The design-copyright interface: the Italian Supreme Court rules on street furniture

Can there be a more challenging IP issue than the copyright-design law overlap? Former Guest Kat, Valentina Torelli, has reported on the recent decision by the Supreme Court of Italy in this regard.

"The interplay between copyright law and design law is fertile ground for differing positions across various jurisdictions, and Italy is no

exception. A recent example is the decision of the Italian Supreme Court in judgment no. 23292, of 13 November 2015, in the case of design infringement (Metalco S.p.a., Metalco S.r.l. v. City Design S.r.l. and others). In its decision, the Court pointed to the need by the plaintiff to show the requisite artistic value of the design for copyright protection to apply. Accordingly, the Court carried out an analysis of the artistic value of the appellant's designs on the basis of what it viewed as objective factors to recognise such value. It concluded that no copyright protection could be accorded to those designs.

The Supreme Court's decision dealt with an action for infringement and unfair competition brought before the Court of First Instance and the Court of Appeal of Venice by the Italian company, Metalco S.p.a., against a competitor, City Design S.r.l. Both companies are engaged in the manufacture and commercialisation of street furniture design. Metalco claimed, inter alia, that City Design had infringed copyright in the benches, which are part of its product line Libre and, as well, City Design had engaged in unfair competition in imitating these designs. City Design denied that the benches at issue could be accorded copyright protection and it sought in turn a declaration that Metalco had infringed design rights in several City Design products.

With respect to the claim of copyright infringement, the two lower courts rejected Metalco's claims. On appeal to the Supreme Court, Metalco argued that the courts had erred in respect of the following: a) in proving infringement under Article 1 and Article 2 of the Italian copyright Law [Legge 633/1941 Protezione del diritto d'autore e di altri diritti connessi al suo esercizio], the artistic value of a design should be determined on the basis of objective factors under the circumstances, including reference to the works in encyclopaedias, awards received, participation in exhibitions and mention in reviews; and b) as such, the lower courts did not take into account that Metalco's benches had been exhibited at the Shanghai Fair, had appeared in the exhibition catalogue, “Disegno e Design. Brevetti e creatività italiani”, and that Metalco had shown the design at a temporary exhibition as part of the Shanghai Expo of 2010.

In rejecting the appeal, the Supreme Court referred to Directive 98/71/EC of the European Parliament and of the Council on the legal protection of designs, which provides for the coexistence of design and copyright protection. Article 17 of the Directive allows Member States to determine “the extent to which, and the conditions under which, such a [copyright] protection is conferred, including the level of originality required” [See the judgment of the Court of Justice of the European Union in case C-168/09 - Flos SpA v Semeraro Casa e Famiglia SpA , for a discussion of the scope of Article 17]. On the basis of the Directive, the Italian copyright law was modified and Article 2 no. 10 was added to include industrial designs with creative character and artistic value among the non-exclusive list of copyright-protected works. The Supreme Court then considered whether Metalco's works contained sufficient creative character and artistic value to attract copyright protection.

The notion of creative character had previously been construed by the Supreme Court, which defined it as the designer's subjective and personal expression of an idea resulting in its incorporation within the design. Creative character can be found even when the features are arguably simple and the idea underlying the design is not unique to the design at issue. What constitutes the artistic value of a design is not susceptible to an exhaustive definition. Still, the Supreme Court identified a number of both subjective and objective factors that help determine whether a design is entitled to copyright protection in light of the specific facts and circumstances of the case. The Supreme Court acknowledged that substantive factors depend upon the aesthetic criteria, artistic sensibility, tastes and perceptions of the particular judge. Therefore, the Supreme Court went on to point to objective factors that also need to be taken into account in order to ensure a degree of judicial harmonization. The Supreme Court emphasized that the key objective factor is the degree of recognition of the design within the appropriate cultural and institutional circles, which confers upon the design a degree of aesthetic value that clearly transcends the design's functionality, no matter how elegant.

In determining whether such a degree of recognition exists, display of the design in exhibitions and museums, coverage in speciality journals, awards and positive critical reviews are all relevant. Likewise, if the design is sold only within a defined art market, or it is highly valued in the more general commercial market, this will point to the design as enjoying the requisite artistic value. In the latter case, the contribution of the artistic element to the overall design derives from the added value that the design contributes to the functional features of the object. At least to a certain degree, if a renowned artist creates the design, it is usually presumed that the design has artistic value.

That being said, the Supreme Court confirmed the findings of the Court of Appeal of Venice and rejected the argument that the design had sufficient artistic character for design protection to apply. In particular, the Court noted that the alleged artistic elements of the design did not have sufficient recognition within the requisite cultural circles. Moreover, the artistic value of Metalco's designs at issue could not be deemed to have derived solely from having exhibited at the Shanghai Fair, which was a commercial fair without sufficient artistic character to provide a basis to conclude that the design was entitled to copyright protection."