The fleece jacket and the lex loci protectionis: winter is coming
Esprit’s design department had clearly forgotten that the whole point about a design department is that it designs … An identical copy of a Scoth & Soda fleece jacket left Esprit’s drawing table and appeared on the European market. A copyright infringement – as the District Court unsurprisingly held in The Hague.
Scotch had demanded a pan-European injunction. Copyright law is largely the same across EU member states, due to the Copyright Directive. Copyright infringement is considered in accordance with the law of the country for which protection is sought (the lex loci protectionis); in this case this meant the law of all individual countries in the EU. Scotch was easily able to make the argument, on the basis of the European harmonisation of copyright law, that the jacket was already protected by copyright in all these countries and that Esprit's jacket amounted to an infringement of the copyright. But Scotch failed to provide evidence that it held the copyright according to the law of all the countries in the EU, and this aspect of copyright is not harmonised across Europe. The rights holder can therefore be different from one country to another. The jacket was designed by a Scotch employee. In the Netherlands Scotch, as the employer, therefore automatically held the copyright. But this is not the case in (for instance) France and Germany. The judge confirmed an infringement of Scotch's copyright in the Netherlands alone and therefore only issued an injunction for the Netherlands.
The situation as it stands is not exactly ideal for employers who apply to Dutch courts for a cross-border copyright infringement ban, based on their employer's copyright under the Dutch Copyright Act. One possible solution is to have employees sign a copyright assignment as a matter of course. The assignment would then have to be legally valid according to the law of the country for which protection is sought. This could readily be done for a limited number of key markets, but an employer who wishes to rely on copyright globally is looking at a heavy, nasty wet blanket. Winter is coming.
Daniël Haije