IIC (2020) 51:128–136
https://doi.org/10.1007/s40319-019-00887-w
CASE NOTE
Comment on the Judgment of the Danish Supreme
Court Decision – Coop v. K.H. Würtz, Case 171/2017
Jørgen Blomqvist . Morten Rosenmeier .
Jens Schovsbo
Published online: 5 December 2019
Max Planck Institute for Innovation and Competition, Munich 2019
1 The Background of the Case and the Parties’ Allegations
The case concerned the use by Coop Denmark (which operates various chains of
supermarkets) of pictures of food items such as tortilla chips, sausages, canned
tomatoes, etc. on packaging and commercial flyers.1 The food items had been
placed on plates and in bowls made by the Danish ceramic artist Kasper Heie Würtz
who is the owner of the company K.H. Würtz. The visibility of the tableware varied
from one picture to the next. On some of the pictures the plates and bowls were
clearly visible, on others only minor parts could be seen.2
1
The present comment draws on the Danish-language comment by Jørgen Blomqvist and Morten
Rosenmeier in Nordiskt Immateriellt Rättskydd (forthcoming) where detailed references to Danish and
Nordic case law and literature may be found. For a translation of this decision into English see this issue
of IIC at https://doi.org/10.1007/s40319-019-00888-9.
2
All illustrations of the uses are found in the (Danish-language) version of the judgment available at the
Supreme Court’s webpage; see http://www.hoejesteret.dk/hoejesteret/nyheder/Afgorelser/Pages/
Brugafregiimarkedsfoering1.aspx.
J. Blomqvist (&)
Affiliated Professor, Center for Information and Innovation Law (CIIR), University of Copenhagen,
Copenhagen, Denmark
e-mail: Jorgen.Blomqvist@jur.ku.dk
M. Rosenmeier J. Schovsbo
Professor, Center for Information and Innovation Law (CIIR), University of Copenhagen,
Copenhagen, Denmark
e-mail: Morten.Rosenmeier@jur.ku.dk
J. Schovsbo
e-mail: jens.schovsbo@jur.ku.dk
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Comment on the Judgment of the Danish Supreme Court…
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The tableware is all handmade and expensive. The company has devised a
strategy to maintain an exclusive image; therefore, its plates, etc. are only sold in
high-end stores and the company always refuses to accept the use of its tableware in
ads for discount products. Nevertheless, they were used by Coop in a quite large
number of instances without the permission of K.H. Würtz.
This led K.H. Würtz to bring a case alleging that the use by Coop in the
advertisements and on packaging violated the provisions of the Danish Copyright
Act (DKCA). Coop (and the advertising company which was responsible for the use
of the pictures) alleged that the use was permitted. Coop relied on a number of
arguments in support of the legality of its use and in particular the following3:
a. The tableware in question was not protected by copyright at all.
b. The use of the tableware was permitted under the exception in Sec. 23(3)
DKCA, which permits that ‘‘[p]ublished works of art or copies of works of art
that have been transferred to others by the author may be used in newspapers,
periodicals, films and television if the use is of subordinate importance in the
context in question’’.
c. The use of the pictures in the ads was legal because of a legal practice in the
retail business.
d. The use was permitted because of the non-codified legal principle of de minimis
non curat lex (‘‘the law is not concerned with trifles’’).
3
Coop also claimed that the suit was statute-barred. In addition, the case involved the issues of
infringement of the Danish Marketing Practices Act. These issues are not discussed in the following
where focus is on the copyright questions.
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J. Blomqvist et al.
2 Are Würtz’s Products Protected by Copyright?
Both the Maritime and Commercial Court and the Supreme Court found that
Würtz’s tableware qualified for copyright protection as a work. The Maritime and
Commercial Court (which arrived at a similar conclusion in another decision) based
its finding inter alia on a statement from an expert appointed by the Court and on its
own assessment of the items in question. The expert declared inter alia that
‘‘Würtz’s ceramic tableware is handmade pottery of high quality’’ and that ‘‘the
unique combination of a tight recognisable shaping of each object, the unusual and
rarely seen method of glazing and its result as well as the very consequent use of
colours in the tableware in question is a convincing expression of the independent
and personal effort.’’ [our translation]. Furthermore, ‘‘the spotted, speckled or
duo/monochrome surface characterises Würtz ceramic tableware, that appears to be
produced in a manner so that each object is unique, as presumably another material
has been thrown by hand or splashed onto the glaze’’. According to K.H. Würtz’s
own statement, his products result from the use of a process that takes 10 to 15 years
to learn and 10 percent of the products have to be destroyed because of the stringent
quality requirements.
