Austrian Supreme Court tackles right of reproduction, three-step test, and parody defence in Robber Hotzenplotz copyright case

The owner of the rights to children’s book series Der Räuber Hotzenplotz (‘The Robber Hotzenplotz’) by German author Otfried Preußler sued a political party for copyright and trade mark infringement in connection with the unauthorized reproduction of the book cover (below, left) in the latter’s political campaign ‘Räuber Rathausplatz’ (below, right). The campaign targeted an increase in electricity and gas prices, as well as higher rental and municipal fees. Images of the campaign were disseminated through the political party’s own website and social media accounts.

Further to the dismissal of the copyright and trade mark claims but not the entirety of the action on appeal, the defendant filed an extraordinary appeal. The Austrian Supreme Court dismissed it by means of a decision (4Ob97/24d) issued a few days ago.

In so doing, the Supreme Court tackled 3 key issues under EU copyright law – specifically: the InfoSoc Directive. They are the: (1) Scope of the right of reproduction; (2) Role and addressees of the three-step test; and (3) Notion of ‘parody’.

First of all, while not disputing the protection under copyright of the claimant’s work, the defendant argued that their own image was a new and independent creation within the meaning of Section 5(2) of the Austrian Copyright Act and, thus, not infringing.

The Supreme Court dismissed this claim noting that the provision must be strictly interpreted and only applies when, despite the connection with an earlier work, the subsequent work only draws ‘inspiration’ from it, so that the earlier work “recedes completely into the background”.

Translated into EU copyright language: if the later work reproduces an original – and, thus, protected – part of the earlier work, Section 5(2) of the Austrian Copyright Act shall not apply.

The Supreme Court considered that, in the present case, the defendant’s work did not merely take inspiration from the book cover, but actually reproduced protected elements thereof.

Having established that the defendant’s use of the claimant’s work engaged the right of reproduction, the Supreme Court turned to the argument that the use would be lawful in light of freedom of expression within the meaning of Article 10 ECHR and the parody defence under Section 42f(2) of the Copyright Act. Incidentally the argument that the use at hand would be quotation had been rejected by the Court of Appeal and was not relied upon by the defendant before the Supreme Court.

The Supreme Court found the parody defence inapplicable in the case at hand. Notably, the Supreme Court referred to the requirement that exceptions to copyright be (i) strictly interpreted and (ii) construed in light of the three-step test (Article 5(5) InfoSoc Directive).

The notion of ‘parody’ is, as clarified by the Court of Justice of the European Union (CJEU) in Deckmyn [IPKat here], an autonomous concept of EU law and must be justified, according to the Supreme Court, by the intention of establishing a dialogue between the earlier and later work. Ultimately, a fair balance must be struck between protection of copyright and third-party freedom of expression.

In the present case, such a justification was deemed not to subsist. In so doing, the Austrian Supreme Court also dismissed the request that the case be referred to the CJEU.

According to the Court, the claimant had been dragged into a political debate without having a chance to take a position. Furthermore, the message of the political party could have been conveyed without use of the claimant’s work. The Court also rejected the political party’s argument that, in Deckmyn, the CJEU allegedly limited the inapplicability of the parody defence to discriminatory parodies only.

In light of the foregoing, the Court concluded that copyright protection should prevail and thus the defence for parody should be held inapplicable.

Albeit concise in its reasoning, this Austrian decision presents several points of interest.

Starting with the argument that the use at issue would be a new and independent work and, thus, outside the control of the copyright owner, the Supreme Court appeared right to adopt a broad interpretation of the right of reproduction. Indeed, the right of reproduction under Article 2 of the InfoSoc Directive encompasses a work in its entirety or part thereof.

In light of CJEU case law, it is also clear that the InfoSoc right applies to instances of both literal and non-literal copying – clear examples being (just to remain in Austria) the photo-fit at issue in Painer or the alleged parody in Deckmyn – and, therefore, also to situations that, formally, would fall within the generally unharmonized right of adaptation [on this, see IPKat here].

Like the other exclusive rights under copyright and related rights, the CJEU has consistently held that the concept of ‘reproduction’ must be construed broadly, not only having regard to the rationale of the InfoSoc Directive to guarantee a high level of protection (recitals 9 and 11), but also because (a) recital 21 links a broad understanding of ‘reproduction’ to legal certainty, and (b) the very wording of Article 2 uses expressions such as ‘direct or indirect’, ‘temporary or permanent’, ‘by any means’ and ‘in any form’.

