Interim rules on copyright protection for designs now in line with EU law

Legislative Decree 131/2010, which amended the Italian Code of Industrial Property and came into force on September 2 2010, has brought Article 239 of the code into line with the Community Design Directive (98/71). Article 239 provides for a transitional regime for works created before copyright protection for industrial designs was introduced on April 192001.
It took nine years and five legislative interventions for Italy to recognise that industrial designs created before 2001 benefit from full copyright protection. The new Article 239 states that third parties which started to manufacture and sell products based on industrial designs before 2001 cannot continue to do so.
The Italian legislature could not postpone the amendment of Article 239 following the opinion delivered by the EU attorney general on June 24 2010 (when the draft legislative decree had already been introduced) in Flos SpA v Semeraro Casa e Famiglia SpA (Case C-168/09), a reference for a preliminary ruling on the interpretation of the Community Design Directive (for further details please see "Interim rules on copyright protection for industrial designs contradict EU law"). The main issue in this case was the compatibility of the Italian transitional regime with EU law. At the time the proceedings started, the Italian regime limited the protection afforded to industrial designs by allowing third parties which had started to manufacture and sell products based on industrial designs before 2001 to continue to do so for a period of 10 years.
The reference for a preliminary ruling had been brought by the Court of Milan 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 (for further details please see "Design law discrepancy prompts questions to ECJ").
During the discussion held on April 22 2010 before the Court of Justice of the European Union, the European Commission argued that the Italian transitional regime was contrary to Directive 29/2001, 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.
The advocate general, extending these arguments, stated that:
"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."
The advocate general further 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".
The new Article 239 took these remarks into account and now provides as follows:
 “Third parties that manufactured or marketed, in the 12 months prior to April 19 2001, products based on industrial designs entered in the public domain, are not liable for copyright infringement for activities carried out after that date, limited to products manufactured or purchased before April 19 2001 and those manufactured in the following five years, provided that such an activity has remained within the limits of prior use.”
Therefore, copy manufactured in Italy after April 19 2006 (and those imported after April 19 2001) will be considered as counterfeit, in accordance with the directive.
Cesare Galli, IP Law Galli, Milan

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