Neither court spent much time on the issue of protection. The originality of the
tableware (based on the standard ‘‘the Authors Own Creation (AOC)’’ test normally
applied by Danish courts) arose from the combination of a specific method of
surface decoration applied to particularly shaped bowls and plates, etc. In other
words, it was the combination of the decoration, the shape of the individual items
and the colour scheme that triggered protection.
The decision that protection applies is consistent with Danish case law regarding
works of applied art, which has set the bar quite low for finding works to be original.
3 Was the Use of the Pictures Permitted by an Exception?
Coop claimed that the use was permitted by Sec. 23(3) DKCA (cited above). This
was turned down by the Supreme Court without much ado. The packings and
commercial flyers in the case were not considered to fall under the scope of
application of the provision. One may add here that commercial flyers of this kind,
often in Danish, are included under the broader term ‘‘tilbuds aviser’’, which
literally translates to ‘‘offer newspapers’’. In reality, however, they are brochures for
the shops in question rather than newspapers of any description. Therefore, so far
the result reached by the Supreme Court corresponds to the precise and narrow
interpretation of limitations and exceptions which is traditionally followed in
Danish law and which also applies under European law.
Section 23(3) DKCA is based on Art. 5(3)(i) InfoSoc Directive. The article
permits exceptions or limitations concerning ‘‘incidental inclusion of a work or
other subject-matter in other material’’. It no doubt follows from the requirement
that the inclusion be ‘‘incidental’’ and that the work must appear to play an
insignificant, inferior role in the subject-matter in which it is included. In other
words, the work must only take up very little room in its new surroundings. It is,
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Comment on the Judgment of the Danish Supreme Court…
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however, an interesting question whether it is a further requirement that the
inclusion must also be unintended. This question was neither addressed by the
parties nor the Court. However, it is assumed by leading commentators that Art.
5(3)(i) does indeed require, not only that the inclusion be insignificant, but also that
it must be unintended.4 If this assumption is correct, Sec. 23(3) DKCA would not be
applicable in the case at hand where it was without doubt that the inclusion was
intended by Coop. The various language versions of the Directive, however, contain
certain nuances which open up Art. 5(3)(i) to interpretation, and in our view it
would not be unproblematic to narrow down the scope of limitations and exceptions
as suggested. In real life it can be very difficult to ascertain which elements of, for
example, a press photo are included intentionally. There are also valid arguments
why even a clearly intentional inclusion of protected elements of a marginal
importance in the actual context should be permitted, for example, because it would
be unreasonably burdensome or impossible due to time pressure to obtain the
required permissions. Obviously, full clarification of this issue would require a
decision from the CJEU.
4 Was the Use of the Pictures Permitted by Practice?
Coop claimed that the use of the advertisements was permitted by a long-standing
practice concerning the advertising industry’s and the convenience goods industry’s
use of objects as staging when the objects are not well-known and do not function as
eye-catchers, but are merely being used for a practical purpose as a natural element
of the environment reproduced. To support this claim Coop relied on statements
from an association of retail companies (‘‘Kreativitet og Kommunikation’’).
Furthermore, Coop relied on examples from commercial flyers and packing and
on consumer surveys carried out regarding Coop’s use of Würtz’s products. The
majority of those interviewed found that Würtz’s bowls and plates constituted
immaterial parts of the Coop ads and did not know of Würtz’s products.
Würtz, on the other hand, argued that no such practice existed and relied inter
alia on a statement from ‘‘Design Denmark’’ (the association of design industries).
In this way, the case raised two interesting questions: (1) are legal practices at all
capable of creating separate limitations to copyright’s exclusivity; and (2) if the first
question is answered in the affirmative, how much does it take for a practice to have
legal effect?
The Supreme Court agreed with the Maritime and Commercial Court that it
‘‘would require strong evidence to establish the existence of a practice that restricts
the author’s rights in his work in relation to what is set out in the Danish Copyright
Act’’. It is likely that this reflected an affirmative answer to the first question.5
However, the Court went on to stress that a limitation based on a practice
4
Michel M. Walther and Silke von Lewinski, European Copyright Law, a Commentary, 2010, Oxford
University Press, Oxford p. 1053.
5
The question whether limitations based on a legal practice must be covered by Art. 5 InfoSoc Directive
is discussed in detail below in Sect. 6.
