Ruling of 30 June 2005 of the Court the Second Chamber in Case [C-28/04], Tod’s SpA and Tod’s France SARL v Heyraud SA  ECR I-05781
Referred by [Tribunal de grande instance de Paris – France]
Tod’s is a company established under Italian law which claims to be the proprietor of artistic intellectual property rights in the shoes distributed under the Tod’s and Hogan trade marks. Tod’s France is the distributor of those shoes in France.
Having learnt that Heyraud was offering for sale and selling under the Heyraud name designs of shoes which copied or at least imitated the principal characteristics of the Tod’s and Hogan designs, Tod’s arranged for a bailiff’s report to be drawn up on 8 February 2000. On 13 February 2002, the claimants in the main proceedings brought an action against Heyraud before the referring court.
The subject matter of the main proceedings consists, inter alia, of an action for infringement of registered designs of shoes bearing the Tod’s and Hogan trademarks, against which Heyraud raises a plea of inadmissibility under Article 2(7) of the Berne Convention. Heyraud contends that, under that provision, Tod’s is not entitled to claim copyright protection in France for designs that do not qualify for such protection in Italy.
Tod’s replies, inter alia, that application of the provision in question constitutes discrimination within the meaning of Article 12 EC, now Article 18 TFEU.
The referring court takes the view that the use of the phrase ‘shall be entitled … only’ in the second sentence of Article 2(7) of the Berne Convention has the effect of depriving Union nationals who, in the country of origin of their work, enjoy only the protection granted in respect of designs and models, of the right to bring proceedings based on copyright in the countries of the Union which allow accumulation of protection.
According to that court, while it appears that that provision makes no distinction based on the nationality of the proprietor of the copyright, it remains the case that its scope under Community law is debatable where the country of origin of the ‘published’ work will most commonly be the country of which the author is a national or in which he has his habitual residence, and where the country of origin of an ‘unpublished’ work will, under Article 5(4)(c) of that convention, be the country of which the author is a national.
Equal treatment – Principle of non-discrimination on grounds of nationality – Copyright and related rights/ ‘Does Article 12 … EC … , which lays down the general principle of non-discrimination on grounds of nationality, mean that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinction based on the country of origin of the work?
ANSWER of the COURT:
Article 12 EC, which lays down the general principle of non‑discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work.
REASONING of the Court
First the Court ruled on the admissibility of the action for a preliminary ruling. In this respect, the EU Court stated that under Article 234 TEC it is competent to provide guidance for the national courts when it comes to interpretation of EU law, in this case Article 12 TEC, now Article 18 TFEU.
As regards the question referred by the French court, the Court made reference to its case law, Joined Cases C-92/92 and C-326/92 Phil Collins and Others  ECR I-5145, paragraph 27, and reminded that copyright and related rights, which by reason in particular of their effects on intra-Community trade in goods and services fall within the scope of application of the EC Treaty, are necessarily subject to the general principle of non-discrimination laid down by the first paragraph of Article 12 EC, now article 18 TFEU. Furthermore, the Court regard that the principle of equal treatment prohibits not only overt discrimination by reason of nationality but also all covert forms of discrimination which, by the application of other distinguishing criteria, lead to the same result.
Then the Court examined whether, by adopting a distinguishing criterion based on the country of origin of the work, the application of rules such as those at issue in the main proceedings constitutes indirect discrimination by reason of nationality within the meaning of the settled case law. In this respect, it was noted by the Court that the existence of a link between the country of origin of a work within the meaning of the Berne Convention, on the one hand, and the nationality of the author of that work, on the other, cannot be denied.
As published works are concerned, the country of origin is essentially, as Article 5(4)(a) of the Berne Convention indicates, the country where the work was first published. The author of a work first published in a Member State will, in the majority of cases, be a national of that State, whereas the author of a work published in another Member State will generally be a person who is not a national of the first Member State. As a consequence, the application of rules such as those at issue in the main proceedings is liable to operate mainly to the detriment of nationals of other Member States and thus give rise to indirect discrimination on grounds of nationality.
In respect to the justification issue, the French Government argued that the legitimate aim of the Berne Convention is the protection of literary and artistic works and that Article 2(7) and Article 5(4) of that convention specify the conditions under which such works are to be protected by copyright on the basis of an objective criterion based on the law applicable to the classification of the work. In its view, where a design cannot aspire to classification as an artistic work in the country where it was first published, it is not entitled to such protection in the States party to the Berne Convention since it does not exist as an artistic work. Article 2(7) thus concerns not the detailed rules for the exercise of copyright, but the law applicable to the artistic classification of the work. In its reply the Court stated that it is apparent from Article 5(1) of the Berne Convention, that the purpose is not to determine the applicable law on the protection of literary and artistic works, but to establish, as a general rule, a system of national treatment of the rights appertaining to such works. Moreover, Article 2(7) of that convention contains, for its part, a rule of reciprocity under which a country of the Union grants national treatment, that is to say, twofold protection, only if the country of origin of the work also does so. The Court recalled that it is settled case-law that implementation of the obligations imposed on Member States by the Treaty or secondary legislation cannot be made subject to a condition of reciprocity.
As no further objectives capable of justifying therules such as those at issue in the main proceedings, those rules constitutes indirect discrimination on grounds of nationality prohibited by Article 12 EC, now Article 18 TFEU.
The principle of non-discrimination was assessed by the Court in the light of the general principle of equal treatment. Its worthnoty the part of the Courts’ reasoning related to the reciprocity requirements that are not required under EU law. In this respect the principle of non-discrimination must be applied regardless of the country of origin criteria.