In a decision published on 12 July (no. 8628/2016), the IP Court of Milan granted copyright protection to the Moon Boots by Tecnica Group S.p.A., the famous après-ski boots in vogue for decades, ascertaining that they were infringed by the Anouk après-ski boots by A. depicted below to the right.
Click here to view the image.
Specifically, Tecnica sued A. complaining that the Anouk après-ski boots constituted violation of both its copyright on the Moon Boots, and of certain registered Community designs related to the “east-west” collection (reproduced below), which allegedly represented the stylistic evolution of the Moon Boots. That commercialisation allegedly also amounted to unfair competition to Tecnica’s detriment.
In the judgment in question, the Court first of all confirmed that the Moon Boots meet the “creative character” and “artistic value” requirements posed by Art. 2 no. 10 of the Italian copyright law for a design product to enjoy copyright protection (the requirements of which we have discussed amongst others here and here on this blog). The Judges reasoned that: “The Moon Boots may well boast of the characteristics of a creative work, having the artistic value required by Art. 2 no. 10 of the copyright law, in view of their particular aesthetic impact, which, at the time of their appearance on the market, profoundly changed the very aesthetic concept of après-ski boots, becoming a true icon of Italian design and of its ability to make the taste of an entire historical epoch irreversibly evolve in relation to everyday objects. Not surprisingly, the product received national and international awards, and was the subject of widespread Italian and international publication on monographies on contemporary design. The Moon Boots enjoyed favourable reviews by experts and designers and a flattering and broad acceptance by the public, consistent over time. In addition, in 2000 they were chosen by the Louvre Museum as one of the 100 most significant symbols of twentieth century international design.”
Having thus ascertained that they are protected by copyright law, the Court also found that the Moon Boots were counterfeited by the defendant’s products: “The Anouk model by the defendant A. presents all the creative features of the Moon Boots, except that the height of the slider is reduced and the couples of eyelets are two instead of three (with an almost imperceptible aesthetical effect). Not surprisingly, the audience of users, especially those conscious of fashion phenomena, such as thematic blog managers, welcomed Anouk with expressions that cannot set aside reference to the iconic prototype by Tecnica, for example: ‘the evolution of the Moon Boots: now you wear them short’, ‘the Anouk boots by A. resemble the Moon Boots, in a more refined version and with the A. motifs and colours’, ‘A. went back to the iconic Moon Boots’.
The Judges further highlighted that, contrary to what was stated by the defendant, the shape of the Moon Boots could not be considered in the public domain due to the use of the same by many undertakings: Tecnica, in fact, was shown to have taken appropriate action against copies.
The judgment then went on to assess the violation of the Tecnica registered designs reproduced below, noting that this assessment was unnecessary in light of the already established copyright infringement. However, since the defendant had asked for a declaration of invalidity of these designs, the judges verified the existence of the relevant legal requirements, alias “novelty” and “individual character”, both considered to be satisfied.
Click here to view the image.
In particular, the judgment concluded that the prior art submitted by the defendant was not capable of depriving the plaintiff’s designs of novelty, the latter being sufficiently different from the former. As for the individual character, the Judges specified, “it requires that the shape is distinguishable on the market for the ‘informed user’, i.e. the final purchaser who is sensitive to the forms of the products and has knowledge of the market sector of reference, being attentive to market novelties”. This, according to the Judges, occurred for all the enforced models, which were therefore considered valid.
Finally, the Judges omitted any assessment of the unfair competition claim, considering it absorbed in the ascertained copyright infringement as it was based on the same facts.
In conclusion, the judgment enjoined the defendant from further marketing the products in dispute, fixing a penalty of € 250 for each extra pair of boots marketed, rejected the counterclaim for invalidity of Tecnica’s registered designs, and ordered that proceedings continue for the assessment of the damages caused to the latter.