of scene are now protectable. This means that all sorts of modern, abstract, avant-garde, mixed-media, art works are now falling within the realm of copyright law.
If, as we think, the Levola decision de facto abolishes the categories, it also means that it does not matter in which category these works used to fall; in other words, authors should no longer worry about categories. The purpose of categories is to treat works differently so before Levola, British and Irish authors of artistic works had fewer rights than authors of literary works for instance. This is no longer the case. Before Levola, it mattered if a work could fall into the category of artistic work and literary work at the same time, such as diagrams, which have visual aspects (lines, drawings) and literary elements (code, text next to lines to explain what they mean). Some courts had said a work could fall in both2, some said only in one3. That meant that in some cases the court would decide the copyright in the diagram was infringed but in other cases it was not. Simply because if it was categorised as an artistic work and the act done by the defendant was not restricted by copyright, this act did not infringe the claimant’s work. But if it was categorised as a literary work it would be infringed. This difference of treatment was arguably unfair. Now, this will no longer happen as authors of all works have the same rights. In addition, the main EU legislative instrument (the so-called Information Society Directive 2001/29) in the field of copyright, which the CJEU interpreted in Levola, also does not make differential treatment between works at infringement level. So the UK should not have done so from the moment they were bound by this EU directive anyway.
Another positive aspect of the decision is that the CJEU has clearly stated that the permanency of a work is not relevant. It does not matter how long the work exists, it will be protected if it is an author’s original expression. Some UK courts had required permanence4 but it is now history.
However, the decision is not in all respects positive. One opportunity the CJEU has missed in Levola is to say that tastes and smells are not in the domain of copyright which is, broadly speaking, ‘literary and artistic works’. Indeed, it held that if it is possible in future to identify smells and tastes with enough precision and objectivity, copyright could protect them. However, it is disputable that tastes and smells are ‘literary and artistic works’. Article 2(1) of the Berne Convention, the main convention in the field of copyright, which the EU is bound by, has a non-exhaustive list of works but requires them to be in the literary, scientific and artistic domain. All the examples this article lists are visual or aural. Smells and tastes are not listed. As to the term ‘scientific’, it is well-established that what the Convention had in mind were articles and drawings etc in the scientific domain, such as articles in medical journals. So the word ‘scientific’ does not add anything to the literary and artistic words used in the phrase. Nevertheless, it could be argued that the terms ‘literary and artistic’ are vague and can be very broad especially as article 2(1)’s list is not exhaustive. There is certainly some element of art in making and cooking a cake and in elaborating a perfume. However, it is arguable that smells and tastes should left outside of the protection afforded by copyright law because they are already well protected as trade secrets by the law of confidential information. Just think of the Coca-Cola formula which has withstood the test of time for over a century.
One disputable aspect of the Court’s reasoning is the fact that only smells and tastes do not pass the hurdle of enough precision and objectivity. It may be argued that visual works and maybe even musical works do not pass this hurdle either. For instance, research has shown that men and women, even people in general, do not experience colours in the same way5. So it would have been better for the court to say that smells and tastes are not part of the literary and artistic domain.
Last but not least, ironically, the CJEU by requiring that works be identifiable with enough precision and objectivity, seems to impose a requirement of fixation. This does not affect the UK and Ireland, as the UK and Irish copyright acts require fixation for literary, dramatic and musical works (though not artistic works, but in any case, they almost always are by definition recorded in some material form and fulfil the requirement anyway). But it does for the continental European countries, which do not. Arguably though, this is not what the CJEU had in mind. As the case was about the taste of cheese, it can be confined to its facts. The point the Court wants to make is that smells and tastes, as opposed to literary and artistic works, cannot be easily identifiable. The Advocate General had also pointed out that the Information Society Directive does not require fixation6. It could therefore be argued that the UK cannot keep this requirement. This argument is a bit more tenuous as the Court has not incorporated this statement by the Advocate General. Also, it could be argued instead that since it is not stated in the directive, it was left unharmonized so that Member States have the choice to require it or not. At a recent event where the Levola case was discussed, Judge Ilešič from the CJEU said that fixation is not a requirement under EU copyright law. So it would tend to confirm the position taken by the Advocate General and that the UK cannot keep the requirement of fixation.
If the Brexit deal agreed on this November holds, CJEU decisions are binding until 31/12/2020. After that date, the UK could depart from them7. However, it would be a pity for artists if UK courts revived the categories because copyright, as in the past, would protect fewer works, although they are well worthy of protection.
About the Author
Estelle Derclaye is a Professor of Intellectual Property Law at the University of Nottingham. She is the author of over 100 publications including books in the field of Intellectual Property Law and has done expert work for the UK Intellectual Property Office, the European Commission and national and foreign law firms.”
The author can be contacted at Estelle.email@example.com
1Creation Records v News Group Newspapers  EMLR 444.
2Anacon Corporation v Environmental Research Technology  FSR 659.
3Electronic Techniques (Anglia) Ltd v Critchley Components Ltd  FSR 401.
4See mainly Merchandising Corporation of America v Harpbond Ltd  FSR 32.
5See e.g. https://www.psychologytoday.com/intl/blog/brain-babble/201504/when-it-comes-color-men-women-arent-seeing-eye-eye ; https://www.wired.com/2015/02/science-one-agrees-color-dress/
6Opinion of the Advocate General Whatelet, 25 July 2018, para. 59.
7See also European Union Withdrawal Act, s. 6.