Copyright and industrial designs: the saga continues

The Italian provision granting copyright protection to works of industrial design has been amended five times in the past 11 years. Controversial provisions establishing a long grace period for infringers that commenced their activities before 2001 have been repeatedly amended under pressure from the European Commission. The most recent amendment has now extended the grace period for infringement to 13 years. At some point, the European Commission is expected to opine on whether this latest amendment is acceptable.

Law 14/2012, which became effective in Italy on 28th February 2012, amended once again Article 239 of the Industrial Property Code. This article, dealing with limits on copyright protection, created a grace period (or moratorium) on design infringement for the benefit of those who had begun to infringe before 2001. Article 239 has previously been amended four times. Under the latest amendment, the moratorium has been extended from five years to 13 years.

Relevant provisions
The extension of copyright protection to industrial design in Italy arises from: 

  • Articles 44 and 239 of the Industrial Property Code.
  • Article 2 of the Copyright Law (633/1941).

Legal background
Articles 17 and 19 of EU Directive 98/71/EC established the key principle of the accumulation of protection, granting protection to industrial designs under both registered design laws and copyright laws, while leaving member states free to establish the extent of copyright protection and the conditions under which such protection can be granted.

The directive was implemented into Italian law by Legislative Decree 95/2001, which became effective on 19th April 2001. Before that date, according to Article 2 of the Copyright Law, copyright protection was granted only to those works which complied with the “separability principle” – that is, works, including industrial applications of works, that have artistic value conceptually separable from the industrial nature of the products with which they were associated.

Legislative Decree 95/2001 amended Article 2 of the Copyright Law by removing the separability requirement and adding to the list of protected works those “industrial designs which posses in themselves creative character and artistic value”.

That decree was subsequently modified by Legislative Decree 164/2001, which introduced new Article 25. This article established a 10-year moratorium, starting on 19th April 2001, during which:

the copyright protection conferred on designs shall not be enforceable against those who engaged before that date in the manufacture, supply or marketing of products based on designs that were in, or had entered into, the public domain.

The Industrial Property Code, adopted in 2005, incorporated this provision in Article 239.

However, the European Commission started Infraction Procedure 4088/2005 against Italy because of this moratorium period, since it was considered to be inconsistent with Directive 98/71/EC.

Consequently, Law Decree 10/2007 (later converted into a law by Law 46/2007) amended Article 239 of the Industrial Property Code by abolishing the 10-year moratorium period. However, this was widely regarded as unfair.

The discussions led to a third version of Article 239 of the Industrial Property Code, introduced by Article 19 of Law 99/2009,  which established that copyright protection does not apply to designs which fell within the public domain before 2001. This version of Article 239 again risked the wrath of the European Commission.

Legislative Decree 131/2010 introduced a fourth version of Article 239, which re-established copyright protection for industrial design products which had not been registered before 19th April 2001, and thus were in or had entered into the public domain. It also provided a moratorium period for third parties which, within the 12 months prior to April 2001, had produced or commercialised products which would now be copyrightable under the new law but at that time would have been considered to be in the public domain. These parties would not be in violation of copyright by continuing their activities after 19th April 2001, but only in respect of products produced or purchased by them before this date, or produced in the subsequent five years (ie, until 2006), provided that such activity was consistent with the quantitative limits of their prior use.

Was this provision consistent with EU law? No, said the European Court of Justice (ECJ). The Milan court referred Flos v Semeraro to the ECJ and on 27th January 2011 the court issued its decision in Case C-168/09, expressly stating that a national provision may not exclude – neither totally, nor for such a substantial period as 10 years – copyright protection for designs which entered the public domain before the entry into force of that law.

Latest amendment
Article 22bis of Law 14/2012 (which converted Decree-Law 216/2011) introduced the latest version of Article 239 of the Industrial Property Code, extending from five to 13 years the tolerance period in which copyright protection for designs may not be enforced. Consequently, the moratorium has now been extended to 2014, so that third parties which, prior to 2001, were reproducing designs which are now (but were not then) protected by copyright can lawfully continue their activity until 2014.

However, this latest amendment seems to conflict with the relevant EU provisions and the ECJ's decision of 27th January 2011. The amendment has been strongly criticised by several industry associations. Moreover, anti-counterfeiting coalition Indicam and Federlegno Arredo, a professional association of the manufacturers of quality furniture, has filed a complaint against Italy with the European Commission.

The large number of legislative changes to Article 239 of the Industrial Property Code have been closely associated with the economic relevance of the provisions concerning the application of copyright protection to works of industrial design. Italian companies have always been, and still are, quite prolific in creating new designs in a myriad of different fields, particularly fashion and interior design. For this reason, protecting designs by copyright is of particular interest to Italian industry, and has significant economic consequences.

It is questionable, especially considering the current position of the relevant business associations, whether the latest legislative changes really ensure the proper balance of the interests of all parties involved.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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