Copyright for industrial items: does the Cofemel decision marks the end of the "artistic value" in Italy?
The decision of the Court of Justice of the European Union - CJEU on the Cofemel case could have a significant impact on the protection of copyright in designs, both at European and national level. In particular, the Court, intervening on the interpretation of the art. 2 of the InfoSoc directive, specified that any national provision granting copyright protection to designs and models subject to requirements other than originality (for example "artistic value" in Italy) does not comply with EU law. Is this principle also applicable in Italy?
The interplay between design and copyright law has always been complex and – at times – even tricky. Hence, not surprisingly, the decision issued by the CJEU on 12 September 2019 in the Cofemel case C-683/17, was long-awaited in the intellectual property field and might have a significant impact on the copyright protection of designs, both at the European and national level.
In particular, the case involved G-Star Raw CV and Cofemel – Sociedade de Vestuário SA, two companies active in the sector of clothing, including design, production and sale of materials. G-Star accused Cofemel of copying its designs related to jeans, sweatshirts and t-shirts products, claiming that its models constituted original intellectual creations qualified as "works" and protected under Portuguese Copyright Law. On the other side, Cofemel argued that such models could not be qualified as "works" and, hence, were not copyrightable.
As a result, the Portuguese Supreme Court, in the course of the national dispute, asked the CJEU, by means of a preliminary ruling, to clarify the interpretation of Article 2(a) of the InfoSoc Directive, which states that "Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: … for authors, of their works". In particular, the key question referred to CJEU was whether EU law Article 2(a) of the InfoSoc Directive prevents Member States from granting copyright protection to designs subject to requirements other than originality, e.g. the "aesthetic effect" required by Portuguese Copyright law.
In answering such a question, the CJEU moved from the concept of "work" under EU law, which needs a uniform interpretation. To this end, the CJEU ruled that such qualification requires the combination of two cumulative elements.
First of all, this notion implies that an original object is at hand, meaning it derives from an intellectual creation which can only be related to its author, reflecting its personality, as well as its free and creative choices. If the exercise of creative freedom is not remarkable in the creation of an object, being the creation only determined by technical constraints or rules, then the creation in question lacks the originality requirement.
Secondly, the qualification of "work" requires that the elements involved constitute the expression of such a creation (With regards to this aspect, see points Nos. 37 and 39 of the CJEU decision of 16 July 2009, Infopaq International, case no. C-5/08). In other words, the subject matter must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, as the CJEU stated also in Levola Hengelo (In particular, see point no. 40 of the CJEU decision of 13 November 2018, Levola Hengelo, case no. C-310/17). Therefore, there should be "no element of subjectivity, given that it is detrimental to legal certainty".
Moreover, the CJEU recalled that the InfoSoc Directive maintains the so called "cumulation" principle, whereby the protection afforded to designs and copyright is not mutually exclusive. As a result, models or designs may be considered "works" under the InfoSoc Directive, as long as the two cumulative requirements mentioned above are met.
However, the CJEU noted that the "aesthetic effect" that can be produced by a model is the result, among other things, of the subjective sensation of beauty felt by each person who looks at it (Similarly, see point no. 42 of decision of 13 November 2018, Levola Hengelo, case no. C-310/17). It recognized that this subjective effect in itself is not able to assess the existence of an identifiable object with sufficient precision and objectivity and, therefore, the "aesthetic effect" does not meet the requirements needed for the object to be considered as a "work" under EU law.
In light of the above, the CJEU finally ruled that Article 2(a) of the InfoSoc Directive must be interpreted as precluding national legislation from conferring copyright protection on models such as the clothing models involved in the case at stake, on the ground that they generate a visual effect of their own which is significant only from an aesthetic perspective. Moreover, it held that any national provision granting copyright protection to designs subject to requirements other than originality (e.g. Italian "artistic value", or Portuguese "aesthetic effect", as in the present case) is not compliant with EU law.
Looking at the Italian legal systems, this would suggest that also the requirement of "artistic value" provided by Article 2, No. 10 of the Italian Copyright Law in addition to originality for a design to access copyright protection in Italy does not comply with Article 2(a) of the InfoSoc Directive.
Nevertheless, it has to be kept in mind that the provisions contained in a directive, or either in a decision of the CJEU, are to be considered effective, and thus may be enforced, only in case of a dispute between Member States, or between a private (e.g. an EU company) and a Member State (so called "vertical effect").
This fundamental principle of EU law has been primarily enlightened in the Faccini Dori decision of the CJEU issued in 1994 (CJEU decision of 14 July 1994, Faccini Dori / Recreb, case no. C 91-92, where the CJEU ruled that "consumers cannot derive from the directive itself a right of cancellation as against traders with whom they have concluded a contract or enforce such a right in a national court"), and has been upheld by the subsequent case-law of the CJEU until the date hereof (On this matter, see more recently the CJEU decision of 7 August 2018, David Smith / Patrick Meade, Philip Meade, FBD Insurance plc, Ireland, Attorney General, case no. C-122/17).
Therefore, the decision in question will not be enforceable in a case brought in Italy between private parties (e.g. a copyright holder and an infringer), as the incorrect implementation of directives shall be enforced only against the Member State that was in charge of it.
The rationale of this principle lays in the fact that a possible extension of the provisions contained in a directive to issues related to private parties, has been considered by the CJEU as equivalent to recognize to the EU the power to institute immediate and binding obligations towards individuals; instead, according to the CJEU, such power is recognized to the EU institutions only with respect to regulations (See point no. 42 of the CJEU decision of 7 August 2018, David Smith / Patrick Meade, Philip Meade, FBD Insurance plc, Ireland, Attorney General, case no. C-122/17, and point no. 24 of the CJEU decision of 14 July 1994, Faccini Dori / Recreb, case no. C 91-92).
As a result, even if through the Cofemel decision the CJEU keeps moving forward towards the grant of a more easily accessible copyright protection, the enactment of a new national law which removes the requirement of the "artistic value" to access copyright protection under Italian law is needed for Italy to finally be compliant with the InfoSoc Directive.
Interestingly, this decision has been issued in a period in which some sort of changes to design copyright protection were already in course. In fact, over the last years, Italian judges have increasingly moved towards a softer approach in relation to the requirement of "artistic value" with regard to industrial designs. After the Cofemel decision, this trend may be interpreted as bringing the requirement of "artistic value" closer to the sphere of the requirement of originality, which would remain the only requirement to access copyright protection under the InfoSoc Directive.
In light of the above, we expect the Italian legislator to take the stage soon. Meanwhile, we believe Italian courts will follow the trend set by the CJEU by making it easier in practice to benefit of this lower threshold for copyright protection.