domenica, Maggio 26, 2024

Fair Use and Civil Law:  two polar opposites or two sides of the same coin?

Editor’s note:the analysis provided by this paper is extensively based on the article “The Perfect Match: Civil Law Judges and Open-ended Fair Use Provisions” by Martin Senftleben, published in the American University International Law Review, vol. 33(1) [1]. In fact, the main purpose surrounding this paper is summarising the issues and features brought out by the author and put them in the context of the ongoing negotiations regarding the proposed EU Copyright directive. 

Martin Senftleben is Professor of Intellectual Property at the Vrije Universiteit Amsterdam and Of Counsel at Bird & Bird, The Hague.



Against the increasing engagement of international lawmakers towards a harmonisation of copyright law across countries, the polarity underlying the Anglo-American and European approaches still reflects the different, and extensively contrasting, philosophical and legal principles that provide the basis for common and civil law systems.

Given that property is considered to be one of the founding elements of western civilisation, both in its tangible and intangible forms,[2] intellectual property turns out to be of paramount importance particularly in the context of information society, where intellectual rights need to be confronted with the characteristics of ubiquity, high velocity and increasing economic value of information.[3]

Technological development has brought about a dramatic change in the way in which intellectual property is managed and transferred, thus stressing even further the differences between common law and civil law approaches to copyright law.

This is what the article seeks to analyse at first, in order to provide an adequate background before emphasising the need for the introduction of elastic, open-ended provisions (such as the U.S. fair use principle) into EU copyright law,[4] despite the claims for their destabilising effect on traditional civil law culture.

These issues prove to be a top priority in the view of the ongoing negotiation on the proposal of the new EU Copyright Directive,[5] which clearly fails at moving a step in this direction and, therefore, threatens to hamper the spread of knowledge and innovation, as well as the freedom of expression of EU citizens.

Copyright at its (diverging) roots

The differences between the approaches towards copyright law are primarily justified by the contrasting doctrines that lie at the core of the two systems. While in Europe “the protection of the creation is a natural right expressed in the concept of an author’s right (droit d’auteur), which in a pure natural law theory is absolute and no subject to limitation”,[6] the commercial approach typical of the Anglo-American tradition has its roots in the utilitarian doctrine “that perceives copyright as a privilege granted to enhance the overall welfare of society by ensuring a sufficient supply of knowledge and information”.[7]

Following the natural law theory, in order to ensure the maximum level of protection to copyrighted materials, European lawmakers provided a closed set of specific limitations to the droit d’auteur, which can be found in art. 5 of the Information Society Directive (ISD). Such exemptions include private copying, use for teaching or educational purposes, reproductions made by hospitals, prisons or during political speeches, use for the purpose of caricature, parody and pastiche, etc.[8] Most European countries implemented this article into their copyright statutory provisions, providing exceptions that are constructed strictly.

On the other hand, the Anglo-American copyright approach offers much more flexibility. A prominent example is the principle of fair use enshrined in Section 107 of the U.S. Copyright Act, which allows a set of unauthorised uses of copyrighted materials for purposes such as criticism, comment, news reporting, teaching etc.

The remarkable difference is evident if we consider that this second list is not exhaustive but needs to be integrated on a case-by-case basis according to the four factors provided in the second part of the same section. Accordingly, in any given case a judge may consider the relevance of the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the taking, and the effect of the use upon the market value of the copyrighted work.[9]

Having considered all these features, the author himself simplifies the concept by stating that, under common law rules, “the freedom of use is the rule, rights are the exception”.[10]

Author’s main arguments

As he stresses the need to convey similar openness also into civil law systems, Senftleben nevertheless acknowledges that a greater flexibility goes to the detriment of legal certainty, considered to be the main advantage of systems based on code law.

Notwithstanding this, the process underlying the amendment of national codes and statutes is far too slow and finds many difficulties in keeping pace with the rapid technological development of the digital society. This is particularly true in the case of EU legislation, where each amendment “requires not only lengthy negotiations at union level, but also national implementation acts in all member states”.[11]

Hence the author’s proposal for an introduction of open-ended fair use legislation in EU copyright law, in order to move from a static to a more dynamic doctrine, where judges are called upon to evaluate uses of copyrighted materials on a case-by-case basis.[12]

This proposal, inevitably, leads to a dilemma, as many argue that civil law judges are considered to be merely “la bouche de la loy”, thus neither required nor trained to apply open ended-norms.

