The Supreme Court on the copyright protection of jewellery items

Last August 1st, with sentence No. 30289, the Supreme Court Criminal Section ruled on the possibility of granting copyright protection to jewellery items.

The case concerns the offering for sale, by a goldsmith, a collection of counterfeit necklaces allegedly copied from those created, and registered in 2014 by, the company 3VPretty Bijoux in the Register of protected works and covered by copyright legislation at the Mi.BACT. ("Ministero dei Beni delle Attività Culturali e del Turismo"). The sale was therefore in violation of Article 171-ter, paragraph 2, lett. a) LdA, which punishes the unauthorised reproduction or dissemination of works protected by copyright.

During the proceedings, the Court of First Instance had sentenced the defendant to imprisonment, recognising that the object necklaces were protected by copyright. According to the Court, in fact, such costume jewellery objects were endowed with creative character with regards to their shape, choice of material and uniqueness.

The Court of Appeal of Milan, Criminal Section, overturned the sentence imposed by the Court of First Instance, and instead acquitted the competitor, clarifying that 3VPretty Bijoux's collection of necklaces did not constitute a similar work of figurative art.

The decision was therefore challenged before the Supreme Court, which, first of all, repeating previous civil decisions (including Cass. Section 1 Civ., no. 7477 of 2017) focused on the characteristics of "works of similar figurative art" under Article 2, no. 4 of the LDA and of "works of industrial design" under Article 10 of the LdA. On this point, the judge reiterated that the two premises (under No. 4 and No. 10) are mutually exclusive. In particular, the work of industrial design is protectable in the presence of creative character and artistic value of the work while protection under Art. 2, no. 4, "refers to a product of creativity - identifiable through its author, and expressed in figurative form - which must find expression in a single copy or in a limited number of copies, given that interest in the work is also aroused in users by the uniqueness of the creation or by the limited number of replicas, and the fact that it is intended for a different and certainly a more restricted market, than that to which the goods, subject to industrial production, are targeted".

According to the Supreme Court, these principles must also be reaffirmed in the interpretation of Article 171-ter, paragraph 2(a) of the LdA, and therefore the protectability of the necklaces seized under Article 2(4) must be rejected, because "it is undisputed that the necklaces were originally intended for retail sales, then for wholesale sales: they are not works of figurative art intended to be created as a single copy or as a limited number of copies, as the Court of First Instance erroneously held".

The Supreme Court rejected protection under Article 2(10), because the artistic value of the seized goods had not been proven. Moreover, it was noted that the Court of First Instance had already ruled out that those goods could qualify as works of design, based on a finding of fact.