To sum up: consistent with Infopaq and its progeny [IPKat here], there is reproduction in part when the part of a work that has been copied is original in the sense that it is its author’s own intellectual creation. Therefore, the prima facie infringement test requires determining, first, if the claimant’s work or part thereof is protected and, secondly, if the defendant took a protected work or part thereof.

Turning to the consideration of defences to infringement, the decision is noteworthy also for the mention of the three-step test.

As discussed in greater detail elsewhere, Member States’ discretion under Article 5 of the InfoSoc Directive is limited in two fundamental ways: first, it cannot be used to compromise the objectives of that legislation and the functioning of the EU internal market; secondly, a national exception or limitation must also comply with Article 5(5). Regarding the latter, a twofold question arises: what is the role of the three-step test and who are its addressees?

Robber Kat according to AI (source: canva.com)

Starting with the role, the Austrian Supreme Court referred to the requirement that a fair balance is struck between copyright protection and third-party rights. In turn, this requirement has also resulted in a shift in the understanding of copyright exceptions by the CJEU itself: from being a derogation from the requirement of a high level of protection of copyright, more recent CJEU case law has emphasized the fact that exceptions are meant to safeguard other fundamental rights too (including freedom of expression) so that their effectiveness and purpose must be safeguarded. In all this, the CJEU (Grand Chamber in Pelham, Spiegel Online, Funke Medien) has expressly considered the three-step test in Article 5(5) as one that contributes to the fair balance between exclusive rights and exceptions, including having regard to the guarantee of effectiveness of the latter and compliance with the EU Charter.

Turning to the addressees, of the three-step test, the circumstance that the Austrian Supreme Court referred to it indicates that it also national courts – not only national legislatures – that are bound by it. As discussed here, this is correct: there are clear indications – at the level of both the CJEU and national courts – that the InfoSoc three-step test should not be intended as limited to national legislatures when implementing relevant provisions contained in Article 5 of this directive into their own legal systems, but as being aimed at national courts too.

Last but not least, the Austrian Supreme Court considered that the benchmark for determining the application of an exception, including parody, may be whether the use of one’s own earlier work is necessary to exercise, e.g., the user’s freedom of expression. Is there an intention, on the side of the user, to enter into a dialogue with the earlier work?

Readers might notice that the ‘dialogue’ reference owes to CJEU case law on quotation. Indeed, in its 2019 Grand Chamber rulings, the CJEU considered that, to be lawful, a quotation must be inter alia in accordance with fair practice and of the extent required by the specific purpose. Overall, the use must be aimed at entering into a dialogue with a third-party work or subject-matter.

It appears that the Austrian Supreme Court reasoned along substantially identical lines regarding parody. Again, as discussed in greater detail elsewhere, this approach appears appropriate. That is because ‘parody’, ‘caricature’ and ‘pastiche’ (Article 5(3)(k)) are ways through which one’s own freedom of expression and information may be exercised by specifically entering into a ‘dialogue’ with an earlier work or protected subject-matter and/or the ideas conveyed therein. As such, they may be regarded as transformative quotations (Article 5(3)(d))

Such an understanding is also reflected in a recent decision of the Italian Supreme Court [IPKat here]. In a dispute inter alia concerning the lawfulness of a parody of well-known character Zorro under Italian copyright, the Supreme Court held that a parody is a type of quotation for purposes of criticism or review. The right to criticize and review can be exercised in different ways, including by means of a parody. Article 5(3)(k) of the InfoSoc Directive would be consistent with this interpretation, and the judgment in Deckmyn would demonstrate that. As correctly noted by the Austrian judges, nowhere does Deckmyn suggest that only discriminatory parodies are disallowed.

All the above said, a clearer and more comprehensive engagement with CJEU case law and the requirements under the individual steps of the three-step test would have served better to understand why, in the present case, no dialogue was found to subsist between the earlier book cover and the political party’s image. This is particularly important given the inherently parasitic character of parodies: without copying a lot, the recognizability of the earlier work is not possible and, thus, the parody at issue is bound to fail …

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