News Trademarks, Domain Names, Copyright 1999

Ornamental model, three dimensional mark and slavish imitation

Rome, October 15, 1999

The patent for an ornamental model or design protects the finding which gives a known object "a special ornamentation, in terms of its shape, or the particular combination of lines or colours".
An ornamental model is different from a work of art protected by copyright (section 2(4), Copyright Act, accepts copyright for works of art applied to industry, "provided that their artistic value may be separated from the industrial character of the product to which they are associated").

Ornamental model and copyright

a) The criterion of separability

An ornamental model is different from a work of art protected by copyright. In this regard we note that the Italian Copyright Law issued in 1941 (i.e. Law April 22, 1941 no. 633) has taken advantage of paragraph 7 of article 2 Berne Convention establishing a peculiar system on industrial design (according to Art. 2 of said Convention the expression literary and artistic works includes all works in the field of literature, science and art, as "the works of design, picture, architecture, sculpture, gravure, lithography; the works of applied arts"), which is based on Section 2, paragraph 4, which read as follows: "The following items are covered by copyright protection:
(omissis) 4) sculptures, pictures, designs, gravures and similar figurative arts, including scenography, also if applied to industry, provided that their artistic value is separable from the industrial character of the product which they are associated to".
The criterion of "separability" raised different and contrasting opinions about the possibility to protect works of industrial design under copyright law: in principle, the majority of legal scholars admitted copyright protection only for works characterised by the fact that their artistic value was "conceptually" distinguishable from the industrial character. In other words, when it is possible to think about the artistic features independently from their concrete material support and when the work can be aesthetically appreciated independently of the usefulness with different functions(see Court of Cassation n. 3806 of 1956) .

In line with the above mentioned principle of "separability", the Design Law (Section 5, paragraph 2 of the Royal Decree August 25, 1940 n. 1411 on Industrial Models and Designs) in its turn introduced a provision according to which:

"Copyright Law provisions (Law April 22, 1941 no. 633) as well as Section 27-ter of the Patent Law do not apply to the models and designs mentioned in this Law ":.

b) Abrogation of the criterion of "separability"

In consideration of the interpretative problems arisen from the separability criterion, the Law Decree October 23, 1996 n. 545 (converted into Law November 23, 1996 n. 650) - with an unfortunate and unclear wording - has indirectly repealed the principle of separability, providing that:

Section 1, paragraph 58:

"The copyright on industrial design works is included among those protected from Law 22 April 1941 n. 633".

With a peculiar legislative technique, some months later another law on the same subject matter was issued (Law August 7, 1997 n. 266): said Law has expressly abrogated the Law Decree n. 545 stating that:

"Paragraph 58 of art. 1 Law Decree October 23, 1996 n. 545 converted with modifications into Law November 23, 1996 n. 650 is abrogated." and adding that: "The term of copyright author's right protection on industrial design works under Royal Decree August 25, 1940 n. 1411 cannot be longer than 15 years, until the implementation of the European Community Directive on Industrial Models and Designs".

c) The current situation

In the light of the foregoing, the current law scenario in Italy is not very clear.

In spite of the abrogation of Law Decree n. 545, it is not possible inferring that the "separability" is re-established: according to the Italian Supreme Court, in fact, a law (i.e.: Law August 7, 1997 n. 266) that repeals another law (i.e.: Law Decree October 23, 1996 n. 545) having in its turn repealed an earlier law (i.e. paragraph 4 art. 2 of the Italian Copyright Act), does not re-establish the provisions abrogated by the former piece of law (i.e.: the Copyright Act).

Unfortunately, no case law was decided under the new scenario based on Law Decree n. 545 of 1996 and Law n. 266 of 1997. Only three interlocutory injunction orders have been issued, namely:

- COURT OF MILANO (order dated May 29, 1997): this judgement was rendered under Law Decree n. 545 of 1996 and stated that "separability" was still enforceable because the Government had not issued the Regulation, which should have regulated industrial design as prescribed by the Law Decree n. 545 itself.
- COURT OF MILANO (order dated July 11, 1997): this judge expressed an opinion completely different from that above mentioned one deeming that the "separability" was definitely expunging from the Italian legal system.
- COURT OF BELLUNO (order dated October 3, 1997): this judge considered that the "separability" had been re-established as a consequence of the abrogation of Law Decree n. 545 of 1996. Such motivation was heavily criticised by a part of the Italian doctrine on the basis of the principles expressed on this matter by our Superior Courts (Consiglio di Stato and Court of Cassation).

Assuming the above, in our opinion the separability criterion is not more in force in Italy as well as paragraph 2, Art. 5 Designs and Models Law.

d) Duration of Copyright protection

Also in this respect the situation is not completed certain: we have to reveal that there is at present an uncertainty with regard to the duration of the author's rights protection on industrial designs.

In fact, while the Decree n. 266 provides a protection period no longer than 15 years, Section 7 of the Berne Convention for artistic and literary works speaks of a minimum of 25 years. Since Italy is a contracting party of the Berne Convention, there is currently a conflict between the two sources of law.

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