The Italian Supreme Court rules on the copyright protection of a work included in an exhibition stand (and on the consequences of Cofemel)

By judgment no. 11413/24 of last 29 April, the Italian Supreme Court confirmed judgment no. 2089/22 of the Milan Court of Appeal, which denied copyright protection to the lamp pictured below, on the left, in respect of the one, on the right.   

Specifically, the lamp on the left (the “first lamp”) was designed by the brothers Pier Giacomo and Achille Castiglioni as part of the exhibition stand shown in the photograph, made for the Xth Milan Triennale in 1954. It was not an item of serial production: its production was limited to the examples used in the exhibition stand.

The lamp on the right (the “second lamp”), instead, was designed, in 2015, by a nephew of the Castiglioni brothers, in homage to their work (hence the lamp’s name “1954”), and it was licensed to a French company. In light of this, Pier Giacomo Castiglioni's daughter took legal action against her cousin and the French company for infringement of the copyrights on the first lamp.

The Milan IP Court, in its judgment no. 1320/21, granted the daughter’s claims, stating that the first lamp was copyright-protected, as it met the necessary requirements of creative character and artistic value even when considered alone, "separately from the overall exhibition stand, as a sharp element of the same having full autonomy (...), the interest in which and whose aesthetic value remained intact decades after its creation, which confirms its artistic level, capable to differentiate it from ordinary designs”.

The second lamp was then considered a plagiarism, on the basis of the fact that it only showed “two irrelevant variations, the first dimensional, the second of purely functional characteristics: in summary, the original exhibition stand was made using 22 cones of four meters in diameter with a lighting element - the spotlight - outside the cone, while the contested lamp is the same size as a normal lamp and the lighting element is inside the transparent cone”.

The decision had been overturned by the Milan Court of Appeal, according to which the first lamp did not deserve copyright protection, and their decision has now been confirmed by the Supreme Court.

Indeed, the judgement of the Supreme Court does not include an assessment on the merits of the case, as it just states that the existence of the requirements for obtaining copyright protection is subject to a factual judgment that the Supreme Court cannot re-assess. However, this judgement seems to endorse some statements of the Court of Appeal which seem to overlap the two requirements posed by the Italian law for the copyright protection of industrial designs, namely creative character and artistic value (art. 2 no. 10 Italian Copyright Law). In fact, on the one hand the Court of Appeal stated that the first lamp, when considered alone, would lack "creative character", but on the other hand this creative character was not assessed (and in practice it is rarely considered non-existent by the judges): indeed, the reasoning is essentially grounded on the evaluation of the artistic value.

In particular:

      i.         first of all, the Court of Appeal recalled the Italian case-law according to which "the artistic value of the work must be proven by those who invoke protection on the basis of objective parameters, not necessarily all present, such as the recognition of its aesthetic and artistic qualities in cultural and institutional circles, its display in exhibitions or museums, its publication in specialized magazines, the awarding of prizes, the acquisition of a market value exceeding that linked to functionality, the creation by a well-known artist (Supreme Court decisions no. 33199/2023 and no. 23292/2015)”;

     ii.         the Judges then proceeded to verify the artistic value in the specific case, and stated that the evidence on file consisted of awards, newspaper articles and photographs which always referred to the exhibition stand as a whole and not to the individual lamp. In light of this evidence, they concluded, "it must be considered that the perception of the design work (lamp) in question is consolidated in the community, and in particular in cultural circles, in its scenographic function, and that the iconic value of the same is not to be attributed to the lamp per se, but rather to its use as a "tool to create the exhibition stand".

In summary, besides the aforementioned issue regarding creative character / artistic value, what emerges from the decision is an alleged evidentiary gap: the evidence, as it always referred to the exhibition stand as a whole, was considered capable to demonstrate the copyright protectability of the latter but not of the first lamp individually. Indeed, this assessment could give rise to some doubts, but it is not actually possible to comment on it without having seen the evidence in question.

Furthermore, plagiarism was in any case excluded due to the lighting element positioned inside the second lamp, in place of the external spotlight of the first lamp: this, "far from constituting a mere "irrelevant" element (as asserted by the Milan IP Court), appears to exclude the very plagiarism, as it contributes to create a different light diffusion method and a different visual and stylistic impact". Even this assessment actually raises some doubts, and in this case the examination of the images depicted above seems sufficient to make the writer think that the contrary assessment made by the Milan IP Court was more accurate.

The Supreme Court also recalls another point of the Court of Appeal's decision which cannot be shared, namely that, in any case, the first lamp itself could not be protected as an object of industrial design because it was not produced in a serial manner but only for the purposes of the exhibition stand. It is hard to understand what the ground for this conclusion would be. Furthermore, it is peculiar to note how years ago the opposite was argued, i.e. that precisely the serial reproduction of industrial design excluded their copyright protection.

Finally, a noteworthy point of the Supreme Court's decision concerns a very brief mention of the differences in copyright protection between the Italian and European law, in particular after the Cofemel ruling which we talked about here on this blog. The Supreme Court in fact notes that "it results from consistent EU case law that, for a work to be considered original, it is necessary and sufficient that it reflects the personality of its author, demonstrating his/her free and creative choices (...), with no need for the further requirement that it produces a visual effect which is relevant from an aesthetic point of view (CJEU, 12.9.2019, case C-683/17; Supreme Court decision no. 8433/2020)”. The Supreme Court, as it had already done in the Kiko case which we talked about here on this blog, therefore seems to once again endorse the need for an interpretation of the Italian law which disapplies the requirement of "artistic value" as it is not in line with EU law.

A final word on the consequences of this judgment. At this point, one wonders what the protection against possible plagiarism would be for the second lamp itself, which, in light of the above decision, on the one hand would in turn struggle to obtain copyright protection; on the other hand, it does not appear to be registered as a design (for which, in any case, it would probably be difficult to support the existence of individual character). The protection against unfair competition, in particular for slavish imitation, would remain in place, provided that distinctiveness of its shape could be demonstrated.