By order of 9 May 2017, the Milan IP Court decided on a preliminary proceeding concerning a dispute that arose just before the last Salone Internazionale del Mobile – the famous Italian international furniture fair – between two of the biggest Italian furniture companies: Molteni & C. S.p.A. and Cassina S.p.A.

Molteni, together with the heirs of the famous designer and architect Gio Ponti, alleging to be the licensee of some works of the latter, asked the Court to urgently enjoin Cassina from the production, sale, advertising and ability to present itself to the public as the holder of the 811 armchair model designed by Ponti, pictured below. Molteni requested this after having received a warning letter from Cassina, in which the latter claimed to have rights to the armchair at issue since Ponti allegedly designed it on Cassina’s behalf.

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In support of their motion, Molteni and Ponti’s heirs claimed that the 811 armchair is protected by copyright under Article 2(1)(10) of the Italian copyright law, and filed documents allegedly demonstrating that the owner of such right was Ponti, not Cassina: advertising materials, letters and publications dating from the 1950s in which the creation of the 811 was attributed to the designer, some of Ponti’s designs of the armchair at issue and communications between Ponti and Cassina that were exchanged during those years. They also pointed out that Cassina, which at that time was the licensee of those rights, had paid royalties to Ponti in light of the number of 811s sold, and that, in 2013 and 2016, it had requested from Ponti’s heirs a new licence on some historical models of armchairs designed by Ponti, including the disputed one, in order to make re-editions of them.

Considering Molteni’s claims well grounded, the Court issued the requested injunction against Cassina with an ex parte order, as a provisional and urgent measure. Cassina then appeared before the Court and asked for the revocation of the injunction, arguing, inter alia, that the 811 would have been the result of a joint creative effort of the designer and of Cassina’s technical office, as demonstrated by the 811 presence within Cassina’s catalogue of 1958 which was created by Ponti together with Cesare Cassina. In particular, the 811 would have been just a re-creation of the 572 armchair autonomously designed by Cassina, for which Ponti never received any royalty. In addition, Cassina would be the holder of the exploitation rights on the 811 by virtue of the commission and/or subordinate employment relationship between it and Gio Ponti, who had been the artistic director of the company from 1949 to 1964. It also claimed to possess prototypes and matrices for the 811 production: a circumstance from which, in any case, a definitive transfer in its favour of the right to reproduce such armchair should be deduced. Finally, Cassina also argued that the 811 did not present the requirements for copyright protection under Italian law, i.e. creativity and artistic value.

By the order under review, the Court rejected Cassina’s defences and confirmed the ex-parte injunction for the following reasons. Firstly, to the Judge, the 811 enjoys copyright protection: in fact, even if no professional opinions and/or evidence of its presence within museum collections were filed – and such documents generally constitute the indices used by courts to ascertain artistic value – the Judge stated that the armchair has intrinsic creativity and a related artistic value making it worthy of protection in light of different indices, such as: i) the fact that both parties had acknowledged that the disputed armchair enjoined copyright protection (as expressly stated also by Cassina in its previous warning letter to Molteni, although denied by it during the proceeding); ii) the persistent inclusion by third parties of the 811 into the historical archive of Ponti’s works; and iii) the auction sale of the armchair at issue at prices far higher than its commercial value.

The Court also stated that the rights to the 811 belong to the claimants, given that there was no evidence of the close relationship between Ponti and Cassina’s technical office in the development of the armchair design. In fact, all the studies and the catalogues filed attest that the rights to 811 belong to Ponti, and Cassina’s catalogue of 1958 does not actually specify how the company contributed to the creative part of the designer’s work. Moreover, the 572 armchair cannot be considered the base model on which Ponti started to design the 811, since the documents filed during the proceedings showed that the real base of the 811, as well as of the 572, is instead an armchair model (again called 811) designed by the same Ponti and commercialised by Altamira in 1951 in New York. This is demonstrated by the fact that within Cassina’s filed brochure the 811 is shown as an original model while the 572 is shown as a re-edition made by the company. Hence, to the Court, as opposed to what happened for the 572, it shall be assumed that the creative path of the 811 model was constantly maintained within the sphere of activity and control of Ponti, despite its necessary relationship with Cassina’s technicians.

Finally, the Judge stated, on the one hand, no evidence of the commission and/or subordinate employment relationship between the designer and Cassina was found: in fact, the mere fact that at that time Ponti was the company’s artistic director does not in itself imply that his activity also involved the design of works originally and specifically intended to be incorporated into Cassina’s production. On the other hand, the alleged definitive transfer of the rights to the 811 armchair to Cassina has not been demonstrated, as confirmed by Cassina’s licensing requests to Ponti’s heirs during 2013 and 2016.