With sentence no. 11416/15 of 13 October, the IP Court of Milan (Business Chamber “A”) granted copyright protection to the interior design of the shops of the known cosmetics chain Kiko. The Court held that the relevant project was protected under art. 2(5) of the Italian Copyright Law (“ICL”), according to which “architectural designs and works” enjoy copyright protection. A similar issue was discussed here on this blogwith reference to the Apple stores, in relation to which, however, the requested protection was that of a three-dimensional registered trademark.

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Here is the background of the judgment. Kiko took legal action against a competitor complaining that it had copied the look of its stores, which had been designed by an architectural firm hired by Kiko, thereby infringing Kiko’s copyright on the project. “This project, which has a minimalist style and is characterised by symmetry and simplicity, is based – in summary – on an open space entryway, flanked by two large backlit graphics; on interiors having side display units which are made of continuous and inclined structures and have walls featuring compartments made of perforated transparent Plexiglas in which the products are inserted; on “islands” having curvilinear edges placed at the centre of the shops to hold the products or provide support surfaces; on numerous TV screens embedded in the inclined display units; on the use of combinations of the same colours (white, black, pink/purple) and of lights providing a disco effect“.

According to the plaintiff, in addition, the defendant had also committed acts of unfair competition, not only because of the slavish reproduction of the elements of the stores, but also because of the reproduction of other elements, such as: the clothing and accessories of the saleswomen, the format of the website, the trade promotions (including their graphical configuration and colour), the products created by Kiko (including their name and form). This would constitute unfair competition for slavish imitation under art. 2598(1)(1) of the Italian Civil Code (“ICC”), for misappropriation of qualities under art. 2598(1)(2) ICC, and parasitic unfair competition under art. 2598(1)(3) ICC.

In the decision under review, the Court clarified, first, that “as to the field of interior design, its protectability under art. 2(5) ICL is unanimously affirmed by the authors and confirmed by the court rulings that so far have addressed this issue (see, amongst the most recent, the Court of Milan decision of 2 August 2011) for the cases in which – as applies in general to the works of architecture – the design constitutes an outcome not imposed by a functional-technical problem that the author wants to solve. In this context, the creative character required for the protection can be assessed based on the selection, co-ordination and organisation of the elements of the work in relation to the overall result achieved“.

Applying those principles, the Judges concluded that the Kiko project had creative and original character, noting that the combination of the elements of its stores was not used in the field before it was adopted by Kiko, “even if single elements were already used, that by themselves would not be capable of affecting the original and creative character of the overall environment“. After that, the judges also ascertained “the direct appropriation by the defendant of all the elements that make up the concept developed by the plaintiff“, and therefore the infringement of the plaintiff’s copyright under art. 2(5) ICL.

The ruling also held that the defendant committed parasitic unfair competition sanctioned by art. 2598(1)(3) ICC, since the illicit act of opening stores that used the plaintiff’s concept “was accompanied by the almost slavish reproduction of additional elements that gave rise to a slavish imitation of the complex of the commercial and promotional activities put in place from time to time by the plaintiff, the overall scope and importance of which imitation amount to a systematic exploitation of the plaintiff’s work and creativity substantially at the same time or at least immediately after the adoption by the plaintiff of its specific initiatives“.

Having thus ascertained the illicit acts put in place by the defendant, the Court enjoined the latter from continuing them, with a penalty of € 10,000 for each store that keeps the disputed furniture over the sixtieth day following the notification of the judgment.

The Court then went on to the assessment of damages, which were equitably determined at € 700,000, using as a reference the price that Kiko had paid for the project (€ 70,000) and the number of the defendant’s stores in which it was adopted (“many, disseminated in the national territory“). The defendant was also ordered to pay the costs of the litigation, fixed at € 26,400, and the costs borne by Kiko to acquire evidence of the offence, amounting to € 16,250. Finally, the Court ordered the publication of the judgment in the newspaper “La Repubblica”, with costs to be borne by the defendant.