Italian Copyright in Transition

We have previously reported on several references from the Italian Courts to the European Court of Justice concerning "resurrected" copyrights. Before the Design Directive 98/71, copyright was largely denied to designs, but this was incompatible with the "cumulation" provided for by Article 17 of the Directive. But what to do about those resurrected copyrights, particularly those where infringement had already started, given the lack of transitional provisions in the Directive?
Professor Cesare Galli of IP Galli Law Firm reports, in the International Law Office newsletter, that following the Flos case there is a new Italian law providing for a five year transitional run-in period for continuing infringement - expiring in 2006, however, so that anything on the Italian market in future should be copyright-cleared.

Prior Art from the Ark - are old Community Designs legally new?

We see that an enterprising Evangelical church is to rebuild Solomon's Temple in Brazil (though shaved, in the Brazilian manner, of its gold - a notoriously poor structural material).  We wonder whether an exact replica could be novel over the original lost, lamented Temple, or the descriptions of the same in Scripture to which the church is presumably working? 
Lacking, as we do, the wisdom of Solomon, we are happy to see that according to Hogan Lovells' excellent newsletter, the Milan Court wrestled with somewhat the same question in Fortune S.r.l. v. Schneider Italia S.p.a (Court of Milan, Decision of 3 March 2010, N. 2843/2009), a case concerning rival watchmakers. I can't find either an online copy of the judgment or details of the Community Design concerned - can any of our readers assist? 
Quoting with thanks to the authors Maria Luce Piattelli and Alberto Bellan of Hogan Lovells, "The court clarified that "the informed user was not a person skilled in the art who has a deep knowledge of prior designs including very early patent rights filed and only marketed outside the European Community". Therefore the informed user did not necessarily have knowledge about "designs filed in very old times" which have not been used in the relevant market."
Which raises the question: can old prior art really vanish from the public mind after a while?  And if so, for novelty, individual character, or both?
In this case, the citations were apparently US patents from the early 20th century.  They would not, of course, have come to the attention of readers in the European Union for alas, dear readers, at the time there was no such beast.  However, they would have been deposited on public display a few days after publication in the reference libraries and Patent Offices of the UK, Germany, the Netherlands, and, we suppose, Italy, where they have remained available ever since.
There used to be explicit "time bar" rules for excluding prior art - for example, the UK had a 50-year time bar on citation of earlier patents (s50(1)(a) of the Patents Act 1949) and, I believe, the Benelux design law excluded designs more than a century old.  There isn't anything explicit in the current EU design laws, but the Commission commentaries on the draft laws did discuss excluding prior art which was only to be found in museums, or had otherwise disappeared from the market and the mind of the public.  But should exclusions of that type bite on patent publications which have always been available and which, thanks to the efforts of Google Patents and others, have now been resurrected on the Internet (somewhat in the manner of the Brazilian Temple)?  Our collective heart is with the design owners and the Milan Court, but our collective head is unpersuaded.  As to the principle, if the prior art is a knockout, why reward re-monopolising that which the public already had as of right? and as to the practicalities, where would the line be drawn - does prior art have to be as old as Methuselah to be excluded?  Oh for the wisdom of Solomon.

Community Designs a good fit for G Star

Trade-mark-oriented readers may recall the ECJ G-Star decision concerning jeans (Benetton Group v G-Star International, ECJ case C-371/06, 20 September 2007) in which the shapes of stitching and other aspects that gave substantial value to the jeans were unregistrable as marks despite subsequently acquired reputation.
The Class 46 blog carries an Italian sequel. In January, in the absence of copyright or trade mark protection, the Milan Court allowed G-Star's unfair competition claim based on copying of their "Elwood" jeans.
It is pleasing to see that G-Star also successfully enforced the design of the "Limit Regular" jeans, registered as Community Designs at OHIM (where they have registered more than 100 RCDs).

"... Unless by the judgement of his peers"

Jury trials have long been a feature of the common law, and a right at criminal law enshrined by Magna Carta in 1215. We had juries in England for patent trials right into the 19th century, and of course they remain an active feature of US patent and design litigation (though this is not uncontroversial: see this discussion on Prof. Crouch's excellent Patently-O site).

But does a patentee get "the judgment of his peers"? A standard jury is selected from the general public at random, after exclusion of lawyers and others in the legal trade, and in many cases consists of those who lack the intellect to escape jury duty. Is it fair to expect a decision on a patent or design issue from the man in the street?

It was not ever thus. When jury trials were the norm for civil matters in the UK, "special juries" were often empanelled, consisting of people from the trade concerned. The system seems to have died out (at least for City of London financial cases) as late as the 1970s according to Vidmar.

Professor Mario Franzosi's excellent JIPLP article Design Protection Italian Style discusses the institution of the Italian Design Jury, which provides opinions on design subsistence and validity, and we note that in the recent Swedish Maglite case (discussed on Class 99 last month) the Supreme Court followed an opinion on copyright subsistence of the Copyright Panel of Svensk Form, the Swedish Society of Crafts and Design. Juries, such as for example Red Dot's jury, are common enough in judging excellence in design. Could something like this work for design cases in common law countries? Or would a jury of designers be too harsh a tribunal for an essentially consumer-focussed intellectual property right?

Door opens for design owners in Italy

Lualdi's staggeringly individual door design

Trevisan & Cuonzo Avvocati report a Milan design infringement trial on RCD 153333-01 and 02. The door shown in the designs (depicted above) looks very similar to, well, any door you've ever opened but on close scrutiny you can just about see that it stands proud of the door frame. The proprietor, Lualdi S.p.A, sued Dorica Castelli S.p.A., who exhibited their own Quadro' door at a Milan trade fair. They lost in interlocutory proceedings, but succeeded in the end on the merits, over a plea that the design was invalid. It appears that their definition of the "informed user" is essentially the same as that adopted by OHIM and, to a first approximation, in the UK - "a purchaser who is particularly attentive to the goods in question but is not an architect or a designer and who does not leave the choice of purchase to another but informs himself by consulting catalogues, magazines and experts to find the product that best fits his needs".

That is in line with the majority of prior Italian cases, though in one or two apparently the "informed user" has to the contrary been seen as architect or interior designer - see Professor Mario Franzosi's excellent JIPLP article Design Protection Italian Style.

One can only applaud harmony and consistency across the EU. But is this really Italian design at its best? It is hard to tell on the basis of these grainy, monochrome grey pictures, but the design in question appears to fit right into Franzosi's pithy commentary:
"Take a look at what is registered at OHIM in Alicante. ... Most of them are not work of design because they are simply ugly."

New ECJ reference on design copyright

The UK IPO mentions a new reference to the ECJ, link here. Polish readers may prefer this link. The case relates to Articles 17 and 19 of the Design Directive 98/71; the former enshrines the principle of "cumulation" of copyright and design protection, and the latter is the implementation provision.

In implementing Art 17 without explicit transitional provisions, Italy did away with the principle of separability, and reintroduced copyright protection. Some Italian cases have precluded copyright protection for pre-existing works, whereas others have held copyright to exist in even those pre-existing works which have been around for many years.

This reference will, hopefully, enable the ECJ to sort out the Italian dilemma at their usual stately speed. It is, however, pretty outrageous to legislate with such flimsy transitional provisions, and the EU knows full well it is not meant to do this; Art 20 of the Interinstitutional Agreement of 22 December 1998 on common guidelines for the quality of drafting of Community legislation states that "Provisions laying down ... transitional provisions (in particular those relating to the effects of the act on existing situations) ... shall be drawn up in precise terms."

Parliament, the Commission and the Council all signed up to that, so when were they thinking of applying it?