Industrial design and copyright protection – An update.

Industrial design and copyright protection – An update.

The CJEU steps in and things are likely to get tougher.

An interesting decision of an Italian First Instance Court.

In a mid-September post, I have reported about a recent interim injunction issued by a Fist Instance Court in Bologna. Such injunction assigned copyright protection with respect to a car model, which all collectors dream of. In its order the Court found that the specific car model constituted an unicum  due to the originality of the design, the strong customization of the lines, of the shape and of the aesthetics, as such entitled to benefit from the protection (which the Italian Copyright Act allows for an ‘industrial product’, capable of achieving a ‘creative’ and ‘artistic value’, i.e. a value ‘distinct’ from and ‘additional’ to that inherent to the object’s mere functionality).

While the ink of such post ‘was still wet’, I had to learn about a decision of the Court of Justice of the European Union – CJEU, dealing with the issue of copyright protection for products originating from industrial design. The decision[i] offers some interesting aspects.

Court of Justice of the European Union – decision September 12, 2019 – Case C-683/17.

The case originated from a dispute between two Portuguese companies, producing and distributing garments, and was referred by the Highest Instance Civil Court (Supremo Tribunal de Justiça) of that country.

The basic issue at stake was that of ‘who copied whom’ in relation to jeans and T-shirts available on the Portuguese market. The case went to court where the plaintiff argued that some of the defendant’s products were too similar to its jeans and T-shirts, therefore infringing on the provisions of the local Copyright Code, as the products in dispute constituted ‘original intellectual creations’ (protected by such provisions).

The defendant objected that garments – and specifically those at stake - were not capable of resulting in ‘original intellectual creations’ and could not benefit from the protection invoked.

The Court partially accepted plaintiff’s claims, the case was brought before a Court of Appeals – which confirmed the decision – and finally ended up before the local Supreme Court.

From there, the referral to the CJEU to assess:

- whether the reading of Directive 2001/29 (“on the harmonization of certain aspects of copyright and related rights in the information society”) proposed by the Court of Appeals prevents a national law – such as the Portuguese Copyright Code, Article 2/1/ì – from assigning copyright protection, inter alia, also to products resulting from (the execution of) industrial designs, when they, in addition to their functionality, convey an autonomous ‘visual effect’, relevant under an aesthetical perspective, in a way that ‘originality’ becomes the key criterion for such protection?

- whether such reading prevents a national law from assigning copyright protection to works of applied art, designs and industrial models, when they – based on a strict evaluation of their artistic value and on the prevailing perception in a certain  cultural and institutional context – may be considered as an ‘artistic creation’ or a ‘piece of art’?

The CEU’s views and decision.

The Third Camber of the CJEU noted that according to Directive 2001/29, copyright protection is granted – inter alia – to “authors’ works” (so Article 2/a) but that its provisions did not offer a specific and straight definition of the term “work”. Hence, such definition had to be found by referring to settled case-law, which requires a ‘work’ to be: (a) the outcome of an original intellectual creation of its author, and (b) the element/object resulting from the execution of such creation. 

As far as ‘originality’ is concerned, it is necessary that the object reflects the author’s personality and his free and creative choices, characteristics lacking when the execution of an object follows (and is determined by) technical criteria or rules, not leaving adequate room for ‘creative freedom’.

As to the second requirement, the Court sets that the term “work” implies the existence of an ‘object precisely and objectively identifiable’ (where it had clarified, in previous decisions, that such requirement was not properly fulfilled, when the object’s identification is based primarily on “intrinsically subjective sensations” perceived by who is observing the object (paragraph 34).

On such premise, the CJEU considered the first of the referred questions as meant to clarify whether industrial models qualify as “works” under the meaning of Directive2001/29. on this aspect, it held that according to Community Law, all objects suitable to constitute ‘intellectual property’ were entitled to protection, which, however, did not imply that all such objects (or categories of objects) were entitled to identical protection (paragraph 38). Hence, the level of protection offered by Community Law in force results not identical between different categories of intellectual property and distinguishes between copyright protection for ‘works’ falling under the regime of  Directive 2001/29 and that assigned to ‘designs’ and ‘industrial models’ under the provisions of Directive 95/71 and Regulation 2002/6. While the Lawmakers’ choice clearly attests that there is no ‘equivalence’ between the two categories, the mentioned provisions – containing different regimes of protection - are not mutually exclusive but may jointly apply.

However, the protection of copyright and that of designs and industrial models are directed at achieving distinct goals (and are governed by different legal regimes). The latter preserves IP rights in relation to objects, which – though being ‘new and individualized’ – pursue an ‘utility’ function and are intended for mass production, being such protection limited for period sufficient to recoup the initial investments but not apt to impact in a too negative way on competition. Instead, the exclusivity rights deriving from copyright cover a significantly superior period and refer to ‘artworks’ (paragraph 50).

Hence, copyright protection, when assigned to a ‘design’ or ‘industrial model’, cannot ignore the distinctions and the different scopes of the two regimes, which leads to the conclusions that a ‘design’ may benefit – jointly – from both protections only in very specific situation (paragraphs 51-52).

 The CJEU therefore concludes that the provisions contained in Article 2/a of Directive 2001/29 are to be intended as preventing national Statute Law from assigning copyright protection to ‘models’ (such as garments), when they – over their utility function - convey an autonomous ‘visual effect’, relevant under an aesthetical perspective (paragraph 56).

Given such answer to the first question the CJEU felt that there was no need to deal with second one submitted by the referring court.

The impact of the decision.

The decision will have a significant impact on the legal framework of countries (such as Italy), members to the EU, with provisions allowing copyright protection for ‘designs’ and ‘industrial models’ but setting for such protection additional requirements (i.e.  that of presenting – over a ‘creative character’ - an ‘artistic value’, a value ‘distinct’ from and ‘additional’ to that inherent to the object’s mere functionality.

The CJEU appears to have stated, very clearly, that, once a ‘design’ or ‘model’ constitutes an ‘original intellectual creation’ and an object resulting from the execution of such creation, it is entitled to copyright protection. Hence, national Statute Law may not set ‘additional’ requirements for such protection.

However, there is a (practical) side aspect deriving from such statement: design projects constitute “works” (potentially entitled to copyright protection) but there is no publicly accessible disclosure system in place, allowing proper knowledge about such projects. Hence, a company distributing a certain product (developed in-house) could find itself involved in nasty lawsuits and blocking actions from competitors manufacturing similar products, an issue likely to give raise to problems, as correctly noted by the Attorney General in its opinion submitted to the CJEU (on May 2nd, 2019).

In certain areas, designs tend to have ‘a short life’ (just think of the fashion industry or the technology sector) and are subject to frequent changes, adaptations or revisions, a factor that increases the number of projects conceived and executed by companies, on one hand, and that is likely to increase the disputes about products originating from such projects, on the other hand. Hence, it is not difficult to predict that this decision of the CJEU will keep national IP Courts busy in the future.

[i] The text of the decision is not available in English on the Curia website. Hence, the summarizing translation is mine and I apologize in advance for any inaccuracy.