The shape of the worldwide famous Vespa obtains protection in Italy under copyright law

Piaggio, the Italian company producer of the world wide famous Vespa scooter, was recently sued by the Chinese company Zhejiang Zhongneng Industry Group (“ZZIG”) in a quite complex case.

ZZIG offered for sale three scooters named “Revival”, protected by a Community design registration no. 001783655-0002, “Cityzen” and “Ves”, the shape of which was not covered by any registered IP right in Italy or in the European Union.

Capture ZZIG

As to Piaggio, the company owns the Italian 3D trademark no.1556520 claiming priority of the Community trademark no. 011686482, filed on 7 August 2013 and registered on 29 August 2013.

Capture Vespa

When Piaggio obtained the seizure of the three above motorbike models in the context of a Fair held in Milan, the Chinese company started an ordinary proceeding on the merits before the Court of Turin against Piaggio, seeking the declaration of non-infringement of Piaggio Vespa 3D trademark by its “Revival”, “Cityzen” and “Ves” scooters. Besides, it asked a declaration of invalidity of Piaggio’s Vespa trademark, based on the fact that it was anticipated by their design and thus not novel. Also, it held that the 3D trademark was void, as it does not respect the absolute ground for refusal established by the law.

Piaggio resisted and asked the Court of Turin to reject the above claims, declare that the Vespa shape is protected under copyright law, trademark law and unfair competition law and that those rights were infringed by ZIGG three models of scooters. As a matter of fact, Vespa was offered for sale by Piaggio since 1945.

First of all, the Court of Turin declared that the Vespa trademark does not lack of novelty, as it reflects a model of Vespa marketed since 2005, before the commercialization of ZZIG first scooter, i.e. “Cityzen”. Moreover, the Court of Turin excluded the existence of any absolute ground for refusal, stating that its shape was not technical nor standard and not even substantial as the reason why consumers chose the Vespa were not merely aesthetical. Based on these findings, the Court finally affirmed that only the “Ves” scooter constitute an infringement of Piaggio trademark.

This  said, the Court of Turin further held that the Vespa shape is eligible for protection under copyright law, as it is since long time worldwide recognized as an icon of Italian design and style, shown in advertising and movies, presented plenty of times at museum and exhibitions and part of many books, articles, magazines and publications. All considered, safe and sound evidence show that the shape of Vespa is unequivocally believed to be an artistic piece of designs by the main communities of experts worldwide. Nevertheless, the Court held that, again, only Ves scooter infringed Piaggio rights vested on its scooter as it presents features similar to the ones protected both under the Vespa trademark and copyright.

The decision (full text here) is indeed interesting as it critically examines the similarities and differences between the “original” good and the ones that are claimed to be infringing products and, while asserting the eligibility for protection of the Vespa shape both under trademark and copyright law, it excludes infringement for two products through a detailed and careful examination. This narrow approach is indeed interesting because it affirms the principle that the infringement of designs protected under copyright law shall be evaluated with an analytical examination similar to those applied in cases of trademark infringement.

A doubt might remain about the overlapping of trademark and copyright protection. Since the former never expires as long as the product is on the market (plus the subsequent five years, according to Italian law), one might ask what advantage for the right holder might subsist by ‘adding’ a protection limited in time, such as copyright’s. The answer might be: the dual protection functions as a ‘parachute’ for the case that one of the two, in a subsequent Judgement (Appeal or High Court: Cassazione in Italy) should be successfully challenged by a competitor.

Maria Luigia Franceschelli

Court of Turin, case No. 13811/2014, 6 April 2017, Zhejiang Zhongneng Industry Group, Taizhou Zhongneng Import And Export Co. vs Piaggio & c. S.p.a..

Industrial Design works: exhibition in museums as proof of special artistic merit?

A recent decision issued by the Tribunal of Milan (full-text in Italian available here), Specialized IP Section, has acknowledged special artistic merit, hence copyright protection (under Art. 2.10  of Italian Copyright Act implementing Art 17 of EU Directive 71/98) to after-sky boots, branded Moon Boots (as designed after the US astronauts’ boots ), a popular model marketed (also) in Italy since more than 40 years.

nasa
Aldrin’s boot and footprint in lunar soil – credit: Nasa

(As known, in some countries like Germany and Italy, copyright protection of industrial design products requires a plus of artistic merit than the mere ‘individual character’ requested by the general copyright paradigm).

 

The trump card for this recognition was the Louvre Museum’s choice of Moon Boots as one of the 100 most representative industrial design works of the XX century. The readers will think, and with reason, that this position is not novel, either in Italy or in other countries (Germany,i.a.). And with reason: as a matter of fact, Milan’s Tribunal just follows the blueprint of Flos.

So, it is not for its peculiarities that we are recalling the Moon Boots decision. Rather, it is an occasion for some critical comments on the general position – general:  aside from the specific case – espoused by the Milan Court.

First: is the selection/exposition by even prestigious museums a per se decisive argument for assessing special artistic value? More precisely: is it so without inquiring whether the exhibition was the Museum’s choice an autonomous initiative, or was it sponsored by the producers of the industrial design products? We all know how quite often, nowadays, public and private museums and art galleries, as well as the press, generalist and specialized, specialized struggle for balancing their budgets. And how a skillfully set up ‘environment’ can frame prestige and ‘cultural’ aura for the presentation of even everyday household appliances. And we know, of course, how  intense is the ‘race’ by industrial design producers to obtain that prestigious upgrading, which translates in a potentially over 100 years rent-seeking position.

So, at least Courts should adopt the testsponsored or autonomous’?

One might add that an even more significant test could be adopted. By checking whether this or that industrial product, of which the producer/plaintiff claims special artistic value, has ever been auctioned at art sales by famed houses as Christie’s, Sotheby’s and the like. Or, just by checking with same houses if they are prepared to auction such products as after-sky boots… (I am personally interested to this, I must confess: in my garage I have a couple of forgotten old used boots that I was going to throw away…).

Let’s now give a broader glance at the issue. First of all, its ‘competitive cost’. Is it reasonable, and consistent with the principle of freedom of competition, that utilitarian products sold since many years, even after the expiry of the 25 years design registration, and whose basic model has been currently adopted, after such expiry, by many competitors (usually SMEs ) — is it reasonable, then, that a sudden ‘copyright baptism’ makes them again object of exclusive rights? — possibly, repeat, for  more than a century ahead! I do not think so: however, the question of an ‘easy’ building of such rent/seeking positions is not worth neglecting. Also for an additional reason. Under Berne Conventions’ rule on derivative works (Art.2.3) the rightholders on the original design retain the faculty to inhibit the production and marketing of competing products bearing variants.

At least — at the very least— a more balanced regime should establish a suitable term for competitors, who entered the market after the expiry of the registration, to continue production and sales as not to waste the investments poured therefor. On the determination of such ‘transition’ period, it is well known, lobbies of big international furniture producers are actively at work, e.g. now in UK after the disgraceful repeal (itself lobby-driven), of Sec. 52 of Design Act by the Enterprise Act of 2013 .

Finally: let alone SMEs, do Courts worry about the cost for consumers, i.e. effect on price, of such… baptism? Not that I know.

Gustavo Ghidini

 

Court of Milan, IP Section, decision of 7 July 2016, No. 8628/2016