An offer and an advertisement as forms of dissemination of a work in light of Article 4 clause 1 of Directive 2001/29/EC – obviousness or a dilemma?

Abstract

The concept of ‘any form of public dissemination’ of work ‘by way of sale or otherwise’ referred to in Article 4 clause 1 of Directive 2001/29/EC was initially interpreted by the ECJ rather narrowly, and merely excluded situations where the transfer of ownership of work had not been finalised. In the judgment in Peek&Cloppenburg, such approach was adopted only with regards the transfer of ownership, leaving the use of a reproduction of a protected work, and its public exposure in particular, subject to a provision ‘made accessible to the public through a sale’ included in WIPO treaties on copyright, artistic performances and phonograms.

A change came with the judgment in Donner, where the ECJ ruled that the above concept required an independent construction in the European Union law, i.e. one that would apply to transactions within which dissemination took place and which would be distinct from a sale in the meaning of civil law provisions, rather taking into account the prevailing market conditions. Thus
each transaction directed upon providing access to and availability of reproductions of protected works, including advertisements informing of the form of delivery or supplies of reproductions and forms of payment thereof was treated as dissemination.

This new concept became fully-fledged after the judgment delivered in Blomqvist which contained interpretation of the concept ‘using in commercial transactions’ taken from the EU provisions on trademarks, as well as a regulation sanctioning enforcement of IP rights protection. At the same time it concerned interpretation of the above concept in connection with a concept ‘using in commercial transactions’ contained in the EU provisions on trademarks, as well as the regulation on the enforcement of the protection of intellectual property by customs bodies. Recognising the identity of the above concepts, the CJEU ruled that if, pursuant to a national law of a Member State, protection of work from public availability includes its protection against ‘public dissemination’ as well as ‘a sale, lease or use of a reproduction of work is offered, or where they are publicly disseminated otherwise’ all these activities must be considered as disseminating work even if the work originates in a state where such protection is not granted.

Thus the opinion voiced by the General Ombudsman in Dimensione Direct Sales, who allowed inclusion of a statement of an infringement of the binding law prohibiting dissemination of work also in the event of an actual absence of sale if only a transaction prohibited by provisions of that law lies within a context clearly conducive to making a contract. Such interpretation is justified
as authors must be ensured effective control over commercialisation of their works starting from reproduction through trading (circulation) to the exhaustion of copyright.

The concept of using work referred to in Article 17 in connection with Article 6 clause 1 and 3 and Article 50 point 2-3 should be construed likewise.