Are Concept stores eligible for copyright protection?

With a decision issued on 13 October 2015 (full text in Italian here), the Court of Milan stated that concept stores are eligible for copyright protection, even if they consist of a simple and straightforward design.

magi

The decision is the last of a long court-battle fought between two companies active in the cosmetics field.

Here the relevant facts. Kiko S.r.l., one of the protagonists in the Italian market of cosmetics, contacted an architectural firm asking them to project the interiors of their new stores, to be innovative and strongly distinctive. When the project was completed, approximately 300 stores were opened in Italy with a minimalist design, featuring essential symmetries and clear lines.

Afterwards, Wjcon S.r.l., one of Kiko’s competitors, opened a number of new stores in Italy that, according to Kiko, recalled the concept, design and colours characterizing the project of its stores.

Various decisions followed, with different reasoning and that, in essence, declined any type of copyright protection to the concept of Kiko’s stores. In 2010, by a decision as of 3 May 2010 (full text in Italian here), the Court of Milan rejected Kiko’s copyright and design infringement claims, resulting from the copying of all the essential features of its retail stores arguing that Kiko and Wjcon’s stores were similar only for details that were common and not distinctive in the field of cosmetics’ stores.

A similar ruling was issued a couple of years later by the Court of Rome (decision of 5 September 2012, full text in Italian here), that rejected Kiko’s copyright infringement claim, arguing that concepts stores do not fall under the scope of protection of copyright law, unless they have artistic value. The decision maintained that concept stores could not be protected under copyright law as works of architecture, but only as designs. Given that Italian Copyright Law provides that designs could enjoy copyright protection insofar as they present artistic value, the existence of a valid copyright on Kiko’s stores was excluded. As a matter of fact, the latter did not prove the existence of such a value for its stores.

With the October decision the Court of Milan followed a third approach. In short, the Court rejected the arguments according to which Kiko’s concept stores’ features were not original since they were common in the field and consisted of functional elements (and, hence, not copyrightable), and clearly affirmed that interior designs may be protected as works of architecture under copyright law as long as it is possible to identify an original act of creation.

According to the Court, originality may not be excluded even if the project consists in essential or simple features, part of the cultural heritage of the field, since the threshold for originality for concept stores is not different from the usual one, which is indeed quite low.

With particular regard to interior designs, originality must be recognized every time the project is not merely functional and the choice, coordination and organization of the singular elements of the store are arranged to obtain a new and creative final result.

In the Court’s view, Kiko’s shops were undeniably characterized by creative elements and their overall concept was peculiar and original. Even if such elements were already known in the field, originality may be inferred from the fact that no competitor had ever arranged before the features of Kiko’s shops in such a way. The fact that Wjcon copied the overall impression of Kiko’s concept stores, with merely minor differences, is not relevant in excluding copyright infringement considering that almost all the original solutions of the project where copied.

A distinct solution – in-between the approach requesting artistic value and the one satisfied with a low originality – had previously been adopted by a third group of decisions, granting copyright protection to interior design only when the architectural elements composing it were inextricably bound to the real estate and, nevertheless, original (see Court of Milan decision of 31 May 2006, Court of Milan decision of 10 July 2006 and Court Catania decision of 17 June 2000).

The complexity of the protection of concept stores under copyright law is demonstrated by the number of different theories proposed by the various decisions and is further confirmed by the provisional decree issued by the Court of Appeal of Milan as of 26 January 2016, where the October decision of the Court of Milan has been appealed by Wycon. The Court of Appeal decided to suspend the enforceability of the Court ’s decision, recognizing that the protection of concept stores under copyright law is a complex issue.

A last note: recently, also EUIPO Board of Appeal had the chance to examine Kiko’s shop and, with a decision dated 29 March 2016 (proceeding no. R 1135/2015-1), declared it not eligible for protection also under trademark law. We’ll see what’s next.

Maria Luigia Franceschelli

Court of Milan 13 October 2015, RG n. 80647/2013, Kiko S.r.l. vs Wjcon S.r.l.

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