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J. Blomqvist et al.
presupposes strong evidence. Since the existence of a legally binding practice was
not demonstrated, the Court found that Coop could not rely on such a practice as the
justification for its use. In this way the dismissal of Coop’s claims was not due to a
rejection by way of principle of the suggestion that a limitation to the exclusivity of
copyright could have been developed in practice. The rejection merely reflected the
lack of evidence for such a practice. From this it seems one can assume that had
Coop been able to ‘‘lift the burden of proof’’, it would have succeeded with its
claim.
For this point of the judgment it would have been helpful, however, if the
Supreme Court had reflected more explicitly on the nature of the concepts involved.
According to Danish law, practices may both create rights (or duties) at the level
of statutory law (Danish ‘‘retssædvane’’) and at the level of commercial law (Danish
‘‘kutyme’’ or ‘‘handelssædvane’’). Further, parties can enter into ‘‘implied contracts’’
if they indicate in a non-verbal manner that it is their wish to assume an obligation.
When it comes to practices which reflect ‘‘retssædvaner’’ or ‘‘kutymer’’, according
to Danish law it is not a requirement that the parties have been in contact with each
other or that they have indicated that they agree to the practice. This is only a
requirement as regards implied contracts. Since Würtz, in the case at hand, had on
numerous occasions protested against Coop’s use of their plates, etc., it is clear that
the practice which might have existed in the case could not follow from an implied
contract but that it would have to be based on either a ‘‘retssædvane’’ or a ‘‘kutyme’’.
It is, however, somewhat doubtful which of these would be the relevant concept.
For a statutory limitation to come into effect, the threshold is very high and, for
example, requires proof of a general sense of legal obligation.6 For a commercial
practice to be binding, the threshold is lower and depends on the general behaviour
of the parties in the field. It is not clear which type of limitation would be relevant in
this case. Even though Danish law is open for accepting both types of practices, we
would expect a court to be extremely reluctant to recognise the existence of a
statutory limitation (‘‘retssædvane’’) within an area as tightly regulated as that of
copyright law. Commercial practices have normally been acknowledged in areas
where regulation is scarce, and then based on explicit provisions to that effect.7
Moreover, the acceptance of a more readily applicable assumption that a
‘‘longstanding practice’’ may imply a limitation in the exclusivity offered by the
DKCA would have been quite remarkable from a democratic point of view. Thus,
the limitation provisions of the DKCA are the result of thorough parliamentary
preparation, and this gives them a democratic legitimacy which limitations based on
longstanding practice would in no way possess. It would also have to be seen within
the framework of international conventions (Berne) and the obligations arising out
of the EU which ‘‘highly circumscribe’’ (as per the CJEU in Funke Medien) the
ability of Member States to devise their own limitation in addition to those found in
the directives. However, the judgment does not reflect these constraints.
6
See Rosenmeier and Blomqvist, supra note 1 with references.
7
Ibid.
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5 The De Minimis Principle
The existence of a limitation (in copyright) based on the principle of de minimis non
curat lex (‘‘the law does not concern itself with trifles’’) has been generally assumed
in Nordic law.8
As far as Danish law is concerned the principle is, furthermore, understood in the
theory as including the following three subcategories: Firstly, uses which are trivial
and cannot possibly be assumed to harm the right holder are legal. For this reason
whistling a tune while walking down a busy street does not imply a public
performance of the work. Secondly, uses that are purely incidental and secondary
are legal too. By way of example, it is not considered as copyright infringement if
a TV screen with a running show appears in a movie, or if a book contains a photo
of someone eating from a plate protected by copyright.9 Thirdly, uses which are
completely atypical and not within the general interest lying behind copyright
protection are also free. The existence of this particular category finds support in the
judgment of the Supreme Court reported in Ugeskrift for Retsvæsen 1997.691 H.
Here the Court allowed the depiction of banknotes in advertisements where the
photos showed happy lottery winners throwing money around. The Court explained
that even though the banknotes were protected as works of art, they were primarily
used as ‘‘symbols of wealth’’ and not because of their artistic value. For this reason,
the copying did not infringe copyright.
Apart from the third category on atypical use, none of the other categories – e.g.
trivial and incidental uses – received clear support from the courts. This obviously
implied some legal uncertainties. It was primarily for this reason that the Würtz
decision was eagerly awaited by the interested circles.
