The European Court of Justice has issued a landmark ruling on what kind of "works" can be protected under European copyright law. The court's Grand Chamber ruled that the taste of a food product cannot be protected, reasoning that taste cannot be objectified and that granting protection would violate the principle of legal certainty. De Brauw successfully defended Dutch company Smilde Foods in this case.

The ruling is of particular interest for companies in the food industry, but may also affect the perfume sector. It could also have wider impact on what can and cannot be copyright-protected.

The taste of a cheese dip

The case at hand concerned the taste of "Heksenkaas", a spreadable dip, containing cream cheese and fresh herbs. This product was created by a Dutch retailer in 2007; all rights in the product were transferred to Levola in 2011. In 2014, Smilde started manufacturing a spreadable dip, containing cream cheese and fresh herbs, currently sold under the name "Wilde Wietzekaas". Levola then launched legal proceedings in the Netherlands, arguing that the production and sale of Wilde Wietzekaas infringed its copyright in the taste of its Heksenkaas product.

The district court hearing the case rejected Levola's claims. Levola then appealed against that judgment to the Arnhem-Leeuwarden Court of Appeal. The court of appeal decided to refer questions to the ECJ for a preliminary ruling.

The ECJ's ruling and reasoning

The referring court's main question was whether the taste of a food product can be protected as a "work" by European copyright law on the basis of the Copyright Directive. The ECJ started its assessment by considering the issue harmonised under the EU Copyright Directive. To be classified as a "work" within the meaning of the Directive, the subject matter must meet the following two conditions:

• The work must be original in the sense that it is the author's own intellectual creation; and
• The work must be the expression of that intellectual creation.

It is the first time the ECJ explicitly mentions "expression" as a requirement for copyright protection. Moreover, the ECJ ruled that the subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, mainly because authorities and third parties must be able to identify the subject matter and, with that, the scope of the copyright monopoly. Since a taste cannot be pinned down with precision and objectivity (in contrast to a literary or cinematographic work, for example) - partly because taste sensations and experiences are subjective and variable - a taste cannot meet the "work" requirements and can therefore not be protected by copyright law.

Food for thought

In paragraph 43 of the decision, the ECJ provides a small opening for copyright protection in the future by reasoning that a precise and objective identification of taste is not possible in the current state of scientific development. This means that the ECJ does not rule out a different outcome if further advanced techniques become available.

The ruling clearly indicates that the principle of legal certainty is important to the ECJ. It explicitly ruled that third parties should be able to clearly identify the subject matter for which protection is sought. This reasoning is similar to the ECJ ruling in Sieckmann, a 2002 case about whether a smell can be protected by a trademark. In that case, the ECJ ruled that because a smell cannot be represented graphically, it cannot provide sufficient legal certainty to third parties, rendering it ineligible for trademark protection. Similarly, the ECJ denied design protection for Jägermeister beakers earlier this year because it was not clear from the filing whether protection was sought for beakers or bottles, or both.

The new ECJ ruling also raises the question about whether copyright protection can extend to a specific smell. In 2006, the Dutch Supreme Court touched upon this issue in Lancôme/Kecofa (click here for the ruling, in Dutch) and ruled that, in principle, a smell can be copyright protected. After Levola/Smilde it remains to be seen whether the Dutch ruling is still viable. After all, one might argue that a smell is as subjective as taste.

Consequences

This judgment of principle by the ECJ shows that only a work which has been expressed in a clear and precise manner, can enjoy copyright protection.

Companies in the food industry should keep in mind that the taste of food products is not protected by European copyright law. However, other types of legal protection can be relied upon, such as patent law (for example, the process for obtaining the taste); trademark law (the product brand or get-up) or trade secrets law (for example, the recipe of the food product). In a previous edition of In context, we reported on the tightening of trade secret rules. In addition, in certain circumstances a company can also rely on the doctrine of slavish copying/passing off.

All in all, we recommend that companies in the food and perfume industries in particular reassess their protection strategy. Please contact us if you need any further help or guidance on the issue.