Famous bed design protected by copyright

In an order issued on June 6 2012, the president of the Specialised IP Division of the Court of Milan, Dr Marina Tavassi, granted protection to Flou's well-known Nathalie bed (pictured below). The case involved a large quantity of low-cost imitations manufactured by one of Italy's biggest chains of furniture stores (Mondo Convenienza), whose advertising campaign featuring the infringing product could be seen on poster boards, trams and buses all over the country. Thousands of catalogues will now be withdrawn from the market.  

Protection was granted on the basis of Flou's copyright in this masterpiece of Italian design, which is permanently exhibited at the Triennale Museum. The Nathalie bed was created in 1978 by Rosario Messina, founder of Flou, and by famous Italian designer Vico Magistretti.

The decision is extremely important in that it demonstrates that the Italian courts are no longer prejudiced against the possibility of protecting industrial designs with copyright. The Italian rule on copyright in design creations, which entered into force in 2001 when the Community Design Directive (98/71) was implemented, provides that such creations are protectable by copyright only when they have, per se, creative character and artistic value. The expression 'per se' has been misinterpreted - sometimes by the courts - as meaning that protection should be granted only to those objects which are not designed specifically in view of their daily usage. This interpretation, however, does not consider that design usually aims to bring art into daily life (see Galli-Bogni, "I nuovi livelli di tutela della forma dei prodotti tra comunicazione e innovazione", Riv Ord Cons, 2008). Nevertheless, the scope of the rule is restrictive, insofar as copyright protection can be granted to design creations only if they have both creative character and artistic value - the latter being subject to a subjective evaluation of the judge, which raises the issue of equal treatment (the principle of equal treatment is set forth in Article 3 of the Constitution).

The decision in the present case unequivocally adopts a modern approach to the protection of industrial designs, and may serve as a point of reference for future decisions (especially in light of the authoritativeness of the judge who issued it). It is also significant that the court granted a preliminary injunction, and ordered the seizure of the infringing products and accounts books, as well as the publication of the order in newspapers, magazines and the infringer's website, at the expenses of the latter. Importantly, protection was granted in record time, especially taking into account the heavy workload of the Specialised IP Division.

However, the court did not take a position - because this was not at issue in this case - on the interpretation of Article 239 of the Italian Code of Intellectual Property - namely, the transitional rule concerning the relationship between the design creations protected by copyright and third parties which manufactured products based on these designs without the consent of the owner before the introduction of copyright protection for industrial designs in 2001.

In Flos SpA v Semeraro Casa e Famiglia SpA (Case C-168/09), the Court of Justice of the European Union (ECJ) found that the Italian transitional regimes (which succeeded each other between 2001 and 2009, and allowed third parties to continue to manufacture products based on industrial designs for a period of 10 years, or even for an unlimited period of time) were unlawful because they de facto lengthened the 'public domain' regime in Italy. The conclusion of the ECJ was that, to comply with the directive, the only solution was to provide for a short period “suitable to permit the progressive cessation of the activity within the limits of the anterior use and to get rid of the stocks”; this period had to be shorter than 10 years. In his opinion on this case, Advocate General Bot had stated that a suitable period would be five years from the implementation of the directive. In this respect, Article 239 of the Code of Intellectual Property, which was brought into line with the directive through the implementation of Legislative Decree 131/2010, provides that all goods manufactured after April 19 2006 (ie, after five years after the implementation of the directive in Italy) based on industrial designs should be considered as counterfeit.

However, this rule was modified again in March 2012 by the Italian legislator: copyright protection against imitations manufactured “within the limits, also quantitative, of pre-usage” by parties who, within the 12-month period preceding April 19 2001, had manufactured and marketed such imitations, cannot be invoked until April 19 2014. Nevertheless, this rule will not be applied by the Italian courts, as it does not comply with the directive. This rule is clearly aberrant and, for that reason, the main Italian associations in this sector - ADI Association for Industrial Design, the National Council of Architects, FederlegnoArredo and INDICAM - have already asked the European Commission to initiate a procedure against Italy in this respect.

Cesare Galli, IP Law Galli, Milan