While Cofemel slowly marches toward its second birthday, its actual impact on Italian copyright law is still a mystery.
A preliminary disclaimer: in my view, the Cofemel decision is far from straightforward. The fact is, however, that the CJEU has been pretty clear-cut in stating that under EU law the existence of a “work” – as defined in the Court’s settled case law (see for reference Cofemel, at 29-34) – is the only requirement for copyright protection, works of industrial design included. And this principle, implicitly repeated in Brompton, implies that Member States would not be allowed to make the protection of such works conditional upon fulfilment of further requirements, in spite of Article 17 Design Directive and Article 96 Design Regulation.
Italy is (was?) one of the countries where these further requirements must (had to?) be met. Under Article 2.10 of Italian Copyright Law, in order to be protected, works of industrial design must have inherent “creative character and artistic value”. It is no surprise, then, that Italian scholars have been particularly prolific in speculating on the possible assassination of “artistic value” by the CJEU.
As influential as the scholars’ words may be, however, absent legislative intervention (which does not seem to be under discussion), the words that mainly count are those of the (Italian/EU) Courts. And these words are yet to be uttered.
In the Kiko decision (full text here), relating to the layout of the Kiko concept store, the Italian Court of Cassation explicitly quoted Cofemel. However, the Kiko case concerned a work qualified as architectural, protected under Article 2.5 of Italian Copyright Law regardless of its “artistic value”. Thus, the Court of Cassation did not really have to deal with the impact of Cofemel on “artistic value” under Article 2.10 of Italian Copyright Law. And it is worth noting that, if an indication explicitly relating to “artistic value” can be found in the decision, that indication would be the incidental statement whereby, in principle, the individual elements of the Kiko concept store can be protected as works of industrial design, “provided that they have an actual ‘artistic value’”. As if Cofemel did not exist.
A similar (non-) stance has been taken by two recent decisions issued by the Court of Milan with specific regard to works of industrial design.
In the Tecnica v. Chiara Ferragni decision (21 January 2021: here), concerning the famous Moon Boots, the Court of Milan granted copyright protection on the grounds that the Moon Boots had “artistic value”, taking it for granted that “artistic value” was still a requirement for the protection of works of industrial design (for our comments on another decision of the Court of Milan on the copyright protection of the Moon Boots, see here).
The same approach has recently been adopted by the Court of Milan with regard to a lamp designed by the Castiglioni brothers, Achille and Piergiacomo. In its 15 February 2021 decision (full text here), the Court acknowledged the “artistic value” of the lamp and granted the requested protection – again without questioning the possible impact of Cofemel on the case.
However, it was just a matter of time before the Cofemel decision and the “artistic value” requirement under Article 2.10 of Italian Copyright law would find themselves in the same court room.
In the still ongoing Buccellati case, the Court of Milan has been dealing with the alleged infringement of Buccellati’s copyright on several pieces of jewelry. The case began before Cofemel and, therefore, in a legal framework in which there was no doubt as to the relevance of “artistic value”. But then Cofemel arrived and a discussion arose between the parties on its impact.
Interestingly, in an interlocutory decision of 19 April 2021 (full text here), the Court of Milan (Judge Rapporteur: Alima Zana) – after quoting Cofemel at §35, whereby any subject-matter constituting a “work … must, as such, qualify for copyright protection”– explicitly states that, in light of Cofemel, Member States might no longer be allowed to “filter” access to copyright protection by adding stricter requirements, such as “artistic value” under Article 2.10 of Italian Copyright Law.
Also taking into account the “concerns expressed by the Advocate General”, and “the significant repercussions … that the disapplication of the requirement of the ‘artistic value’” would entail, the Court stated that the issue should be referred “to the Court of Justice in order to allow express examination of the compatibility of the national provision with the EU system”.
However, due to “reasons of procedural economy”, the Court has decided to submit a CJEU preliminary question only if, at the end of a Technical Expertise conducted on the products at issue, it is found that there may be infringement.
What the wording of the possible referral might be is an intriguing question. Indeed, the CJEU has already stated that – in light of the indications already contained in Cofemel – there is no need to answer the question as to whether the interpretation by the CJEU “of Article 2(a) of Directive 2001/29 precludes national legislation … which confers copyright protection on works of applied art, industrial designs and works of design if, in the light of a particularly rigorous assessment of their artistic character, and taking account [of] the dominant views in cultural and institutional circles, they qualify as an ‘artistic creation’ or ‘work of art’”.