Freedom of Reproducing Nintendo Image for Citation Purposes

By the judgment of September 27, 2017 on the joined cases C-24/16 and C-25/16, the Court of Justice of the European Union (CJEU) expressed itself upon the correct interpretation of article 20(1)(c) of Regulation n. 6/2002 on Community designs.

The CJEU – to which the question was remitted by the Land High Court of Düsseldorf for preliminary ruling – intervened in the litigation between Nintendo Co. Ltd and BigBen Interactive GmbH and BigBen Interactive SA (parent company of the German BigBen) to express its view on the alleged unlawful behavior of the defendant companies BigBen Interactive, which – to promote the sale of false compatible accessories – used images of products corresponding to the Nintendo designs the on their websites (among the other the Wii console).

Speaking of article 20(1)(c) of Regulation n. 6/2002, the European judge clarified the article must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses images of goods corresponding to such designs to explain or demonstrate the joint use of the goods on sale and the specific goods of the holder of those rights, actually carries out an act of reproduction for “citation” purposes within the meaning of the article and such an act is authorized if it fulfils the cumulative conditions laid down therein.

Thus, in the same pronouncement, the European judge furnished also the correct interpretation of the three collective conditions at article 20 saying that a Community design confers rights which cannot be performed in case of an act of reproduction for citation purposes, that is:

  1. Compatibility of act of reproduction with the correct commercial procedure;
  2. Missing of unduly prejudice in the normal exploitation of the design on account of said acts;
  3. Mention of the source;

With regard to the first condition, the Court affirmed that it is the expression of a loyalty obligation toward the lawful interests of the owner of the design; this loyalty obligation does not appear when the act of reproduction of the protected design for citation purpose occurs as to create the impression of a commercial link between the third and the owner of the rights conferred by the said Community design or, if a third illicitly benefits from the commercial fame of the owner.

With regard to the second condition which states that the act of reproduction for citation purposes shall not cause unduly prejudice to the normal exploitation of the Community design, the CJEU decided that this condition aims at preventing the act of reproduction for citation purposes harming the financial advantages of that the owner of the rights conferred by the Community design would benefit of in the normal usage of the said designs.

Finally, in reference to the third and last cumulative condition at article 20(1)(c) – that is the obligation to mention the source -, it is fulfilled if “the chosen type of indication consents to a normally informed, reasonably observant and circumspect consumer to easily identify the commercial origin of the product corresponding to the Community design”.

Briefly, the act of reproduction for citation purposes is authorized if it met the three aforementioned conditions, which, as the Court explains, is for the national judge to verify.


Giulia Mugnaini