Flos Opinion: help is at hand!

Yesterday I reported here on Class 99 that Advocate General Yve Bot had delivered his opinion in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA -- which was published on the Curia website in ten official languages of the European Union but not in English. It is now my pleasure to thank one of our readers, Alberto Bellan (a trainee with Hogan Lovells Studio Legale, Milan), for the following explanation of the background:

"Factual background

The Italian case on which the Advocate General gave its opinion concerned the "Arco lamp", a master piece of post-war Italian design created by Achille and Pier Giacomo Castiglioni in 1962. The dispute originally involved Flos S.p.A. and Semeraro Casa & Famiglia S.p.A.. Flos is one of the most important global design companies, which had made and sold Arco lamps since the late Seventies under an agreement with Achille and Pier Giacomo Castiglioni's heirs. Semeraro is a furniture producer and retailer which is widely known in Italy. According to the Court of Milan, Semeraro imported from China and distributed in Italy a lamp called "Fluida", which was very similar to Castiglionis' Arco.

Given that Arco has never been protected through any design right, in 2006 Flos started an interim proceeding before the Court of Milan on the basis of its copyright in the Arco, seeking a preliminary injunction and seizure against Semeraro. In December 2006 the Court of Milan made a preliminary declaration to the effect that copyright in the Arco had been infringed, ordering Semeraro to stop importing and selling Fluida in Italy. In the same year Flos also sued Semeraro in proceedings on the merits, seeking confirmation of the preliminary measures obtained during the interim proceedings. In April 2009 the Court was finally ready to hear the final decision on the issue.

Legal background

During the less than three year long proceedings on the merits, a controversial issue arose, and this is the subject on which the Advocate General has advised the ECJ. This issue concerns article 239 of the Italian Industrial Property Code, which strangely enough limits the copyright protection for designs in Italy, in apparent breach of the relevant European provisions.

Article 239 was originally aimed to balance the obligations set forth by Directive 98/71 with the Italian economic context before 1998. Indeed, while the Directive provides that designs are to be eligible for copyright protection, until then copyright protection for designs had been denied in Italy on the basis that what is "industrial" (like designs) is not capable of being considered "art" and cannot be protected under copyright law. Needless to say, the obligation for Italy to implement the European directive conflicted with a wide part of the national economy which, until then, was legally copying historical industrial designs (such as Arco) on the assumption that they were not protected (or were no longer protected) by any IP right.

The new-born copyright in some historical Italian designs makes article 239 a battlefield for lobbying carried out by companies owning (or not owning) the copyright rights in the Italian historical design works. The very proof of the economic relevance of such provision is that the Italian Parliament has amended article 239 three times in the past 10 years.

The first version (2001-2005) provided that copyright protection in designs did not apply for those who, before 2001, were producing or selling industrial designs works that belong to the public domain; this moratorium should have lasted for 10 years. In 2005 the European Commission brought an infraction procedure against such moratorium period (infraction procedure n. 4088/2005), in that it was considered inconsistent with Directive 98/71.

According to (or in spite of) the infraction procedure, in 2007 the Italian Government amended article 239. The second version (2007-2009) provided that the copyright protection should not apply to any design which fell into public domain before 2001, making no distinction between those who produced or sold such designs before that date and those who did not. The 10-year moratorium period disappeared, therefore excluding the copyright protection for designs which fell into public domain before 2001 tout court.

The opinion given by the Advocate general relates to this second version. In this regard, the Advocate General maintained that a national rule which wholly excludes copyright protection for a wide group of designs is not allowed under European law, while a moratorium period of five years could at least be allowed and sufficient for those who produced and sold formerly copy-free designs to change their business.

In the meantime, article 239 has been amended once again. Now it states that copyright protection does not apply to the designs fallen in public domain before 2001, but this limitation concerns only those who produced and sold them before that date. We should email the ECJ, asking it take into account also of that last amendment, even if it is not explicitly part of the Court of Milan's reference".

Thanks, Albert! For the record, according to Google Translate (somewhat edited), the Advocate General has advised the Court as follows:

"1) Article 17 of Directive 98/71 shall be interpreted as precluding the legislation of a Member State which provides that the drawings and models which have fallen into the public domain before the entry into force of national provisions transposing this Directive do not enjoy protection by copyright.

2) Article 17 of Directive 98/71 does not preclude the establishment of a reasonable transition period during which people who could legitimately produce and market a product by imitating the shapes of a model which has fallen into the public domain before the entry into force of national provisions transposing this Directive may continue to market this product".