The original Italian version is also published on Il Sole 24 Ore – Diritto 24

On 12 September, the European Court of Justice issued its decision in the G-Star v. Cofemel case no. 683/17, essentially dealing with the possibility of granting copyright protection to clothing designs.

The ruling was greatly anticipated because it was expected to clarify whether the legislation of the Member States could make copyright protection of design works conditional on further requirements beyond that of originality which is the sole requirement for other works. This issue is of great relevance in Italy, where the current legislation, i.e. Art. 2 no. 10 of the Copyright Law, requires that design works also have an “artistic value”. This is a requirement that our Judges generally only find in works that have received particular recognition from the public and in the cultural sphere, as demonstrated by being exhibited in museums or published in catalogues or magazines. The flaw of this approach is that it clearly leads to granting copyright protection only to the works that have been on the market for a long time and denying it to the most recent works.  This, amongst other things, is an apparent violation of the constitutional principle of equality.

Unfortunately, the ruling in question does not appear very clear on this point, partly because of the way in which the Portuguese court of referral posed the questions. These questions, in fact, do not ask whether similar requirements can be demanded in addition to originality, but rather they seem to ask if they can be requested as an alternative to the latter.

Despite this, the decision actually appears to state that no additional requirement may be demanded by national legislation. The ECJ in fact recalls that, pursuant to Article 2(a) of Directive 29/2001/EC, Member States shall provide for the authors’ exclusive right to authorise or prohibit the reproduction of their works, where the notion of ‘work’ presupposes the existence of two cumulative elements. “On the one hand, this notion implies that there is an original object, i.e. an object representing an intellectual creation by its author. On the other hand, the qualification as a work is reserved for the elements that are an expression of this creation” (point 29). The first requirement, i.e. originality, exists where the work “reflects the personality of its author, manifesting his free and creative choices” (point 30) instead of being dictated by considerations of a technical nature, rules or other constraints; the second requirement exists where the object can be identified with sufficient precision and objectivity (point 32), so that both third parties and authorities can know the protected objects precisely.

Having said this, the Court therefore affirms that “When an object has the features recalled in points 30 and 32 of this judgment, and therefore constitutes a ‘work’, it must benefit from copyright protection in accordance with Directive 2001/29, where the scope of such protection does not depend on the degree of creative freedom enjoyed by its author and is therefore not inferior to that enjoyed by any other work falling under this directive” (point 35). Specifically, designs “can be classified as ‘works’, pursuant to Directive 2001/29, if they meet the two requirements mentioned in paragraph 29 of this judgment” (point 48).

The Court of Justice does not seem to leave any possibility of demanding further requirements, and therefore seems to preclude the Italian legislation that requires the existence of artistic value. We will now have to see how this decision will be implemented in the Italian legal system.