Millions awarded in compensation for the infringement of copyright of the “Nathalie” bed by Magistretti-Flou

By judgment of 16 June 2015, (docket no. 53242/12), the IP Court of Milan condemned a number of companies of the Mondo Convenienza group to pay the damages caused to Flou S.p.A. through sale of unauthorised copies of the “Nathalie” bed designed by Vico Magistretti. The extensive and detailed judgment is of particular interest both because it addresses several issues that are typical of proceedings on the copyright infringement of design works, and for the significant damages awarded to the plaintiff. Below is a summary of its main points.

The Judges first ascertained that Flou is the owner of the copyrights on the design in question, based on two factors: on the one hand, the existence of a contract with Magistretti and then with his heirs, based on which Flou has among other things always paid the necessary royalties to the designer and his heirs; and on the other, the fact that Flou has been marketing the bed for almost 40 years, namely since the creation of the design, which determines a presumption of ownership of the rights under art. 167 of the Italian copyright law.

Secondly, the Judges confirmed that the design work at issue can be protected under art. 2(1)(10) of the Italian copyright law, rejecting the defendants’ plea that such protection would only apply to works previously registered as designs. Specifically, the Court found that the design at issue deserves such protection, possessing the creative character and artistic value required by the abovementioned provision. As for the “artistic value”, which is always the crux of these proceedings, the Judges found that it is not in any way excluded by the production on an industrial scale (which otherwise would deprive industrial design of the protection afforded to it by law), and that in this case it is confirmed by the numerous awards that the design received, “both those from professionals (such as the exhibition at the Triennale di Milano), and in terms of appreciation by the public“. In stating this, the judgment endorsed the previous case law of the same IP Court (which we discussed, among other things, here on this blog) based on which, to get confirmation of the existence (since its creation) of the artistic value of the work “it is particularly important to take into account the perception of the work in the eyes of the public and of the most specialised in the field, including the granting of awards“.

Having stated this, the Court ascertained the substantial identity between the beds marketed by the defendants and those by Flou, thus concluding for the infringement of the plaintiff’s copyright and enjoining the defendants from further marketing the copies.

The decision did instead not grant to the work the requested protection as an unregistered three-dimensional trademark, recalling the Italian and European case-law on this, which we talked about, among other things, here on this blog. The Court in fact stated “that the shape of the Nathalie bed gives substantial value to the product“, since it “has a decisive impact on the appreciation of the consumer so as to constitute in itself the motivation behind the purchase“. “It must therefore be excluded from the protection as a trademark“, since art. 9 of the Italian IP Code (in accordance with art. 7 of the CTM Regulation) provides that “signs that consist exclusively of … the shape that gives substantial value to the product” cannot be registered as trademarks.

Similarly, the decision did not grant protection against unfair competition, due to a lack of evidence on the part of the plaintiff in that respect.

The Judges finally assessed damages, based on the opinion of the expert accountant appointed for this purpose: the defendants were ordered jointly and severally to pay compensation of more than 2.5 million euro, calculated in relation to the profits achieved by each of them, in addition to € 762,000 for damages to Flou’s image and loss of value of the Flou asset, and to the court fees. In addition, the Court ordered the publication of the judgment in two national newspapers, a specialised magazine and on the Mondo Convenienza website.