ECJ rules on legislative limitations on copyright protection for designs in Europe

Author: Eddy D. Ventose (Faculty of Law, Cave Hill Campus University of the West Indies, Barbados)

Flos SpA v Semeraro Casa e Famiglia SpA, Case C-168/09, reference for a preliminary ruling from the Tribunale di Milano (Italy), Court of Justice (ECJ) of the European Union, 27 January 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr034, first published online 2 April 2011

The ECJ considered whether an Italian law providing, first, a 10-year moratorium in respect of copyright protection for designs and, second, abolishing the moratorium and rendering copyright protection for designs unenforceable for an indefinite period, was compatible with Article 17 of Directive 98/71 on the Legal Protection of Designs.

Legal context and facts

Flos brought proceedings in 2006 against Semeraro before the Tribunale di Milano (District Court, Milan) alleging that Semeraro had imported from China and marketed in Italy the ‘Fluida’ lamp. This lamp, Flos argued, imitated all the stylistic and aesthetic features of the Arco lamp, an industrial design in which Flos claimed the property rights. The Court in Milan found that the Arco lamp, which was created in 1962 but entered the public domain before 19 April 2001, was eligible for copyright protection as an industrial design under Italian law. It held that that the lamp imported by Semeraro ‘slavishly imitated all [the] stylistic and aesthetic features’ of the Arco lamp. It therefore confiscated the imported lamps and prohibited Semeraro from continuing to market them. As a result of legislative amendments made to Italian trade mark law (outlined below), the Tribunale di Milano referred three questions for consideration by the ECJ:

1. Must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a … law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date? 

2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State? 

3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?

Analysis

Article 17 of Directive 98/71 on the legal protection of designs, entitled ‘Relationship to copyright’, provides that a design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State. After first introducing a 10-year moratorium (Legislative Decree No 164/2001) starting on 19 April 2001 for the protection provided for designs under Article 17 of Directive 98/71, that protection was removed completely by Legislative Decree No 164/2001 which provided that ‘The protection conferred on industrial designs under point 10 of the first paragraph of Article 2 of Law [No 633/1941] shall not be enforceable as against products based on designs that were in, or had entered into, the public domain prior to the entry into force of Legislative Decree [No 95/2001].’ The questions mentioned above related primarily to whether these legislative changes were compatible with Article 17 of Directive 98/71.

Unregistered designs
The ECJ stated that in relation to designs which have never been registered as such, Article 17 of Directive 98/71 provides that only a design protected by a design right registered in or in respect of a Member State in accordance with that directive may be eligible, by virtue of the directive, for protection under the law of copyright of that State. Accordingly, only designs which, before the date of entry into force of the national legislation transposing Directive 98/71 into the legal order of a Member State, were in the public domain, because they had not been registered and did not fall within the scope of Article 17 of the directive. The ECJ noted, however, that such designs may nevertheless get copyright protection under another EU copyright directive, Directive 2001/29.

Expiration of registration
The ECJ noted that in relation to designs which have entered the public domain because the protection resulting from registration has ceased to be effective, the first sentence of Article 17 of Directive 98/71 provides that a design protected by a design right registered in or in respect of a Member State is also eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. However, the second sentence of Article 17 allows the Member States to determine the extent to which, and the conditions under which, such a protection is conferred, including the level of originality required. The ECJ cautioned that the second sentence cannot be interpreted as meaning that Member States have a choice as to whether to confer copyright protection for a design protected by a design right registered in or in respect of a Member State if the design meets the conditions under which copyright protection is conferred: it was clear from the wording of Article 17 of Directive 98/71 that copyright protection must be conferred on all designs protected by a design right registered in or in respect of the Member State concerned.

The ECJ, following the reasoning in Case C-60/98 Butterfly Music [1999] ECR I-3939, held that national law transposing the directive cannot—without undermining both the uniform application of the directive throughout the European Union and the smooth functioning of the internal market for products incorporating designs—preclude copyright protection in the case of designs which, although being in the public domain before the date of entry into force of the national law concerned, at that date met all the requirements to be eligible for such protection. It therefore answered the first question as follows: Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they met all the requirements to be eligible for such protection. The ECJ explained that the legislative measure, first, should ensure that the period of use of the designs by those third parties is limited to what is necessary for them to phase out the part of their business that is based on earlier use of those designs or to clear their stock; and, secondly, must not go beyond what is necessary to ensure that a balance is struck between the competing rights if it does not defer entitlement to copyright protection for a substantial period.

Suspending copyright protection for a limited time
In respect of the second and third questions the ECJ claimed that, in relation to the definition of the category of third parties as against whom copyright protection was provided for only a temporary period to be unenforceable, Legislative Decree No 95/2001 was appropriate since it was directed solely at persons who acquired their rights before the entry into force of the national measures transposing Directive 98/71. However, it argued that the unenforceability for a transitional period of 10 years was not justified by the need to safeguard the economic interests of third parties acting in good faith, since a shorter period would also allow the part of their business that was based on earlier use of those designs to be phased out and, even more so, their stock to be cleared. The ECJ added that a 10-year moratorium in respect of copyright protection went beyond what was necessary since, by taking 10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application of copyright protection was deferred for a substantial period.

Abolishing copyright protection indefinitely
In relation to the law abolishing the moratorium and rendering copyright protection unenforceable for an indefinite period in the case of products manufactured on the basis of designs which were in the public domain before 19 April 2001, the ECJ ruled that such a measure negated Article 17 of Directive 98/71, since it had the effect of preventing, generally, the application of copyright protection. The measure did not seek to restrict the category of third parties who may rely on the principle of the protection of legitimate expectations. On the contrary, the measure rendered copyright more generally unenforceable since, under the provision, it was not necessary for a third party to have begun exploiting the designs before 19 April 2001. Consequently, the EJC ruled that Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which—either for a substantial period of 10 years or completely—excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such de-signs in that State—irrespective of the date on which those acts were performed.

Practical significance

The most important implication is that Member States cannot enact legislation which has the effect of rendering nugatory the protection provided by Article 17 of Directive 98/71 on the Legal Protection of Designs. In this instance, the ECJ ruled that Member States cannot limit entirely copyright protection for designs which have entered into the public domain once they meet all the requirements for such protection; and where the limitation applies, it should not apply for a prolonged period of time. As a result of Article 17 of Directive 98/71, such designs now have an extended form of copyright protection for 70 years after the death of the author: This protection cannot be limited in its entirety by national legislation.