As can be seen from the illustrations in the judgment (two of which are
represented above), the visibility of the Würtz tableware differs much from one
picture to the next. Sometimes, the bowls or plates are clearly visible and one sees
the shape and the decoration clearly (such as in the first illustration above). In other
instances, the plates, etc. are blurred and unclear (such as in the second illustration).
Coop claimed that all the pictures were legal under the de minimis principle.
However, both courts found that some of the uses of the tableware infringed
copyright whereas other uses were legal. The Supreme Court explained that it was
common to the uses of the first group that the tableware could be seen clearly and
constituted an important element. For the second group, the use of the plates and
bowls was of secondary importance.
On these points, the judgment is of general interest.
Firstly, the judgment establishes beyond any doubt the existence of the de
minimis principle for uses which are incidental and secondary as part of Danish
copyright law de lege lata. In other words, the provision in Sec. 23(3) DKCA is not
limited to the uses indicated in that provision but applies generally.
8
Supra note 1.
9
This particular category has been stated to find support in Sec. 23(3) DKCA on the use of ‘‘subordinate
importance’’ in newspapers, periodicals, films and television.
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J. Blomqvist et al.
Secondly, the judgment is interesting because the Supreme Court states that it
follows from the three-step test as provided for in Art. 5(5) InfoSoc Directive that the
principle as a non-codified limitation should be interpreted narrowly. The Supreme
Court highlights the fact that the de minimis principle has not been provided for
explicitly by the DKCA (it is an ‘‘uncodified’’ limitation). There is, however, nothing to
suggest that the Court would find that Art. 5(5) should not apply to the interpretation of
‘‘codified’’ limitations and exceptions. Most likely, the Court simply intended the
remark to indicate that even for a non-codified limitation, the general principle of
interpretation applies. In this way the Supreme Court – like other national courts10 –
assumes that Art. 5(5) and the test as it has been incorporated in that provision applies to
the national application of limitations and exceptions in general. In this sense the
principles serve to ‘‘limit the limitation’’. This reading (which is arguably supported by
Recital 44 of the InfoSoc Directive) also reflects a view which has often been stated by
the CJEU viz. that limitations and exceptions should be understood narrowly.11
However, according to the Court such a narrow interpretation must allow the provisions
to attain their objectives, and it must not go beyond what is necessary to achieve it12 or
otherwise endanger the effectiveness of the harmonisation of copyright.13
With its reference to Art. 5(5) InfoSoc Directive the Supreme Court clearly
acknowledges that this Directive defines the legal space within which national
courts may move when deciding concrete issues regarding the limits of copyright
protection and the interface to national law. In this light it is surprising that the
Court did not seek to clarify the legal basis in the InfoSoc Directive for the de
minimis principle; see more on this below.
6 EU Compatibility
To the extent that either practice or the de minimis principle is recognised as a
valid source for limitations and exceptions to the rights under copyright and
related rights that have been harmonised in the EU, the question arises whether
such limitations and exceptions are compatible with Art. 5 InfoSoc Directive. As a
starting point, it seems quite likely that such broad exceptions without any explicit
anchoring in the text of a national statute, can only be accepted insofar as it could
have been enacted in accordance with Art. 5 InfoSoc Directive. One may argue,
however, that respect of established practice is such a fundamental part of the
legal order of the Member States, and so deeply rooted in, for example,
international law,14 that it should be admitted as an independent source of law,
10
See e.g. the decision from the Swedish Supreme Court reported in Nordiskt Immateriellet Rättskydd
2016, p. 305 ff.
11
E.g. C-117/13 (Ulmer); C-527/15 (Filmspeler) para. 62 f.; and C-265/16 (VCAST) para. 31 f. See also
C-435/12 (Stichting de Thuiskopie) para. 20 ff.
12
See e.g. C-145/10 (Painer) para. 129 ff.; and C-469/17 (Funke Medien) in particular para. 49.
13
C-476/17 (Pelham), para. 63.
14
See, for example, Art. 31(3)(b) of the Vienna Convention on the Law of Treaties regarding the role of
subsequent practice in the interpretation of treaties.
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Comment on the Judgment of the Danish Supreme Court…
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supplementing the provision of the Directive. Similarly, the de minimis principle is
a fundamental figure in both national and international law, and therefore it may
be argued that it can supplement statutory provisions even without any explicit
provisions to that effect, just as the fundamental rules on interpretation, for
example, are applied without any explicit provision to that effect.15 This
comparison, however, does not always apply because in principle one cannot
rule out that in the end practices may be so expansive that they override the
required minimum protection beyond what could be reached through interpretation. Not least, in cases where the right owners did not know, and should not have
known, about the development of the practice, it would seem difficult to accept
that others could unilaterally set their protection aside. In such cases there is no
contractual element as there could be in cases where the right owners knew, or
should have known, about the practice, and it is therefore difficult to accept that
any deviation from the protection, if acceptable at all, could go beyond what the
legislator would be free to establish by statute.
