Design law discrepancy prompts questions to ECJ

On April 30 2009 the Court of Milan granted a petition filed by Assoluce (the Italian Light Industry Association) requesting that the court refer a question to the European Court of Justice (ECJ) for a preliminary ruling on the interpretation of the Community Design Directive (98/71). The question seeks to clarify the meaning of Article 239 of the Industrial Property Code, which provides for a transitional regime of copyright protection for industrial designs.

Copyright protection for industrial designs possessing creativity and artistic value was introduced into Italian law in 2001 upon implementation of the Community Design Directive. However, the period of protection for industrial designs was shorter than that for other types of works protected by copyright - 25 years after the death of the author, compared to 70 years for other works. This discrepancy conflicted with specific obligations imposed on Italy by EU law. Consequently, INDICAM (the Italian association of trademark owners for the fight against counterfeiting) brought proceedings against Italy before the European Commission. Due to pressure from the European Union, the length of copyright protection for industrial designs was brought into line with that for other works by Decree Law 10/2007 (now Law 46/2007).

The new law also amended Article 239 of the Industrial Property Code, which provides for a transitional regime for works created before copyright protection for industrial designs was introduced in 2001. Before the entry into force of Decree Law 10/2007, Article 239 provided (implicitly but unequivocally) that copyright protection also applied to works created before 2001. However, Article 239 stated that third parties which had manufactured goods based on designs that were in or had come into the public domain before 2001 (eg, Le Corbusier chairs) could continue to do so for a period of 10 years.

Following the entry into force of Decree Law 10/2007, the amended Article 239 states as follows:

"The protection afforded to designs and models [...] does not apply to products manufactured based on designs or models which, prior to the entry into force of Legislative Decree 95 of February 2 2001, were in or had come into the public domain."

Arguably, Article 239 seems to limit the protection afforded to works created before 2001 excessively. In 2008 the courts of Milan and Monza interpreted this provision in different ways:

• The Court of Milan held that Article 239 applies only to conflicts between design owners and third parties which had manufactured goods based on their designs before the introduction of copyright protection in 2001.
• The Court of Monza held that the phrase "products manufactured based on designs or models" referred only to goods that had already been manufactured when the new Article 239 came into force. Therefore, the amended article abrogated the former system under which third parties which had manufactured goods based on industrial designs before 2001 could continue to do so for a period of 10 years.
• The Court of Milan also dismissed a petition for the release of goods which had been manufactured after 2001 based on designs created before 2001. The court reasoned that because the goods had been manufactured before the amendment to Article 239 in 2007, they violated the copyright of the design owner.

Another interpretation is currently under discussion in Parliament - the idea is to harmonize the rights of the creators of industrial designs with those of the third parties which manufactured goods based on those designs before the introduction of copyright protection. According to the proposal, because such activity was lawful before 2001, it should remain so - within certain (quantitative) limits.

The decision to refer a question to the ECJ for a preliminary ruling has thus been welcomed by the Italian industry and IP experts, since the issue has been hotly debated in Italy over the past few years.

Cesare Galli, IP Law Galli Studio Legale Milan Brescia Parma Verona, Milan