3. Colonizing the Normative Gap: The Intervention of the Court of Justice

Maduro (1998), pp. 16–25 and Tridimas (2012), p. 310. See also Govaere (1996), p. 60, pointing out that, in the field of intellectual property, the Court “has gradually elaborated general principles which give guidance on the extent to which Community rules (…) impinge upon national intellectual property rights to safeguard the objectives of the E.C. Treaty.”

Case 26/62—Van Gend and Loos.

Bebr (1981), pp. 4–13 and Tridimas (2006), p. 18.

Tridimas (2012), p. 310.

On the prominent role of the CJEU in the active development of EU law, see inter alia Deelen and Deelen (1996), pp. 81 ff. Meij (2010), p. 88; Stone Sweet (2011), p. 147; Scharpf (2012), pp. 128 ff.

See Chap. 1, Sect. 1.​1.​3, and references cited therein.

The principle of non-discrimination is posited in Article 18 TFEU, while the principle of exhaustion of rights was codified by the Computer Programs Directive (Article 4 paragraph 2 of the codified version of 2009), the Rental and Lending Rights Directive (Article 9 paragraph 2 of the codified version of 2006), the Database Directive (Article 5 (c)), and the Information Society Directive (Article 4 paragraph 2).

Article 30 TFEU: “Customs duties on imports and exports and charges having equivalent effect shall be prohibited between Member States. This prohibition shall also apply to customs duties of a fiscal nature.”

Article 34 TFEU: “Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States.”

See case 2/73—Riseria Luigi Geddo, p. 7.

See case 8/74—Dassonville, p. 5. This is the so-called “Dassonville formula”, which was applied subsequently in a number of cases before the CJEU—see, e.g., case 65/75—Tasca or joined cases 88-90/75—SADAM. See also, on the Dassonville formula and its implications, Gormley (1985), pp. 20 ff. Steiner (1992), pp. 751 ff. Jarvis (1998), pp. 20 ff.

See case 120/78—Cassis de Dijon, p. 14. See also Gormley (1985), pp. 51 ff. Oliver (2010), pp. 107 ff.

See case 120/78—Cassis de Dijon, p. 8.

Joined Cases 60-61/84—Cinéthèque.

See, for a list of examples of mandatory requirements that have been examined by the CJEU, Mortelmans (2008), pp. 667–668.

Jarvis (1998), p. 171; Mortelmans (2008), pp. 665–666.

Gormley (1985), pp. 52 ff.

Article 56 TFEU: “Within the framework of the provisions set out below, restrictions on freedom to provide services within the Union shall be prohibited in respect of nationals of Member States who are established in a Member State other than that of the person for whom the services are intended.”

Joined cases C-51/96-C-191/97—Deliège, p. 56.

Case C-157/99—Smits and Peerbooms, p. 58.

Case C-384/93—Alpine Investments.

Case C-36/02—Omega.

See Hatzopoulos (2008), p. 229 and case C-384/93—Alpine Investments, pp. 33–38.

See case C-76/90—Säger, p. 12.

See joined cases C-544-545/03—Mobistar, p. 35.

The principle of supremacy was developed by the CJEU in case 6/64—Costa v. Enel. The CJEU has confirmed this principle in subsequent cases: see, inter alia, case 11/70—Internationale Handelsgesellschaft, p. 3: “The law stemming from the Treaty, an independent source of law, cannot because of its very nature be overridden by rules of national law, however framed, without being deprived of its character as Community law and without the legal basis of the Community itself being called into question.(…)” See also, for an analysis of this principle and relevant case law, Bebr (1981), pp. 634 ff. and Craig and De Búrca (2003), pp. 276 ff.

See Schwarze (2000), article 295, paragraph 1. The origins of this provision date back to article 83 of the Treaty constituting the European Coal and Steel Community (ECSC Treaty), the aim of which was to leave to Member States the choice of whether undertakings subject to the ECSC Treaty should be publicly or privately owned.

See joined cases 55-57/80—Musik-Vertrieb v. Gema, p. 9. The Court further stated that “there is no reason to make a distinction between copyright and other industrial and commercial property rights” in so far as the economic aspects of copyright are concerned (see decision, p. 12).

Article 51 TFEU: “The provisions of this chapter shall not apply, so far as any given Member State is concerned, to activities which in that State are connected, even occasionally, with the exercise of official authority.(…)”

Article 52 paragraph 1 TFEU: “The provisions of this chapter and measures taken in pursuance thereof shall not prejudice the applicability of provisions laid down by law, regulation or administrative action providing for special treatment for foreign nationals on grounds of public policy, public security or public health.”

See case C-262/02—Commission v. France, p. 23: “the freedom to provide services may, however, in the absence of Community harmonization measures, be limited by national rules justified by the reasons mentioned in Article 56(1) of the EC Treaty, read together with article 66, or for overriding requirements of the general interest”; and case C-243/01—Gambelli, p. 60: “(…) it is necessary to consider whether such restrictions are acceptable as exceptional measures expressly provided for in articles 45 and 46 EC, or justified, in accordance with the case law of the Court, for reasons of overriding general interest.”

