An exhibition set up was granted copyright protection: can the same protection also be reserved to a single component of the setting?

BACKGROUND

In 1954 the famous Italian brothers Pier Giacomo and Achille Castiglioni collaborated on the design of an exhibition presented at the X edition of the Milan Triennale – Industrial Design Section (the “Exhibition Set Up”).  The project included a conic lamp model designed for the exhibition, but not later industrially manufactured and commercialized (the “Exhibition Lamp”). The Exhibition Set Up won the Gran Premio of that Triennale edition.

In 2015, one of the brothers’ nephew designed a lamp named “1954” (the “1954 Lamp Design”) and licensed the related exclusive rights for the industrial production and commercialization of that lamp design to the company Barrisol Normalu.

THE DISPUTE AND THE PROCEEDINGS

The daughter of Pier Giacomo Castiglioni sued the cousin and his licensee Normalu in the Court of Milan for a declaration that the sale of the 1954 Lamp Design constituted copyright infringement of the rights in the Exhibition Set Up.

At first instance, the Court of Milan upheld the plaintiff’s claims, recognizing autonomous copyright protection to the Exhibition Lamp alone which, in the Court’s opinion, constituted a prominent element of the overall set up and was undoubtedly endowed with full autonomy, beyond its contingent functional destination in the specific context of the exhibition stand.

The decision was overturned by the Milan Court of Appeal who held that the creative nature of the work could and should be recognized in relation to the overall design of the Exhibition Setup and not in relation to the single component of the Exhibition Lamp. In the Court’s view the different positioning of the spotlight – placed respectively outside and inside the conic structure in the Exhibition Lamp displayed in the Exhibition Setup and in the contested 1954 Lamp Design – contributes to create a completely different light-diffusing mode. Accordingly, there was no infringement of copyright (also by way of partial plagiarism).

The Italian Supreme Court  upheld the conclusions of the Milan Court of Appeal. The Supreme Court considered the main principles of the definition of a “copyrightable work” and to the possible copyright protection of a work of industrial design. As to the definition of “copyrightable work”, by recalling EU case law (in particular the Cofemel case in CJEU683/19), the Supreme Court stated that the definition includes any work that represent the author’s own original intellectual creation, a process free from any technical constraints limiting the author’s creation.

In contrast with EU case law, according to which it is sufficient for the owner to show that the work is original and creative, for a work of industrial design to be granted copyright protection, Italian case law (still) requires the owner to provide additional proof that the design work also possesses an “artistic value”. In particular, there must be proof of the suitability of the design work to arouse appreciation on an aesthetic level and the presence of certain objective indicators of the artistic value, such as i) widespread recognition of the product’s artistic quality of the work by cultural institutions; ii) display in exhibitions or museums; iii) publication in specialized or non-specialized magazines; iv) awarding of prizes; v) acquisition of a market value so high as to transcend that of mere functionality; (vi) creation by a well-known artist (see decisions issued in the Ferrari case or in the most recent Vespa case).

Therefore, as a result of the requirement for “artistic value”, in Italy the threshold for a product of industrial design being copyright protected is (still, notwithstanding Cofemel) currently higher than in other EU jurisdictions.

The Supreme Court held that only the Exhibition setup could be protected as a work. The Exhibition Lamp of itself was not a work and so the Supreme Court, despite identifying a conflict between Italian law and EU law, did not have to address the question of whether or not the Exhibition Lamp met the artistic value requirement.

The differences between the Exhibition Lamp and the 1954 Design Lamp were also sufficient to exclude any partial plagiarism of the original work. Indeed, the Supreme Court agreed with the Appeal judges’ assessment that there were substantial differences between the original Exhibition Lamp (made with the use of twenty-two four-meter diameter cones and with one illuminating element, the spotlight placed outside the cone) and the 1954 Lamp Design (which has the size of a normal chandelier while the illuminating element is placed inside the transparent cone).

COMMENTS

The decision sheds light on the boundaries of copyright protection in exhibition set ups and copyright owners’ ability to rely on singular aspects of more complex works.  

Moreover, by offering an exhaustive overview of the EU and national legal framework regulating copyright protection of designs work and by recognizing an actual contrast between EU and Italian case law on this matter, the decision sets the basis for a possible future step toward the harmonization of Italian copyright system with EU legislation and related case-law; a possible final solution of the contrast in upcoming cases seems to be closer.