Design and copyright in Italy: a cumulative approach to protection

A recent case demonstrates the interdependent relationship between registered design rights and copyright in Italian law.  For designers, it underscores the fundamental importance of registered design rights for protecting their work.

Protection as a registered design

In Italy, a work may be registered as a design if “the appearance of the product as a whole or part thereof such as its lines, colors, shape, texture or materials is new and has an individual character” (article 31 of Legislative Decree n. 30/2005 – Italian Intellectual Property Code, following the EU Designs Directive 98/71/EC).

• A design work will be defined as new if it has never previously been disclosed and no application has ever been made for its registration.
• The individual character requirement is met if the product results in a different overall impression from that caused by any other design work. Once registered, a design can be protected for up to 25 years.

Protection under copyright law

In addition to the protection afforded under design law, an industrial design work may also receive copyright protection when it has a creative character and an artistic value (article 2, num. 10 of Law n. 633/1941 – Italian Copyright Law). In order to assess whether the design meets these criteria, it is the work in its entirety that must be evaluated from a creative and artistic point of view.

Under the Italian approach, the creative character derives from the authorship and originality of the work while the artistic value relates to its aesthetic appeal and prestige. However, the latter element is not evaluated by the judge through the purely subjective perception of the design but by consideration of the approvals obtained by the work itself from industry experts. If a work qualifies for copyright protection, it can be protected for the entire life of the designer and a further 70 years.

Thus, there is clearly an advantage to the designer if the work can be protected by copyright. But where a work is of a commercial nature, it may be difficult to demonstrate that it has the necessary creative and artistic qualities.

How do design rights and copyright law relate to each other?

These two rights may be interdependent, as shown by a recent case decided in the Court of Milan(decision n.1935 dated 16.2.2016).

The producer of a range of ceramic animals and figurines had brought a claim on the ground of infringement of both its copyright and registered designs against a competitor who produced and used similar animals and figurines in commerce.

The Court clarified that industrial reproduction of a design – that allows large scale production – does not affect the artistic value and creativity that may also be found in simple and repeatable forms.

As regards the artistic value of the claimed products, the Court stated that this requirement is not diminished by publication of those works in major magazines, expositions at fairs and in catalogues, or dissemination through mono-branded shops and in malls. In contrast to the reputation of a trade mark, which may be affected by the way in which it is promoted and the channels through which the branded product is sold, copyright is independent of these matters.

Moreover, the Court added that the higher prices of the protected products compared to similar products on the market proved that consumers purchase these original products not only for their ornamental function but also for their aesthetic value, thus helping to satisfy the requirement of artistic value. Those higher prices, of course, would not have been possible without the registered design protection.

In relation to the creative requirement, the Court underlined that this does not require absolute novelty, creation and originality but, rather, a personal and subjective interpretation of something already existing, bringing the author’s expression of the idea into reality.

Consequently, the Court of Milan ruled in favour of the producer of the original ceramic animals and figurines by recognizing its rights not only as the owner of their design models, but also as the author of the relevant and embedded copyright work – entitling it to the much longer period of protection afforded under copyright law.

Lessons for designers

The registration of a design work is of fundamental importance due to the possibility for its owner to gain the relevant protection up to a maximum of twenty-five years and giving the author the time necessary to obtain the due appreciation of the design work. That evidence of due appreciation is then relevant for the purpose of demonstrating the artistic value of the design product that is in turn necessary to gain the copyright protection and, therefore, the related protection for the longer protection period (i.e. 70years after the author or creator’s death).