See case 62/79—Coditel I, p. 15: “whilst article 59 of the Treaty [later article 49 EC Treaty, now article 56 TFEU] prohibits restrictions upon freedom to provide services, it does not thereby encompass limits upon the exercise of certain economic activities which have their origin in the application of national legislation for the protection of intellectual property, save where such application constitutes a means of arbitrary discrimination or a disguised restriction on trade between Member States.”

See case C-30/90—Commission v. UK, p. 18 and case C-350/92—Spain v. Council, p. 18.

Case 35/76—Simmenthal, p. 14: “Article 36 [later article 30 EC Treaty and now 36 TFEU] is not designed to reserve certain matters to the exclusive jurisdiction of the Member States but permits national laws to derogate from the principle of free movement of goods (…).”

Article 345 TFEU (formerly Article 295 EC Treaty). See Laddie (2001), p. 404 and Lucas and Lucas (2001), pp. 990–991.

Joined cases 56-58/64—Consten and Grundig.

See Consten and Grundig, p. 345. See also Loewenheim (1995), p. 830 and Shaw (2009), pp. 62–63.

Case 78/70—Deutsche Grammophon v. Metro.

See Deutsche Grammophon v. Metro, p. 11. For a detailed discussion of this case, see Bumbak (1984), pp. 415 ff. and Haynes (1995), pp. 122–123.

See Françon (1979), pp. 150–151.

Case 262/81—Coditel II.

Case 262/81—Coditel II, p. 13.

This was noted and criticized by several commentators—see inter alia Laddie (2001), p. 404, referring to the distinction as a “contradiction in terms”; Keeling (1993), p. 134, calls it “unhelpful” and “mysterious”; Korah (2006), p. 3, states that in legal theory it is “impossible to draw the line between existence and exercise, except as extremes”, since the existence of a right includes “all the ways in which it can be exercised”; Tritton (1994), p. 423, describes the distinction as a “rather empty and valueless” doctrine. See however Friden (1989), pp. 193–194, stating that the distinction between existence and exercise has an “exploitable theoretical content”, as both concepts, according to the author, have very clear meanings: existence refers to “the conditions which are to be fulfilled if the right is to be granted”, while exercise concerns “the effects that granting such rights will have.”

See joined cases C-92-326/92—Phil Collins/EMI Electrola, p. 12: “in so far as the disparity between national laws may give rise to restrictions on intra-Community trade in sound recordings, such restrictions are justified under article 36 of the Treaty if they are the result of differences between the rules governing the period of protection and this is inseparably linked to the very existence of the exclusive rights.” This was confirmed by case C-5/11—Donner, pp. 33.

Akkermans and Ramaekers (2010), p. 311. See however case 44/79—Hauer, concerning a restriction on the use of the right of property in a land in the context of cultivation of vineyards, where the Court looked more closely to the question of the existence and exercise of the right to property and concluded that “the restriction imposed upon the use of property by the prohibition on the new planting of vines introduced for a limited period by Regulation No 1162/76 is justified by the objectives of general interest pursued by the Community and does not infringe the substance of the right to property (…).”(emphasis added).

See case 182/83—Fearon, p. 7 (regarding the compulsory acquisition of land by public bodies) and case C-302/97—Klaus Konle, pp. 38 (regarding administrative procedures for acquisition of land).

Case C-200/96—Metronome Musik, p. 21.

See Chap. 1, Sect. 1.​1.​1. See also Geiger (2010), pp. 538–540.

See joined cases C-92-326/92—Phil Collins/EMI Electrola, p. 20, where the CJEU held that the specific subject matter of copyright and related rights was to “ensure the protection of the moral and economic rights of their holders.”

Case 158/86—Warner, p. 13.

This can be inferred from case 402/85—Basset v. SACEM, p. 16: “(…) even if the charging of the fee in question were to be capable of having a restrictive effect on imports, it does not constitute a measure having equivalent effect prohibited under Article 30 of the Treaty [later Article 28 EC Treaty, now Article 34 TFEU] inasmuch as it must be regarded as a normal exploitation of copyright and does not constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States for the purposes of Article 36 of the Treaty [later Article 30 of the EC Treaty, now Article 36 TFEU].”

See Govaere (1996), pp. 74–75, citing Gormley (1985), p. 126, who considers that the “specific subject matter” doctrine is the concretization of the principle of proportionality. The latter author states: “the proportionality principle has been developed most significantly in relation to industrial and commercial property, in which context the Court has chosen to express the concepts of necessity and action least onerous to intra-Community trade by limiting the permissible derogations under this heading to those necessary to give effect to the ‘specific object’ of the right relied upon.”

See Gormley (1985), p. 124; Enchelmaier (2010), pp. 222 ff. and case law cited therein. Specifically, the national law has to be appropriate and necessary for the protection of the interest involved (see inter alia C-390/99—Canal Satélite Digital, p. 33; case C-14/02—ATRAL, p. 64; case C-432/03—Commission v Portugal I, p. 42; case C-265/06—Commission v. Portugal II, p. 37), taking account of the objective to be attained and the way to attain it (see case 7/68—Commission v. Italy, p. 430).

