The IP court of Milan protects Le Corbusier
The original Italian version of this article was published on Diritto 24 of Il Sole 24 Ore
With sentence no. 2311/14, issued on 17 February 2014 in case no. 37937/11, the Milan IP Court (Judges Mrs. Tavassi, Mr. Perrotti and Mrs. Gandolfi) decided in favour of Cassina S.p.a. in proceedings on copyright infringement and unfair competition commenced by Cassina against High Tech s.r.l. The subject matter of the dispute related to the copies of the works by Le Corbusier known as LC1, LC2 and LC4, marketed by High Tech in the absence of any authorisation by Cassina, i.e. the exclusive copyright holder.
In explaining the principles that regulate the copyright protection of industrial design works, the judgment in question widely refers to precedents of the same IP Court: among others, sentence no. 9906/12 issued in the Flos vs. Semeraro case, which was discussed here on this blog; as well as sentences no. 9173/12 and no. 9917/12, issued in two other cases where the defendant was the same High Tech s.r.l. and the plaintiff was multinational design group Vitra. This decision restates three points that were previously dealt with in the aforementioned judgments:
i) that the copyright protection of design works is granted by art. 2 co. 1 of Italian Copyright Law (Law no. 633/41, “ICL”), regardless of whether the works were registered as designs or not;
ii) that the so-called “moratorium period” provided by art. 239 of the Italian IP Code (Legislative Decree no. 30/2005, “IPC”) in favour of those who manufactured copies before the entry into force of art. 2 no. 10 ICL, which was discussed here on this blog, in its new thirteen-year term which is currently in force – and which will expire on 19 April 2014 – appears to be excessively long and for this reason in contrast with the community legislation and case-law. Moreover, it was not applicable to this specific case because the defendant had not started to manufacture the copies before art. 2 n. 10 ICL entered into force;
iii) that, in order to evaluate the existence of the “artistic value” requested by law – in addition to the “creative character” – in order to grant copyright protection to an industrial design work, “it is necessary to evaluate, as objectively as possible, the perception of that design work that might be well-established among the community and especially, broadly speaking, in cultural environments (…). To this end, a specific positive indication of the artistic quality of a design work is given by widespread recognition, expressed by more than one cultural institution, that the work expresses trends and artistic movements”.
On this last point, the court also recognises that a similar evaluation criterion can easily apply to older design works, whereas it would be more difficult to apply it to the latest designs that do not yet have a case history of recognition and appreciation. For the last ones too, however, it will be necessary “to try to ground the judgment about the artistic value on verifiable standards and not on arbitrary or merely subjective ones”, the standards for which shall be provided by the party requesting protection.
Finally, in confirming the infringement of Cassina’s copyright by High Tech, the decision lingers on the matter of compensation for damages. In this respect, it specifies that High Tech won’t be ordered to pay damages caused by marketing copies between 12 April 2007 and 14 August 2009. This is because, during that period, the then-current version of the “moratorium period” provided by art. 239 IPC – mentioned above – also applied to those who, as High Tech had, started marketing the copies after art. 2 n. 10 ICL entered into force.