The District Court of Milan referred questions to the Court of Justice of the European Union for a preliminary opinion on the interrelation of the EU’s Council Directive 93/98 on the duration of copyright protection and Directive 98/71 relating to Registered Designs. The Court held that the duration of copyright protection for a work that qualified for such protection should not be shortened just because it was also protected by a design right that had a shorter period of protection.

Under Article 1 of the directive on protection of copyright, the duration of protection for artistic works isfor a period of the life of the author plus 70 years. Article 17 of the directive on design rights provides that:

  • A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.

The dispute before the court related to importation from China of a lamp that copied stylistic and aesthetic features of a design that had been created in 1962 but for which no registered design protection had been obtained, but which the designers claimed had been slavishly copied in the imports from China.

The Milan Court asked for an opinion from the Court of Justice as to whether the design of the lamp could still be the subject of enforceable copyright protection both in the case of designs which, before the date of entry into force of the national legislation transposing Directive 98/71 (April 19, 2001), were in the public domain because they had not been registered as designs and in the case of designs which, before that date, entered the public domain because the protection deriving from registration ceased to have effect.

On the first question, the Court of Justice in its judgment of January 27, 2011 held that Article 17 of the Design Directive was inapplicable and the only question to be decided was whether under Italian law copyright protection existed in the original lamp and whether it was infringed. It will be recalled that there is still no harmonization of substantive copyright law within the European Union.

On the second question, the Court of Justice held that Article 17 of the Design Directive precludes a member state from choosing whether or not to confer copyright protection for a design that was protected by a design right registered in or in respect of a Member State if the design meets the conditions under which copyright protection is conferred. Consequently, designs which were protected by a design right in or in respect of a Member State and which meet the conditions under which copyright protection is conferred by the Member States, in particular the condition relating to the level of originality, and in respect of which the term (of copyright protection afforded by the Copyright Term directive) had not yet expired (when the Copyright Term Directive came into effect), are eligible for copyright protection in that Member State.

This conclusion applied irrespective of whether the design in question had already fallen into the public domain before the Copyright Term Directive came into effect, although the revival of copyright protection has no effect on acts of exploitation definitively performed by a third party before the date on which such rights became applicable and member states could adopt legislative measure intended to protect the acquired rights and legitimate expectations of a particular category of third parties as long as the measure does not have the effect of deferring for a substantial period the application of the new rules on copyright protection for designs.

A principle of proportionality had to be applied. Consequently a 10 year moratorium in respect of copyright protection as was provided for under Italian law went beyond what is necessary, since, by taking 10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application of copyright protection is deferred for a substantial period.