With this article, the author questions this theory by taking into account the broader contest of legal systems in civil law countries, pointing out that continental lawmakers usually rely on several open-ended clauses, such as the ones introducing in codes and statutory provisions the concepts of “reasonableness” and “fairness”.[13] This is not only the case of the German[14], Dutch[15] and Swiss civil codes,[16] but also, and this is the main argument, of international and EU copyright law .[17]

Furthermore, although judges in civil law systems are not traditionally supposed to take into full account the ratio decidendi leading to precedent deliberations,[18] it is also true that lower courts usually follow decisions of higher courts, in order to avoid unnecessary appeals and to enhance, once again, legal certainty in the whole process.

Considering this configuration, “the introduction of a flexible element in the field of copyright limitations can hardly be expected to pose extraordinary difficulties”.[19]

The author then proceeds with his case by engaging in a comparative analysis with EU trademark law, following which both EU judges and national courts prove to have full capability in applying open-ended defence, such as with the principle of “due cause”.[20] The due cause[21] is a flexible provision that, according to its interpretation by the CJEU,[22] appears to be in line with the fourth factor listed in the U.S. Copyright act for the assessment of fair use, as it takes into account the economic and commercial significance to the relevant public and the possible damages to the potential market.[23]

A critical analysis of the “Three-step test” issue

The other issue that arises, once the argument concerning the alleged incompatibility between open-ended provisions and civil law systems is deemed to be mere rhetoric, is the one related to the three-step test, a set of open-ended criteria that strongly recalls the tradition of Anglo-American copyright protection.[24]

The three-step test was first introduced by the 1971 Paris text to the Berne Convention,[25] while the WTO later inserted and broadened the concept into TRIPS agreement,[26] giving it comprehensive and univocal interpretation in its dispute settlement panel reports.[27]

However, after the three-step test was incorporated into EU copyright law,[28] national courts often adopted contrasting approaches when applying the principle, approaches that started to have a disruptive impact when the French Cour de Cassation used the test to place additional constraints on existing exceptions, asserting that reproducing a protected work must be prohibited when in conflict with the “normal exploitation” of the work.[29]

The divergent interpretations carried out by different actors rendered the test quite controversial, but the drafting history of Berne article 9(2) (as pointed out in another work by Martin Senftleben,[30] the same author of the article here commented) proves that the test was not intended to further restrict copyright exceptions, but rather was conceived as a flexible framework to create additional space for innovative uses.

Despite the problems concerning the different interpretations of the three-step test, the assumption made by the author is fully agreeable: given the social, economic and cultural interests at stake, a reform of the EU copyright framework is needed in order to render the system capable of coping with the rapid development of the digital environment and the growing interaction of users through online services.[31]

The proposed EU Copyright Directive

The current EU reform proposal[32] fails at meeting the aforementioned needs, and for this reason it has been attracting severe critiques from policy makers, leaders of the digital industry and members of the public.[33] In fact, it does not provide any opening for a fair use that employs the cited matter in a different manner and with a different purpose from the original (the so called transformative use)[34], nor it directly addresses the notion of User-Generated Content (UGC). Instead it still relies on the same, slightly extended, catalogue of exclusive limitations and exceptions.[35]

First rejected in July 2018, following a major media uproar, the proposed directive was recently approved by the European Parliament and will soon undergo the process of negotiation with the European Commission and Council, which is expected to come to an end before the European elections of May 2019.[36] If no change of direction occurs in the meantime, EU lawmakers are likely to deal a severe blow to creativity, innovation and fundamental rights of citizens.

[1] Martin Senftleben, ‘The Perfect Match: Civil Law Judges and Open-Ended Fair Use Provisions’ (2017), 33(1), American University International Law Review, 231-286 <>.

[2] Omar M.A. Obeidat, ‘Fair Use in American and Continental Laws’ (1997), University of Georgia School of Law, LLM Theses and Essays, Paper 201, 1 <>.

[3] Niels van Dijk, Grounds of the Immaterial: a Conflict-Based Approach to Intellectual Rights, (Edward Elgar Pub. Lim., 2017), 30-31.

[4] Senftleben, above n 1, 233.

[5] Proposal for a Directive (EU) No 2016/0280 of the European Parliament and of the Council on Copyright in the Digital Single Market 2016/0280/COD (‘Proposed Copyright Directive’).

[6] Obeidat, above n 2, 2.

[7] Senftleben, above n 1, 236.

[8] Directive (EC) No 2001/29 of the European Parliament and of the Council of 22 May 2201 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L167/10 (‘ISD’) art 5.

[9] Copyright Act, 17 USC § 107 (1976).

