Industrial property lawyers in Italy have been given cause for reflection following the European Court of Justice's (ECJ's) recent decision in Cofemel-Sociedade de Vestuario, SA v G-Star Raw CV (Case C-683/17).

The ECJ was expected to clarify whether the legislatures of EU member states can grant copyright protection for designs subject to additional requirements to those required for all other copyrighted works.

This issue is of particular importance in Italy, as the legislature only allowed shapes to be protected as designs (through registration or as an unregistered Community design) and copyrighted in 2001 following the implementation of the EU Designs Directive (98/71/EC). However, the legislature introduced this protection with the following caveats:

  • A shorter duration was initially envisaged for designs compared with other works protected by copyright. This led to an infringement procedure under which the duration of protection was aligned with that of other copyrighted works in Italy.
  • An illegitimate transitional rule was introduced in almost all successive versions of the directive. The ECJ deemed this transitional regime to be illegal in Flos v Semeraro (Case C-168/09).
  • Copyright protection will not be granted to designs deemed to be 'intellectual creations' (the only requirement for other protected works), but only to those that "have a creative character and artistic value in themselves" (Article 2 of the Copyright Law).

This formula seems to have been drafted to create confusion, starting with the expression "in themselves", which has sometimes been interpreted in Italian case law to mean that copyright protection is granted only for the shape of objects not designed primarily for daily use, whereas the typical feature of works of design is precisely to bring art into everyday life. Moreover, this interpretation is incompatible with EU law and has been rejected by the most reputed Italian scholars and set aside by the Court of Florence on 6 August 2003.

However, the scope of Italian law is restrictive because it grants copyright protection to designs on the condition that they not only have a creative aspect (like all protected works), but also 'artistic value', which is subject to assessment by the courts. In practice, this means that copyright protection in Italy is reserved for high-end industrial designs, recognised due to their longstanding appreciation by the public and critical acclaim.

Protection criteria

The criterion for determining when designs can be protected by copyright was defined in a series of rulings (Court of Milan, 28 November 2006; Court of Milan, 29 March 2005; and Court of Turin, 17 December 2004) and subsequently adopted by the Supreme Court of Cassation (Supreme Court, 13 November 2015, 23292) to the extent the scope of what constitutes 'artistic value' has been clarified legally.

However, the question remained as to whether this limitation was legitimate and hence the wait for the ECJ's preliminary ruling regarding the EU Copyright Directive (2001/29/EC) of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights.

Copyright protection issues

The questions submitted by the Portuguese courts to the ECJ seemed to ask whether it was admissible under the EU law for member states to set out alternative requirements for design copyright protection to those for other protected works. The ECJ's answer was of course negative, as it has long held the copyright protection of a work of design to be "an autonomous concept of Union law which must be interpreted and applied in a uniform manner".

However, Paragraphs 29 to 35 of the ECJ's grounds are of particular importance for Italian law, because it appears that the only requirements for copyright protection for designs are creativity and the fact that the intellectual creation takes the form of an object endowed with an expressive and identifiable value (ie, the work itself). Paragraph 35, in particular, states that when these two requirements are met, copyright protection must be granted by EU member states. If that were the case, it would mean no room for the 'filter' under Italian law (and the case law interpreting it) – namely, artistic value. In practice, the theory of unité de l'art, codified in France since 1909, which protects the works of so-called 'applied art' in the same way as all others would be transposed into Italian law.

Would this be a wise solution? In some respects, yes. The discrimination against certain categories of design risked contravening the constitutional principle of equality. However, in other respects, the legal distinction for works of applied art could be justified by the anti-competitive effects that a long-lasting protection such as copyright provides for industrial products (ie, 70 years after the year of the author's death, which in some cases can mean approximately 150 years of protection).

The legitimate expectations of third parties are another issue. There are countless design projects which do not produce marketed products but which are nevertheless protected works and there are no provisions on advertising, as copyright protection cannot be subject to formal requirements. The risk is that manufacturers will be prohibited by the courts from continuing to produce and market products on the request of a party which has designed a similar product before it, even though the former was unaware of the latter's product. The absence of guilt could allow the former to avoid paying compensation; however, under Italian case law the disgorgement of profits is still due in such cases. In the meantime, investors will be in danger of being frustrated.

It will therefore be necessary to rethink how best to resolve copyright protection issues in Italy, starting with the question of similar intellectual creations made independently by different authors, to which it seems impossible to apply the criterion of prevention outlined above. Similarly, the boundaries between elaborating a planned work which cannot be exploited without the rights holder of the original work's consent and the possibility to draw inspiration from protected works for the creation of autonomous works which do not interfere with prior exclusive rights will need to be better defined. Applying the criteria elaborated by Italian case law and scholars for essentially literary works to works of design will require prudent application to avoid unnecessary protections which extend not only to creative expressions (the only object of copyright protection), but also to the underlying ideas (which cannot be monopolised) or utilitarian aspects of a product (which can be protected only at the patent level).

These concerns emerge clearly in the advocate general's conclusions in Cofemel-Sociedade, which raised the question of the protection of a work of design in relation to clothing (G-Star's 'Elwood' trousers had already been subject of an ECJ judgment relating to the trademark protection of a design likely to confer substantial value on a product (Case C-371/06)).

The same problem is addressed in Paragraphs 49 to 55 of the ECJ's decision, which is of particular relevance to Italian IP law and gives cause to reflect on the relationship that such types of intellectual creation have with their utilitarian function and the role that aesthetics play in the creative process, especially with regard to clothing. This way of thinking opens the way to a multidisciplinary approach to examine the creative element of works of design and the existence of a 'work', which could also develop how the Italian courts assess artistic value.


In the short term, if the ECJ's decision in Cofemel-Sociedade is interpreted as examined above, it will have a significant impact in Italy, leading to a probable increase in litigation and greater uncertainty.

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