See Chap. 1, Sect. 1.​1.​1.

Case 62/79—Coditel I, p. 14.

See inter alia case 205/84—Commission v. Germany, p. 27; case C-76/90—Säger, p. 15; joined cases C-369-376/96—Arblade and Others, p. 35; Case C-515/08—Santos Palhota, p. 54.

See Dreier (2007), pp. 196–199; Goldstein and Hugenholtz (2010), pp. 305; Stothers (2010), pp. 334–335.

Deutsche Grammophon v. Metro, pp. 12–13. See for further discussion on this case Röttinger (1993), pp. 74–78; Lucas and Lucas (2001), pp. 999–1000; Colombet (1997), p. 369.

Joined cases 55-57/80—Musik-Vertrieb v. Gema.

Musik-Vertrieb v. GEMA, pp. 10, 15 and 27. See further Bumbak (1984), pp. 422 ff. Röttinger (1993), pp. 78–84; Loewenheim (1995), pp. 838–839; Lucas and Lucas (2001), pp. 999–1000.

See e.g. case 58/80—Dansk Supermarked v. Imerco, pp. 11–12; case 395/87—Tournier, p. 11. See also Lucas and Lucas (2001), pp. 988 ff.

Case 341/87—EMI Electrola v. Patricia, p. 10 (in relation to differences in the duration of protection).

Case 158/86—Warner, pp. 18–19.

Schricker (1989), p. 469.

Case 62/79—Coditel I.

Coditel I, p. 12. See for further discussion on this case and its implications, Bumbak (1984), pp. 418 ff. Desurmont (1990), pp. 109–110; Loewenheim (1995), p. 840; Batchelor and Jenkins (2012), pp. 160 ff.

Clark (2013), pp. 460 ff. Dreier (2013), pp. 137–139.

Case C-128/11—UsedSoft.

Case C-128/11—UsedSoft, p. 62.

See case C-128/11—UsedSoft, p. 47. The exhaustion rule dealt with in this case is the one codified by the Computer Programs Directive (2009) in its Article 4 paragraph 2, which reads: “The first sale in the Community of a copy of a program by the rightholder or with his consent shall exhaust the distribution right within the Community of that copy, with the exception of the right to control further rental of the program or a copy thereof.”

Recital 29 of the Information Society Directive seems to make the exhaustion of the right dependent on the qualification of a given act as a service by stating that “the question of exhaustion does not arise in the case of services and on-line services in particular. This also applies with regard to a material copy of a work or other subject-matter made by a user of such a service with the consent of the right holder. Therefore, the same applies to rental and lending of the original and copies of works or other subject-matter which are services by nature.(…)”

Musik-Vertrieb v. GEMA, p. 25. See also Dreier (2007), pp. 197–198.

Case 186/87—Cowan, p. 10 and case C-274/96—Bickel and Franz, p. 14.

See Tridimas (2006), p. 122 and case law cited therein. See also Timmermans (2008a), p. 162.

See, e.g., case C-411/98—Ferlini, p. 39 and case C-379/92—Peralta, p. 18. See also, specifically in the field of copyright, joined cases C-92-326/92—Phil Collins/EMI Electrola, p. 17: “on the rare occasions where a specific provision of the Treaty does not apply, the general principle of non-discrimination laid down by the first paragraph of Article 7 of the Treaty [current Article 18 TFEU]. must, in any event, do so.”

Article 36 TFEU, in the context of justifications for restricting the free movement of goods, states that “such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination (…).”

Gaster (1996), pp. 20–21; Timmermans (2008a), p. 158; Stothers (2010), p. 329.

Joined cases C-92-326/92—Phil Collins/EMI Electrola.

See joined cases C-92-326/92—Phil Collins/EMI Electrola, p. 32.

Craig and de Búrca (2003), pp. 390–391; Tridimas (2006), p. 121; Timmermans (2008b), pp. 160–161. Contra, Walter and von Lewinski (2010), pp. 42–43.

See generally case 14/68—Wilhelm, p. 13, case 1/78—Kenny, p. 18 and case C-398/92—Mund and Fester, pp. 16–17. In the field of copyright, see case C-28/04—Tod’s, p. 28.

See inter alia case C-274/96—Bickel and Franz, pp. 26–27.

Timmermans (2008a), pp. 160 ff.

See case 360/00—Ricordi and case C-28/04—Tod’s.

Article 7 paragraph 8 of the Berne Convention: “In any case, the term shall be governed by the legislation of the country where protection is claimed; however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of origin of the work.”

Case C-360/00—Ricordi.

Case C-28/04—Tod’s.

Article 2 paragraph 7 of the Berne Convention: “Subject to the provisions of article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.”(emphasis added). See also Ricketson and Ginsburg (2006), pp. 319, 465–467 and 570–571.

See also Geiger (2010), p. 539, pointing out that “even among the advocates of a natural law-based view of property, it was always considered as a right inherently restricted by public interests.”

See joined cases C-92-326/92—Phil Collins/EMI Electrola, p. 32.