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16 July 2012
In an order issued on June 6 2012, the president of the IP Division of the Court of Milan granted protection to a well-known bed design. The case involved a large quantity of low-cost imitations which were manufactured by Mondo Convenienza, one of Italy's biggest chains of furniture stores - an advertising campaign featuring the infringing product was seen on billboards, trams and buses across Italy. Thousands of catalogues featuring the bed will now be withdrawn from circulation.
The 'Nathalie' bed was created in 1978 by Rosario Messina, founder of the bedroom furniture design house Flou, and by famous Italian designer Vico Magistretti. It is considered a masterpiece of Italian design and is part of the permanent collection at the Triennale Design Museum in Milan. Protection was granted on the basis of Flou's copyright in the design.
The decision is significant because it demonstrates that the Italian courts are no longer prejudiced against the possibility of protecting industrial designs with copyright. The Italian rule on copyright in design creations - which entered into force in 2001, when the EU Community Design Directive (98/71/EC) was implemented - provides that such creations are protectable by copyright only when they have creative character and artistic value per se. The expression 'per se' has been misinterpreted - sometimes by the courts - as meaning that protection should be granted only to objects which are not designed specifically in view of their daily usage. This interpretation takes no account of the notion that design usually aims to bring art into daily life.(1) Nonetheless, the scope of the rule is restrictive, in that copyright protection can be granted to design creations only if they have both creative character and artistic value. Since the latter quality is determined by a judge's subjective evaluation, this rule raises the issue of equal treatment - a principle which is set forth in Article 3 of the Italian Constitution.
The decision in this case takes an unequivocally modern approach to the protection of industrial designs and may serve as a point of reference in future - all the more so as the authoritative reputation of the judge who issued it lends it further weight. It is also significant that the court granted a preliminary injunction and ordered the seizure of the infringing products and accounting books, as well as requiring the infringer to publish the order in newspapers and magazines and on its website at its own expense. Given the heavy workload of the IP Division, it is particularly significant that this decision was issued in record time.
However, since the question was not at issue in this case, the court did not take a position on the interpretation of Article 239 of the Code of Intellectual Property. This article contains the transitional rule concerning the relationship between design creations protected by copyright and third parties which manufactured products based on such designs, without the owner's consent, before the introduction of copyright protection for industrial designs in 2001.
In Flos SpA v Semeraro Casa e Famiglia SpA the successive transitional regimes in Italy between 2001 and 2009 - which allowed third parties to continue to manufacture products based on industrial designs for a period of 10 years, or even for an unlimited period - were found to be unlawful, as they had the effect of extending the public domain regime in Italy (for further details please see "ECJ ends controversy over copyright protection for industrial designs").
The European Court of Justice's conclusion was that in order to comply with the directive, the only solution was to provide for a short period "suitable to permit the progressive cessation of the activity within the limits of the anterior use and to get rid of stocks". This "short period" was to be less than 10 years. In his opinion on the case, Advocate General Bot had stated that a suitable period would be five years from implementation of the directive. In this respect, Article 239 of the code - which was brought into line with the directive through the implementation of Legislative Decree 131/2010 - provides that all goods which were based on industrial designs and were manufactured after April 19 2006 (ie, five years after the directive's implementation in Italy) should be deemed counterfeit.
This rule was modified again in March 2012. The Italian legislature determined that copyright protection cannot be invoked until April 19 2014 against imitations manufactured "within the limits, including the quantitative limits, of pre-usage" by parties which, in the 12 months preceding April 19 2001, had manufactured and marketed such imitations. Nevertheless, this rule will not be applied by the Italian courts, as it does not comply with the directive. It is clearly incorrect and the main Italian associations in this sector - the Association for Industrial Design, the National Council of Architects, FederlegnoArredo and INDICAM - have already asked the European Commission to initiate an infringement procedure against Italy in this respect.
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