CJEU: Offering for sale and advertising of designer furniture can infringe distribution right in copyright law

In its judgement C-516/13 dated 13 May 2015 the CJEU ruled that an offer for sale or a targeted advertisement of a copy of a work protected under copyright law can infringe the exclusive distribution right of the copyright owner. The same applies if the copied work is ultimately not purchased, as long as the advertisement invites the consumers of the Member State in which the works are copyright protected to purchase it.

The underlying case was about a dispute between the Italian companies Dimensione Direct Sales Srl (Dimensione) and Knoll International SpA (Knoll), mother company of which is the owner of the exclusive exploitation rights of certain furniture designed by the architects Marcel Breuer and Ludwig Mies van der Rohe (the “Barcelona” series, the “Cantilever Chair” etc.).

Dimensione distributed among others via its German website furniture with an identical design as the furniture by Breuer and van der Rohe. In the light of the original designs being protected by copyright in Germany but not in Italy, Dimensione pointed out in its adverts that the sale of the furniture should take place in Italy. However, Knoll was of the opinion that the advertising of the furniture targeting German consumers already infringes its exclusive distribution right and sought an injunction. 

The German Federal Court of Justice (BGH) therefore asked the CJEU if the distribution right under Art. 4 (1) of the Directive 2001/29 (Directive) included the right to offer copies of the protected works to the public for sale, and whether this included contractual offers only or applied to mere advertising measures, even if the copies were not purchased in the end.

The CJEU pointed out that the notion of “distribution to the public … by sale” in Art. 4 (1) of the Directive has the same meaning as the expression “making available to the public … through sale” in Art. 6 (1) of the WIPO Copyright Treaty (WCT). The Court further argued that also an invitation to submit an offer, or a non-binding advertisement for a protected object falls under the series of actions taken with the objective of selling that object. Hence, a holder of an exclusive right to distribute a protected work can prevent an offer for sale or a targeted advertisement of the original or a copy of that work. The same applied if the copy is not sold in the end, as long as the advertisement invites a domestic consumer to buy the advertised object.

With this decision, the CJEU confirms the position of the BGH and enhances the level of protection of copyrighted works for the whole of Europe.