Interim rules on copyright protection for industrial designs contradict EU law

European Union
Advocate General Bot has delivered his opinion in Flos SpA v Semeraro Casa e Famiglia SpA (Case C-168/09, June 24 2010), a reference for a preliminary ruling concerning the interpretation of the Community Design Directive (98/71).
The reference was brought by the Specialised Division of the Court of Milan on April 30 2009 following a request by Assoluce (the Italian Association for Domestic Lighting), which was involved in a case concerning the infringement of an Italian design - the Flos 'Arco' lamp, created by the Castiglioni brothers in the 1960s. Assoluce sought to obtain a clear and binding ruling by the Court of Justice of the European Union (ECJ) to clarify the meaning of the directive (for further details please see "Design law discrepancy prompts questions to ECJ").
In Italy, the interim regime of copyright protection for industrial designs has changed three times since the implementation of the directive by means of Legislative Decree 95/2001 in 2001. A few days after the new rules came into force, the legislature introduced Article 25bis into the decree: this provision implicitly recognised that copyright protection also applied to industrial designs created before 2001. However, third parties which had started to manufacture and sell products based on industrial designs before 2001 could continue to do so for a period of 10 years.
Further, under the decree, the period of protection for industrial designs was only 25 years from the death of the author. This clearly conflicted with the provisions of Council Directive 93/98 harmonising the term of protection of copyright and certain related rights, under which the period of protection is 70 years from the death of the author (under Italian law, copyright protection for all other types of works is 70 years). In light of these discrepancies, the European Commission brought an infraction procedure against Italy.  
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). However, 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. The amended Article 239 stated as follows:
"The protection afforded to industrial designs and models under Article 2(1)(10) of Law 633/1941 does not apply to products made according to designs or models which, prior to the entry into force of Legislative Decree 95/2001, were in, or had come into, the public domain."
Finally, approximately one year ago, this provision was replaced by a new rule (introduced by Law 99/2009), which expressly provides protection for works created before 2001. However, this provision cannot be invoked against third parties which started to manufacture products based on industrial designs before 2001: they are allowed to continue to do so "within the limits of prior use".
During the discussion before the ECJ, the representative of the European Commission argued that the Italian transitional regime was contrary to Directive 93/98, which harmonised the rules on the period of copyright protection and limited protection for parties that manufactured products based on industrial designs before 2001, expressly stating that they should not be allowed to carry out their activities.
In his opinion, the advocate general developed the arguments set forth by the commission and Assoluce, and stated that:
"the accumulation of the specific protection afforded to designs and registered models and that granted by copyright law is not a possibility offered to the member states, but a goal to be achieved in order to eliminate the existing disparities between the various national laws."
The advocate generalalso asserted that:
"such a goal would not be attained if the member states were given the possibility to decide whether or not to apply copyright protection to the designs or models which had come into the public domain [before 2001]."
In this respect, the advocate general stated that the solution set forth by the ECJ in Butterfly Music (Case C-60/98) was the only one that could guarantee the uniform application of the directive within the European Union.
The advocate general thus concluded as follows:
"Article 17 of [Directive (98/71)] must be interpreted as prohibiting the adoption of a national law which provides that designs and models entered in the public domain before the entry into force of the national rules implementing the directive do not benefit from the protection granted by copyright law."
Moreover, he stated that third parties that legitimately manufactured and sold products based on industrial designs before 2001 may be granted only "a reasonable transitory period during which… they can keep selling the products". However, the advocate general specified that the ten-year period provided for under Italian law was "excessive".
It is expected that the ECJ will issue its decision in this case by the end of the year. If the ECJ follows the opinion of the advocate general, the holders of designs created before 2001 will finally receive appropriate protection in Italy.
Cesare Galli, IP Law Galli, Milan

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