With a preliminary injunction granted on September 11, 2014, the Company’s Section of the Court of Rome issued a new interesting decision in relation to the debated issue of eligibility for copyright protection of works of industrial design.

The Court in particular had the chance to clearly state and further confirm – after some important rulings issued on the matter both at European (see, inter alia, ECJ, decision of Jan. 27, 2011, Case C-168/09, Semeraro v. Flos) and at national level (lately, Court of Milan, decision of May 3, 2012, no. 9173, Vitra v. High Tech) – that the works of industrial design have to be retained as fully eligible of copyright protection under Italian law and that, consequently, the industrial character of a work – i.e. the seriality of the object or of its manufacturing process, its reproducibility and its destination to the consumers – cannot exclude the protection and enforceability of the creation under copyright law.

In such perspective, the Court pointed out that the only requirement for protection is the necessary originality and “creative character” of the work, i.e. its capability to represent an artistic expression of the author and thus embody some kind of “artistic value”. In such respect, the Judge clarified firstly that the mere fact that a design object may serve a certain utility (e.g. as a tea-table) is not sufficient to determine a lack of creative character. On the other hand, the “artistic value” requirement may be inferred from the degree of recognition – in terms of a work of art - that the single design object may have come to enjoy among the relevant public (e.g. through a continuing, significant display of the work in art museums and exhibitions, or through mentions in the specialized press, or through the notoriety and economic value recognized by experts in the relevant field of art). In this regard the Court significantly clarified that, under Italian law, the public recognition of the work cannot be used only to remedy an initial lack of creative character in order to claim protection, because the work must present creative character from the very moment of its creation; nonetheless, the public recognition of the work “necessarily postulates that the work was originally presented as an expression of the author’s personality and creativity and that the author himself had, in an objective manner, manifested his intention and aim to realize a work of art, i.e. a novel and creative work”.

The Court also held that, by reason of the dominant role of creative character of the work as described above, an infringement of the copyright over a work of industrial design occurs every time a product presents and/or mimics those specific distinctive elements of the original work which were capable, alone, to confer such creative character, notwithstanding the addition and/or modification of some detail or contour features.

Finally, the Court recognized that the infringement of a copyright-protected design work may also lead to (and cumulate with) acts of unfair competition, every time the infringer can be found to use or make use - in presenting, describing, offering and/or commercializing the product to the public – of terms, names, expressions, labels and descriptions which may refer to the author or the style of the original work and thus can be apt to confuse the public as to its origin, manufacture, quality or free-ride on the author’s fame and goodwill.