CJEU decisions rendered after the decision discussed here also point in the same
direction. In two recent cases, the Grand Chamber stated that
the option open to the Member States of implementing an exception or
limitation to the harmonised rules laid down in Articles 2 and 3 of [the
InfoSoc Directive] is highly circumscribed by the requirements of EU law
[…].
In particular, Member States may provide, in their law, for an exception or
limitation referred to in Article 5(2) and (3) of [the InfoSoc Directive] only if
they comply with all the conditions laid down in that provision […].16
Thus it seems difficult to find a basis for an argument that there would still be
further unwritten rules. It must, therefore, be maintained that both practices and the
de minimis principle can only apply to the extent this is permitted under the InfoSoc
Directive.
In this context, attention is drawn to the provisions in Art. 5(3)(i) regarding
incidental inclusion of a work or other subject-matter in other material and the
catch-all provision in letter (o) regarding uses in certain other cases of minor
importance. The exception in letter (i) was already discussed in relation to the
corresponding rule in Sec. 23(3) DKCA above, and as indicated one may wonder
whether it allows use in cases where it is clearly of minor importance, yet
intentional. That question is also relevant in relation to the de minimis principle. In
our view, there are good reasons to assume this is the case.
Another possible field of application of practices and the de minimis principle are
cases falling under Art. 5(3)(o), which aims at ‘‘certain other cases of minor
importance’’ but at the same time only applies ‘‘where exceptions and limitations
already exist under national law, provided that they only concern analogue uses and
do not affect the free circulation of goods and services within the community […].’’
15
See Jacob Linkis, Dansk Ophavsrets Fleksibilitet, Copenhagen 2016 p. 103 f.
16
C-469/17 (Funke Medien) at 47; C-516/17 (Spiegel Online) at 32 f.
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J. Blomqvist et al.
Without dwelling on the details, we feel confident that this provision only opens up
a very narrow field of application.
7 Concluding Remarks
The Würtz case is basically an infringement case: did Coop use too much of Würtz’s
copyright-protected tableware in its ads, etc.? Courts would normally decide such
cases on the basis of a comparison between the protected work and younger
reproductions. If the more recent work has reused elements of the older work that
are in themselves protected by copyright (i.e. satisfies the principle of originality),
infringement is normally established. After having established the illegality of the
use, the next step would be for courts to see whether the use of the infringement
would be allowed for by a limitation or exception. If applied in the present case,
such analysis would most likely find that since the originality of Würtz’s tableware
(see above) rests with the combination of the shape of the item, the special surface
with its spotted glazing and the general colour scheme, it would only be those
pictures in which sufficient parts of those elements were present in a discernible way
that would infringe. Most likely, such analysis would lead to the same result as that
of the Supreme Court’s approach.
However, Coop did not plead that its use did not fulfil the infringement
requirements. Rather, Coop so to speak went straight to the copyright exceptions,
including the de minimis principle. And since it is a basic rule in Danish law of legal
procedure that civil cases must be decided on the arguments brought forward by the
parties, the Supreme Court most likely felt compelled to base its decision squarely
on the de minimis principle. As seen from a systematic perspective, such an
approach is somewhat unfortunate because it disregards the function of the
limitation and exceptions which is to legalise use that would otherwise constitute an
infringement; indeed, that is why these provisions are called ‘‘limitations’’ and
‘‘exceptions’’. However, if infringement decisions are based on the exceptions
without regard to whether or not there was an infringement in the first place, the
threshold for finding infringement is at risk of being eroded. For this reason, the
decision should be treated with caution when it comes to the issue of infringement.
Moving forward, we suggest that one should stick to the traditional system and
deal primarily with questions of infringement based on a comparison first, and leave
the application of the de minimis principle to the second level of analysis (as an
exception or limitation). If this suggestion is followed, we would expect future case
law on the de minimis principle to be scarce. This does not mean the principle is not
important – it is, but primarily in very special circumstances. The principle in no
way amounts to a general principle of fair use. Rather, the de minimis principle, just
like the fundamental rights norms or competition law, confirms that the copyright
system contains more room for manoeuvre than meets the eye.
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