Copyright protection of design works and the Italian requirement of “artistic value” after Cofemel

The judgments of the EU Court of Justice in the Cofemel and Brompton cases seemed to have expanded the range of design products protected by copyright; we talked about it here and here on this blog. In particular, the first decision appears to exclude that copyright protection can be conditional on the fact that the product possesses "artistic value" required by art. 2 no. 10 Italian Copyright Law (ICL): in fact, it stated that, to be protected by copyright, a work must possess only two cumulative requirements, namely originality and identifiability. In the presence of these requirements, the work must be protected regardless of the existence of other characteristics such as, for example, a particular aesthetic quality.

This interpretation was soon endorsed by the civil Court of Cassation in its sentence no. 8433/2020, which stated: "The EU Court reiterated that the originality required for copyright protection, that is, the existence of a defined and creative form of expression, which reflects the freedom and personality of its author, does not also imply that this form of expression produces a relevant visual effect from an aesthetic point of view".

However, three years after the European decision, the Italian trial courts still seem far from recognising that copyright protection cannot be conditional on the existence of any artistic value and that the corresponding national law must therefore be set aside, since it is contrary to the prevailing European laws. Below are the most relevant decisions on the matter.

Softwall

With an order of 5 July 2021 relating to Softwall movable walls, the Court of Milan expressly recognised that "The comments following the Cofemel ruling seem to substantially converge on the fact that the European Court would seem to have ruled out that industrial design works may be subject to an alternative or additional requirement to the general one of creative character or originality. This ... would determine the impossibility of proposing additional requirements ... such as artistic value". Despite this, the Court held that the ECJ’s judgment – contrary to the Advocate General’s conclusions – omitted to examine the "possible distorting effects on competition related to the recognition of a more generalised and temporally almost unlimited protection" to works for which competitors would have no way of clearly and preliminarily understanding whether they are subject to this protection or not. For this reason, according to the Milanese judge, the Cofemel ruling does not allow affirming the incompatibility of the internal rule with the EU law, and therefore disapplying it. Incidentally, it should be noted that the product has in any case obtained copyright protection due to the acknowledged existence of artistic value.

Land Rover Defender

With an even more trenchant order of 4 August 2021, in relation to the Land Rover Defender car, the Court of Rome stated that it could not “share the conclusions reached by the petitioner based on the Cofemel ruling, i.e. that the artistic value required by art. 2, co. 1, no. 10 ICL is not required anymore, so that designs can be granted the broader and longer lasting protection granted by copyright". According to the Court, in fact, the ECJ in the Cofemel case would have nonetheless focused on art. 17 of Directive 98/71, according to which the extent and conditions under which copyright protection is granted to design works, including the degree of originality required, are determined by each individual Member State. This, according to the Judge, would confirm compliance with the EU laws of the requirement of "artistic value", it being the aesthetic quality necessary for originality to exist. This requirement was deemed not to be proven, hence the car was not granted copyright protection.

The Court of Venice, in the order of 5 July 2021, relating to chandeliers that resembled the typical style of Murano and to which copyright protection was granted, instead expressed greater adherence to the wording of the ECJ. In fact, in that case, the Judge stated that "according to the Court of Justice, there would be no room under EU law to introduce limitations to copyright protection where industrial design is concerned, requiring the artistic value of the work. Thus, without going so far as to exclude the need for said requirement posed by art. 2 no. 10) ICL, it can however be reasonably considered that this requirement can be assessed in a less rigorous way".

However, another Judge of the same Court, with an order of 3 August 2021 (not published) relating to rings, appears to have instead stated that the Cofemel ruling did not abolish the requirement of artistic value, and that the protection requirements imposed by the national law must be rigorously evaluated.

Le Pliage

Finally, with the most recent sentence no. 1679/22, relating to the Le Pliage bag, the Court of Milan instead affirmed incidentally that the Cofemel ruling “could have substantially abrogated” the requirement of artistic value. However, in that specific case, the judges considered that originality was not proven, and denied protection without elaborating any further on the subject of artistic value.