Derivative works such as translations, adaptations, and musical arrangements can attract copyright protection that is separate from the protection for the underlying work from which they are derived. A recent ruling of the EU Court of Justice (CJEU) has confirmed that scholarly critical editions can be included in this "derivative works" category under EU law if sufficiently original in their own right.
The CJEU ruled that a critical edition of a literary work, where the underlying literary work was already in the public domain, may be protected as a copyright work provided that it met the two established tests for a copyright "work". First, the author must have been able to make free and creative choices such that the critical edition was an intellectual creation reflecting the author's personality and was not constrained by purely technical considerations. Secondly, the critical edition must be identifiable with sufficient precision and objectivity.
Professor Dan Slușanschi authored a critical edition of a Latin work by Prince Dimitrie Cantemir. The original work was no longer protected by copyright as it dated back to the beginning of the nineteenth century. A critical edition is essentially a publication of a text that reconstructs the original text to reflect, as closely as possible, the author's intent. This is typically achieved through research and comparing manuscripts and is often accompanied by critical "apparatus" such as notes and explanations for any corrections or additions made in order to make the text complete and comprehensible.
Slușanschi's heirs issued proceedings for copyright infringement against the Călinescu Institute and National Foundation for Science and Art ("NFSA") in respect of a publication which reproduced Slușanschi's critical edition in its entirety without authorisation. The Institute and NFSA argued that given the aim of a critical edition is to reconstruct a work to reflect the author's intentions, Slușanschi did not exercise a sufficient degree of creative freedom for copyright to subsist in his critical edition.
Article 2(3) of the Berne Convention states "translations, adaptations, arrangement of music and other alterations of a literary or artistic work shall be protected as original works without prejudice to the copyright in the original work". Therefore, provided a derivative work is sufficiently original, it will be protected by copyright under international law.
Under EU law, Article 2 of Directive 2001/29 provides that "Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: (a) for authors, of their works;..."
The High Court of Cassation and Justice in Romania referred the following question to the CJEU:
"Must Article 2(a) of [Directive 2001/29] be interpreted as meaning that a critical edition of a work, the purpose of which is to restore the text of an original work, by consulting the manuscript, accompanying it with comments and the requisite critical apparatus, may be regarded as a work protected by copyright"
In order for a critical edition to be protected by copyright under Directive 2001/29, it must be a "work" in that it is original (i.e. it is the author's own intellectual creation). It was necessary, therefore, to ascertain whether Slușanschi was able to make free and creative choices in producing the critical edition, which included the choice, sequence and combination of words. The CJEU noted that the grammatical, literary and stylistic choices in a critical edition may be dictated or at least influenced by the author's experience, knowledge and understanding of the original author and their intentions.
But the composition, structure and arrangement of the critical edition as a whole, and the comments, notes and explanations that supplemented the main text, were also relevant to an assessment of originality. In respect of Slușanschi's work, the CJEU noted that as it was not a mere transcription of the original work, it would be considered original provided it was not dictated by technical considerations, rules or constraints that left no room for creative freedom. It would be up to the referring Romanian court to decide whether this was so on the facts of this case.
The CJEU also addressed the established requirement for copyright protection that the "work" should be identifiable with sufficient precision and objectivity. In determining whether Slușanschi's work could be clearly identified, the CJEU's preferred approach was to look at the critical edition as a whole: it was not necessary to distinguish between the sections that corresponded to the original work on the one hand, and Slușanschi's textual amendments or accompanying notes and comments on the other. This reasoning is likely to be helpful to those making a case for the protection of other critical editions. But when it comes to assessing potential infringements of such derivative publications, in cases where a part rather than whole of the edition has been reproduced, a court would indeed need to disentangle the underlying work from the protected elements to see whether the parts reproduced embodied the intellectual creation of the author.
UK position
In the past, the test for copyright originality in the UK was whether the author created the work through their own skill, judgment and labour. More recently, in THJ v Sheridan [2023] EWCA Civ 1354 the Court of Appeal confirmed that the EU test of "author's own intellectual creation" should now be applied in the UK when assessing originality. As this decision is relatively recent, much of the UK's older case law on originality in derivative works was decided using the now overruled skill, judgment and labour test and must now be treated with caution.
The CJEU's decision is consistent with the 2024 Court of Appeal decision in Lidl v Tesco [2024] EWCA Civ 262, in which copyright was held to subsist in a derivative version of the Lidl logo, which evolved in 3 stages over a number of years. The version of the logo which Lidl sought to protect incorporated changes consisting of adding a square frame and a blue background to the pre-existing circular logo, with the author deciding the precise shade of blue and the positioning of the earlier circular logo within the square frame. Although the degree of creativity of the additions was undeniably low, it was not a purely mechanical exercise, dictated by technical considerations, rules or other constraints that would prohibit any creative freedom, and so the derivative work was protected.
If a literary critical edition, as a derivative work, was not deemed to be sufficiently original, it would still receive a limited form of copyright protection in the UK as a typographical arrangement of a published edition (Section 8(1) of the Copyright, Designs, and Patents Act 1988). There is no originality requirement for protection of typographical arrangements, provided the typographical arrangement does not simply reproduce the arrangement of a previous edition. However, protection is only for a period of 25 years from the date it is published, and this form of protection only extends to the making of a facsimile copy of the arrangement.
Comment
This decision is perhaps not surprising given that it largely mirrors the guidance given to the CJEU by Advocate General Spielmann in his Opinion and reflects criteria for copyright subsistence in the EU which are well established. It is helpful to have the specific case of critical editions addressed for the first time, but the wording of the CJEU's ruling does raise questions as to whether the mere reconstruction of someone else's work can be considered original. Where the textual reconstruction is accompanied by detailed notes, comments and explanations of corrections, with clear decisions about how the text is composed or arranged, it is understandable that the edition as a whole would warrant protection as an original work. Conversely a mere reconstruction (but nothing more) with the purpose of being as close as possible to the original author's text and intentions is arguably dictated by purely technical considerations or constraints of the kind that the CJEU felt would leave one with insufficient creative freedom for originality.
It is worth noting, as the CJEU recalled, that any copyright subsisting in a critical edition (or any derivative work) is separate from the copyright subsisting in the original work. So if the original work is in the public domain, the protection of the critical edition does not (i) take the original work out of the public domain, nor does it (ii) provide the author of the critical edition with rights to control use of the original work.
