The 1709 Blog: Copyright in design in Italy:a post-Flos review

The 1709 Blog thanks its Italian friends Antonella Barbieri and Federica De Santis (Portolano Cavallo Studio Legale) for letting us have the following contribution:

"Copyright in design in Italy: the approach of the Courts and Law after Flos v Semeraro

You may have read some discussion on this blog regarding the effect of the CJEU's ruling in January 2011 in Case C-168/09 Flos v Semeraro on the protection of industrial designs in EU Member States.

Issues have arisen since Article 17 of Directive 98/71 on the legal protection of designs, while requiring Member States to comply with the principle of ‘cumulation’ of protection of registered designs with copyright protection, also left Member States free to determine the extent to which, and the conditions under which, copyright protection is conferred, including the level of originality required.

Before 2001, Italian law afforded copyright protection only to those industrial design works whose artistic value could be appreciated separately from the industrial nature of the product to which it pertained.Legislative Decree no. 95/2001, implementing Directive 98/71, then amended the Italian Copyright Law (Law no. 633/1941) by removing the requirement for ‘separability,’ granting copyright protection to works of industrial design having “inherent creative and artistic value” (Article 2(10), Italian Copyright Law.) and providing that design registration may be combined with copyright protection. Accordingly, thanks to the ‘cumulation’ regime set forth by Directive 98/71 as implemented, designs works can be protected in Italy as:

registered designs and models under the Itallian Intellectual Property Code (Legislative Decree no. 30/2005: the 'IPC'), from 5 to 25 years; or as

copyright-protected works, as far as they have ‘inherent creative and artistic value,’ for a period of 70-years after the author’s death.

Moreover, a 10-year transitional regime was established by Legislative Decree no. 95/2001 during which copyright protection granted to industrial designs could not be invoked against third parties that had started in good faith to manufacture or sell, before the date in which the law entered into force (19 April 2001), industrial designs and works that belonged to the public domain either because their design rights had expired or because they were not eligible for copyright protection.

That provision was subsequently restated in Article 239 of the IPC. Against this backdrop, in 2007, the Italian Government amended Article 239, excluding copyright protection for any design which fell into the public domain before 2001. The 10-year grace period disappeared and copyright protection for designs that had fallen into the public domain before 2001 was then excluded tout court.

Since the facts briefly summarised above, the interpretation of Article 239 has been highly controversial as to whether industrial designs which were created before 2001 benefit from full copyright protection.

In the meantime, the Italian Courts issued significant decisions which granted copyright protection to design works against their slavish reproduction by third parties. Recent Italian judicial decisions on the matter have been greatly welcomed by the Italian design industry, as they provide greater protection to what is considered a vital industry for the national economy, marking a new perspective in the Italian industrial design case-law.

Flos v Semeraro

In November 2006, the company Flos, a manufacturer of designer lighting, brought proceedings against furniture producer and retailer Semeraro before the Court of Milan. Flos argued that Semeraro had infringed its copyright on the “Arco” lamp (illustrated, right), a masterpiece of post-war Italian design created by the Castiglioni brothers in the 1960s, by importing from China and marketing in Italy a lamp called “Fluida” with aesthetically similar features of the Flos “Arco” lamp. The “Arco” lamp was not a registered design.

Semeraro denied infringement and argued that, among other things, the “Arco” lamp was not eligible for copyright protection in that it lacked “inherent artistic value” under the Copyright Law.

In interim proceedings, the Court of Milan ruled that Semeraro infringed Flos’s design rights, ordered the seizure of the imported lamps and prevented Semeraro from continuing to market them. According to the Court of Milan, the “Arco” lamp was eligible for copyright protection as an industrial design under the Italian Copyright Law.

In April 2009 the Court of Milan made a reference to the CJEU for a preliminary ruling in connection with the compatibility of the Italian provisions on protection of industrial designs with Directive 98/71. In January 2011 the CJEU ruled that national laws (in this case, the IPC) cannot refuse copyright protection to designs which, even if entered into the public domain, were eligible for that protection. The CJEU also clarified that Article 17 of the Directive concerned only registered designs, (i.e., designs which had been registered and then had fallen into the public domain), in that it providds for the principle of ‘cumulation’ of protection of registered designs with copyright protection. Accordingly, designs which, before the date of entry into force of the national law transposing the Directive into the legal system of a Member State, were in the public domain because they had not been registered did not fall within the scope of Article 17.

Incidentally, the CJEU observed that copyright protection for unregistered design works may arise under the Information Society Directive 2001/29 if the conditions for that Directive’s application (focusing on the concept of “creativity,” to be defined by the national implementing laws) are met.

Very recently, on 12 September 2012, the Court of Milan endorsed the interpretation of the CJEU and ruled that Semeraro’s sale of the “Fluida” lamp, which copied the Flos “Arco” lamp, amounted to a copyright infringement. Semeraro was ordered to stop selling the “Fluida” lamp. Moreover the Court ordered the destruction of any copies of that product that remained in the market, and ordered Semeraro to pay €60,000 damages, a fine of €1,000 for each infringing product imported or marketed after the decision, and for the publication of the decision in a major Italian newspaper.

The Court of Milan also stressed that, based on the CJEU ruling, industrial design works could be protected as copyrighted works regardless of whether they have been previously registered as industrial designs. In this respect, the Court of Milan fixed important principles to ascertain whether an industrial design work bears “artistic value” and is therefore eligible to copyright protection, e.g, one should look at the widespread appreciation of the design work in the cultural and institutional sector (e.g. critics, cultural institutions, museums, etc.), irrespective of the fact that it is of daily use. The relevant assessment should be objective, rather than subjective

Further, the Court gave relevance to the fact that the “Arco” lamp represents the trends of post-war Italian industrial design and has been included in the collection of the New York Museum of Arts and Design for over ten years. Similar arguments had been used by the Court of Milan when, with two injunctions of 26 April and 7 July 2011, it granted copyright protection to an unregistered design item, the "LC/4" chair by Le Corbusier, produced by the Italian company Cassina (reproduced, left), against High Tech S.r.l., another Italian company selling pieces of furniture identical to those designed by Le Corbusier. In that occasion, the Court of Milan emphasised that non-registered design works also are eligible for copyright protection as long as the conditions for copyright protection are met, i.e., if such works have inherent creative and artistic value.

In another very recent decision of 13 September 2012, the Court of Milan granted copyright protection to the well-known design work “Panton Chair” by Verner Panton (illustrated, right), produced by Vitra Patente A.G., against its slavish imitation by High Tech S.r.l. According to the Court, the exposure of this work in famous exhibitions and museums was considered evidence of its artistic value, making this item eligible to copyright protection.

Further amendments to IPC

After the CJEU decision in Flos v Semeraro, Article 239 of the IPC was further revised:

·                    in 2010, to provide full copyright protection for designs that met the substantial requirements of such protection;

·                    in 2011, to provide expressly that the protection granted to designs works under the Copyright Law applied also to those industrial works that, before 19 April 2001 (the date on which the law implementing Directive 98/71 entered into force), were in, or had become part of, the public domain, and, finally,

·                    in 2012, by Law no. 14/2012, which extended the transitional period granted on 19 April 2001 from five to thirteen years, with such extension of this transition period appearing to be in conflict with the CJEU decision in Flos v Semeraro."