(Published also on Diritto 24 – Il Sole 24 Ore)
The copyright protection of industrial design works in Italy seems to be at risk again. This is because of a rule introduced in the so-called “Sblocca Italia” (“Unblock Italy”) decree due to be published shortly, which would change for the umpteenth time art. 239 of Legislative Decree no. 30/2005 (Intellectual Property Code, “IPC”), already schizophrenically amended countless times in the past: see our post about it here, here,here and here.
In a nutshell, the question is as follows. Legislative Decree no. 95/2001, which entered into force on 19 April 2001, introduced in the Italian Copyright Law (no. 633/41, “ICL”) the provision granting copyright protection to “works of industrial design having creative character and artistic value” (art. 2(1)(10) ICL). The rule finally replaced the provisions of art. 2(1)(4) ICL, which had previously granted protection only to works of industrial design whose artistic value was “severable from the industrial nature of the product“. In fact, courts had found this “severability requirement” unlikely to be met, thereby nearly always denying copyright protection to design products.
With the amendment introduced on 19 April 2001 there was then no longer any doubt—nor possible application of case law to the contrary—of the possibility of granting copyright protection to industrial design works. The new provision, however, allegedly damaged a number of companies that prior to that date had manufactured and/or marketed copies of designer products considering themselves entitled to do so precisely by the case-law that had almost always denied protection to design products. The lobbying activities carried out by those companies led to the introduction of the so-called “moratorium” in the aforementioned art. 239 IPC, according to which, in essence, those companies could continue to market copies for another ten years, i.e. until 19 April 2011, in order to clear out their stock and reorganise their production.
Since then, art. 239 IPC has been modified several times in two opposite directions: on the one hand the “copiers” have tried several times to broaden its scope (increasing the duration of the moratorium, or extending it even to those who had not started marketing the copies before 19 April 2001); on the other hand, the copyright holders have tried to obtain its elimination or the reduction of its duration, also based on its incompatibility with the Community law (which incompatibility was confirmed by an infringement procedure commenced by the European Commission against Italy, as well as by a subsequent judgment by the European Court of Justice (“ECJ”) in C-168/09). Nevertheless, in the end the moratorium still stood, and indeed its life was prolonged from 10 to 13 years, coming to expire on 19 April 2014. Once this term expired, the question seemed to be closed.
But no: according to the draft available, the “Sblocca Italia” decree is to re-edit art. 239 IPC in order to introduce a new moratorium in our system. Indeed, this new moratorium would seem even broader than the former: in essence, any design products that before 2001 had not been registered as designs —namely inter alia the whole “classic design”— could be freely copied (though, by law, copyright protection does not require such registration).
This obviously goes against the requirements of legal certainty, the importance of protecting (and attracting) innovative companies, and the need to comply with the ECJ judgment and avoid a new infringement procedure by the European Commission (which now Italy might suffer again). It is hoped, therefore, that the change in the law —which has not yet been finalised, as the decree has not yet been published— does not progress, and that the provisions of law granting protection to design in Italy are not amended (to the aim of frustrating them) any more.