Copyright
Case Note: C-60/98 Butterfly
Music Srl v Carosello Edizioni Musicali e Discografiche Srl
Jane Lambert
16 July 1999
This article formerly appeared on the Lancaster Buildings website
Art 13 (1) of the Term Directive (Council Directive of 29 October 1993 harmonizing the term of protection of copyright and certain related rights) required member states to bring into force laws, regulations and administrative provisions necessary to harmonize the term of copyright protection subsisting in types of copyright works under their national laws which resulted in a revival of expired copyrights in many cases. In the United Kingdom, for example, that included the copyrights of authors of literary or artistic works who had died more than 50 but less than 70 years ago. The revival of previously expired copyrights impacts upon third parties who had exploited copyright works in good faith after they had entered the public domain. Their position was mitigated slightly by art 10 (3) which provided that the directive should be without prejudice to any acts of exploitation performed before the date on which it had to be implemented and para (4) which gave member states the option of exempting cinematographic or audiovisual works created before the 1st July 1997.
The Facts
The construction of art 10 (3) arose in a preliminary reference under
article 234 EEC from the Milan District Court in an action for a
declaration that Italian legislation extending the copyright term in
audio-visual works from 30 to 50 years did not prevent the distribution
of a compact disc of certain songs recorded by the singer Mina between
1958 and 1962 that the claimant, Butterfly Music Srl ("Butterfly"),
had been made after the Italian copyright in those sound recordings had
expired. The action was sparked off by letters before action from the
Carosello Edizioni Musicali e Discografiche Srl ("CEMED") the
owner of the copyrights in the sound recordings at the end of 1995 and
beginning of 1996 following the revival of its rights under the
implementing legislation. In the proceedings, CEMED counterclaimed for
an injunction to restrain the infringement of its revived copyrights.
Butterfly contended that the directive implicitly precluded the renewal
of rights which had expired or, alternatively, that the implementing
legislation did not comply with the art 10 (3) of the directive in that
the implementing legislation permitted sound recordings in respect of
which rights had expired under the previous legislation to be
distributed for only 3 months from the date of entry into force of the
new law.
The Issue
The national court disposed of the first argument without any difficulty
but questioned whether the Italian legislation complied with article 10
(3) and referred the following question to the ECJ:
"Is the interpretation of Article 10 of Directive 93/98/EEC of 29 October 1993, particularly where it provides for the adoption of "the necessary provisions to protect in particular acquired rights of third parties", compatible with Article 17(4) of Law No 52 of 6 February 1996, as amended by Law No 650 of 23 December 1996?"
CEMED argued before the Court that the question referred for a preliminary ruling was inadmissible because the main proceedings which could have been disposed of under national law. The ECJ rejected that contention on the ground that the relevance of an issue was a matter for the national court except in a clear case (C-415/93 Union Royal Belge des Societes de Football Association and Others v Bosman and Others, [1995] ECR I-4921, paragraphs 59, 60 and 61).
The Answer
The ECJ held that article 10 (3) did not preclude a provision of
national law that limited the period in which sound-recording media may
be distributed by persons who, by reason of the expiry of the rights
relating to those media under the previous legislation, had been able to
reproduce and market them before that Law entered into force. It
rejected Butterfly's contention that the 3-month time limit was
unreasonable on the ground that the revival of copyright resulted from
the express will of the Community legislature. Although the Commission
had originally proposed that the directive provisions should apply only
to rights that had not expired by the 31 Dec 1994, the European
Parliament had amended its proposal to avoid a situation where rights
would have expired in some member states but not in others. Guidance as
to the meaning of art 10 (3) is provided by the 26th recital which
states that
"Member States should remain free to adopt provisions on the interpretation, adaptation and further execution of contracts on the exploitation of protected works and other subject-matter which were concluded before the extension of the term of protection resulting from this Directive"
and the 27th
"respect of acquired rights and legitimate expectations is part of the Community legal order.... Member States may provide in particular that in certain circumstances the copyright and related rights which are revived pursuant to this Directive may not give rise to payments by persons who undertook in good faith the exploitation of the works at the time when such works lay within the public domain".
It was clear from these recitals that the directive did provide for the
revival of expired copyrights and related rights, without prejudice to
acts of exploitation before implementation, while leaving it to member
states to adopt measures to protect such acquired rights the detail of
which was left to their discretion.
