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The Court of Milan on the impact of Cofemel on the copyright protection of industrial designs in Italy. A new CJEU referral on the horizon?

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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’”.

Riccardo Perotti

Court of Milan, 19 April 2021 (Buccellati)

Court of Milan, 15 February 2021 (Castiglioni Brothers)

Court of Milan, 21 January 2021 (Moon Boot II)

Court of Cassation, 30 April 2020 (Kiko)

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

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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..

Design’s artistic value: no univocal definition according to the Italian Supreme Court

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With the decision at stake (dated November 13, 2015, full decision here) on the possible copyright protection of an out-door seat, the Supreme Court interestingly expressed a subtle (but crucial) critic on the current approach adopted by some Italian decisions that seem to ‘generously’ recognize the existence of artistic value for design objects, leaning on apparently weak – or lonely – evidence. This appears to be, for example, the case of the recent decision of the Supreme Court affirming that Moon Boots were artistic, as allegedly proved by the fact that the boots were exposed in an exhibition of industrial design works at the Louvre Museum (see full decision here).

A more severe approach seems to be adopted by the decision in comment, concerning the design of a line of outdoor seats called “Libre”, created by the plaintiff and claimed to be eligible for protection under copyright law. The Court of first instance and the Court of Appeal of Venice excluded the existence of an artistic value and thus excluded any copyright infringement by a line of similar outdoors seat created by a competitor. So, the plaintiff asked the Supreme Court to interpret such notion.

Capture Libre

The Italian Supreme Court, after having made a useful recognition of the current trends adopted by Italian Courts in the interpretation of such requirement, affirmed that the concept of artistic value cannot be confined in one, unique and exhaustive definition. The cases being too various, it is more useful defining a number of parameters that Judges can apply on a case-by-case basis, considering in depth the concrete facts occurred. Those parameters, continues the Court, have both subjective and objective aspects.

As to the former, they consist in the capability of the object to stir aesthetic emotions, in the greater creativity or originality of the shape – compared the others normally found in similar products on the market – transcending the practical functionality of the good: aesthetic have its own independent and distinct relevance. These emotions, admits the Supreme Court, are inevitably subject to the personal experience, culture, feeling and taste of the individual doing the evaluation. The result of the assessment on the existence of artistic value may thus change depending on who looks at the piece of design. So, it is necessary to indicate more objective parameters.

It is therefore to be considered the recognition that the piece of design has received within the cultural and institutional circles with respect to its artistic and aesthetic features. This witnesses that the aesthetic appearance is considered capable of giving to the object a value and a meaning independent from its strict functionality. In concrete, this is shown by the presence of the object at museum or exhibitions, mentions in specialized newspapers and journals (not having a commercial scope), the critics, awards, prices and similar. On top of that, crucial appears the circumstance that the object has gained an autonomous value on the market of pieces of art, parallel to the commercial one or, more commonly, that it has reached a high economic value showing that the public appreciates and recognizes (and is ready to pay) its artistic merits. All the above elements are inevitably influenced by time: if a product is new it would have had no time to receive such prices, honors and awards from third parties. Even this parameter shall thus not be considered as absolute, but still connected to a case by case analysis.

With the above, wide and flexible interpretation of the concept of artistic value, the Supreme Court appears to distance itself from a jurisprudence that focused the existence of  even just one of the above circumstances.  In particular, it seems to downplay the current trend, more and more popular in the merit Courts,  whereby the presence of the piece of design in museums and exhibitions constitutes per se a sufficient evidence of the artistic merits of an object. The decision in comment seems to ask the lower Courts to be more selective and in ascertaining the existence of an artistic merit in the design object. And to do this on a case-by-case analysis, excluding any “a priori” single-criterion-based assessment.

By this decision the Supreme Court gives objectively rules in favor of small or new designers and firms, whose products could achieve protection on the basis of a concrete analysis of the single object’s potentialities, independently from its long-lasting presence on the market, huge marketing efforts, or the capability to  exhibit  the object in a museum. The current approach, criticized by the Supreme Court, seems indeed to privilege ( moreover, in an era of crisis) companies that are already solidly established and powerful on the market. This decision is good news for competition.

Maria Luigia Franceschelli

Italian Supreme Court, case No. 23292/2015, 13 November 2015, Metalco S.p.A. vs City Design S.r.l. and City Design S.p.A..