[10] Senftleben, above n 1, 237.

[11] Ibid 243.

[12] Ibid 240-244.

[13] Ibid 252.

[14] Burgerliches Gesetzbuch [Civil Code] (Germany) §157 (‘BGB’).

[15] Burgerlijk Wetboek, [Civil Code] (Netherlands) art. 248.

[16] Schweizerisches Zivilgesetzbuch [ZGB], Civil Code [CC], Codice Civile [Civil Code] (Switz.) art 1.

[17] Senftleben, above n 1, 252-253.

[18] Annette Kur, ‘Of Oceans, Islands and Inland Water – How Much Room for Exceptions and Limitations Under the Three-Step Test?’ (2009) 8(3) Richmond Journal of Global Law and Business 288-350, 298 <>.

[19] Senftleben, above n 1, 253-255

[20] Ibid 256-265.

[21] Directive (EU) No 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks [2015] OJ L 336/1 art 10 (2)(c); Regulation (EU) No 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) [2015] OJ L 341/21 art 9(2)(c).

[22] Interflora v. Marks & Spencer (European Court of Justice, C-323/09, 22 September 2011); L’Oréal v. Bellure (European Court of Justice, C-487/07, 18 June 2009); Specsavers v. Asda (European Court of Justice, C-252/12, 18 July 2013); Leidseplein Bejeer v. Red Bull (European Court of Justice, C-65/2012, 6 February 2014).

[23] Copyright Act, above n 9, §107(4).

[24] Martin Senftleben, ‘Comparative Approaches to Fair Use: An Important Impulse for Reforms in EU Copyright Law’ in G.B. Dinwoodie (ed), Methods and Perspectives in Intellectual Property, (Edward Elgar, 2014), 30, 37 <>.

[25] Berne Convention for the protection of literary and artistic works, opened for signature 9 September 1886, 828 UNTS 221, (entered into force 29 January 1970) art. 9(2).

The article reads as follows: it shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interest of the author.

[26] Marrakesh Agreement Establishing the World Trade Organization, opened for signature 15 April 1994, 1869 UNTS 299 (entered into force 1 January 1995) annex 1C (‘Agreement on Trade-Related Aspects of Intellectual Property Rights’) art 13, 17, 26(2), 30.

[27] Annette Kur, above n 18, 311-327.

[28] ISD, above n 8, art 5(5).

[29] Cour de cassation [French Court of Cassation], 05-15.824 & 05- 16.002, 28 February 2006 reported in (2006) Bull civ n°549.

[30] See generally Martin Senftleben, Copyright, Limitations and the Three-Step Test: Analysis of the Three-Step Test in International and EC Copyright law (Kluwer Law National, 2004).

[31] William Patry How to Fix Copyright (Oxford University Press, 2011), 222-229.

[32] Proposed Copyright Directive, above n 5.

[33] Reto M. Hilty, Valentina Moscon (eds), Modernisation of the EU Copyright rules: position statement by the Max Planck Institute for Innovation and Competition (2017)

<>; Tim Berners-Lee et al, Open letter to the President of the European Parliament (2018) <>; Julia Reda, Save your Internet (2018) <>.

[34] Pierre Leval, ‘Towards a fair use standard’ (1990) 103 Harvard Law Review 1105,1111 <>.

[35] Proposed Copyright Directive, above n 5, art 3-5.

[36] Dugie Standeford, European Parliament Approves Negotiating Stance on Copyright Reform (12 September 2018) Intellectual Property Watch <>.

Marianna Riedo

Classe 1996, frequenta l’ultimo anno di  Giurisprudenza presso l’Alma Mater Studiorum-Università di Bologna. Da tempo interessata al rapporto fra diritto e nuove tecnologie e desiderosa di approfondire questa tematica con un periodo di studio all’estero, ha deciso di trascorrere un semestre di exchange in Australia. Qui ha frequentato la UTS: University of Technology Sydney, dove ha seguito corsi inerenti a materie quali proprietà intellettuale, informatica e innovazione imprenditoriale. Attualmente si trova in Estonia, dove collabora con il ruolo di Research Trainee presso l’IT Law Programme dell’Università di Tartu. Nel febbraio 2017 ha iniziato a collaborare con ELSA Bologna (the European Law Students’s Association) per poi assumere la guida dell’area Attività Accademiche in qualità di Vicepresidente e, infine, arrivare a ricopre il ruolo di Presidente. È Senior Associate Editor della University of Bologna Law Review, realtà con la quale collabora dal 2016.

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