The CopyKat - prowling

In the wake of the jury’s verdict in the "Blurred Lines case", Marvin Gaye’s children have filed a new motion to list three record labels and rapper TI as responsible parties in the case – and thus also hold them accountable for the already decided copyright infringement by Robin Thicke and Pharrell Williams. Gaye’s three children Nona, Frankie, and Marvin III, have also written and published an open letter, clarifying their motivations behind taking the copyright case to court on their father’s behalf. In the original trial, the jury exonerated TI and the recorded music labels and distributors Universal Music, Interscope Records and Williams’s Star Trak Entertainment of infringement. A second motions seeks to halt the sale and reproduction of Blurred Lines until both parties reach an agreement on how the Gayes “may share in the copyright and all future proceeds of Blurred Lines, as is their right”. More here.

Rapper and producer RZA says there should be a limit on how much an artist can recover if their songs are sampled without consent. Speaking at SXSW, the Wu-Tang Clan co-founder said that while artists who inspire should be paid, there should be a limit to how much they can demand, especially if the money isn't actually going to the artist: “Art is something that’s made to inspire the future," he said during his stay in Austin, according to the Daily Beast. "If you utilize somebody’s artistic expression blatantly, to [the point] where it’s an identifiable thing, then there should be some sort of compensation to the person who inspires you.” Arguing the sampling itself is creative and an art form, the Shaolin producer, known for crafting unexpected beats from esoteric samples, called for a 50% cap for retroactive payments of sampled material saying "There should be a cut off. Fifty percent is the most” commenting "The Greeks could come sue everybody because one generation teaches the other” and “When you hear an A chord to the D to the E, there are over one million songs with that same progression. And each one of their songs is identified as their own. The point being that art will continue to inspire the next generation, and we will find duplication” before going on to reveal "“I’ve been in situations where I’ve sampled something and the original copyright holder took 90 percent .... That means they ignored all the programming, drumming, keyboard playing I played on top of it, they ignored every lyric, every hook, everything that we built to make it a song. And we wound up selling more copies than the sample[d] version—but yet they took 90 percent of the song.”

And Grammy winner John Legend is also concerned that the Blurred Lines verdict could set a worying precedent for artists creating music inspired by others. The Grammy winner told the Associated Press he understands why people say Pharrell Williams and Robin Thicke's 2013 hit sounds like Marvin Gaye's Got To Give It Up from 1977, adding: 'I said that when I first heard it, too.' But he said he doesn't agree with the jury that determined the performers actually copied elements of Marvin's work but said  "There's a lot of music out there, and there's a lot of things that feel like other things that are influenced by other things" adding "And you don't want to get into that thing where all of us are suing each other all the time because this and that song feels like another song.'"

More copyright, more "Quality Works"? Not quite but maybe, says a study of Italian opera before 1900. As Italy had a wide variety of copyright law provisions until  the late 1860s when Italy itself was finally unified, Stanford economists Petra Moser and Michela Giorcelli compared the varying degrees of copyright protection to the output of operas, compiling a database of more than 2,598 Italian operas written between 1770 and 1900 - and then looked at the longevity of each opera right up to how many recordings of any opera were available in 2014 on Amazon. Vox explains "Copyright laws seem to have created significantly more operas that also had staying power and were of higher quality" and details:  "States with copyrights ended up producing 2.68 additional operas per year, a 121 percent increase over states without copyrights. Historically popular operas (as measured by the 1978 publication, the Annales of Opera 1597-1940) grew by 47 percent, and durable operas [those available on Amazon in 2014] grew by 80 percent.”

Is copyright a human right? Well, the United Nations Special Rapporteur in the field of cultural rights, Farida Shaheed, has presented the first of two consecutive studies, “Copyright Policy and the Right to Science and Culture,” at the 28th Session of the Human Rights Council in Geneva. Shaheed addressed copyright law and policy issues, examining how they may run counter to human rights. The second part of her report will be submitted to the UN General Assembly later this year addressing the connection between the right to science and culture and patent policy. More by Pauline Lee on the excellent Washington College of Law website here.

And finally, The Verge tells us that after pressure from campaigners, SpaceX has published a first batch of more than 100 photos on Flickr under a Creative Commons license. The decision gives the public the ability to download and remix the images freely (as long as they're attributed properly) and has been welcomed as a success for both space fans and copyright advocates. Unlike images of space published by NASA, SpaceX's photos do have some rights reserved, meaning they can't be used for commercial purposes. SpaceX "designs, manufactures and launches advanced rockets and spacecraft. The company was founded in 2002 to revolutionize space technology, with the ultimate goal of enabling people to live on other planets."

Seeing stars! Some reflections on Audrey Hepburn v Caleffi

Here's a guest post from Valentina Torelli on a legal decision from Italy that has attracted a good deal of attention beyond that lovely country's borders. This is what she says:

A week ago, the IPKat reported a fascinating judgment of the Court of Milan concerning the infringement of Audrey Hepburn's publicity right by the Italian company Caleffi. As explained, the Court of Milan admitted Audrey Hepburn's heirs' claim that Caleffi pay compensatory damages and restore moral prejudice for having deployed Audrey Hepburn's image in Breakfast at Tiffany's on postcards and brochures, without authorisation, within the contest called “il diamante dei sogni” (the diamond of dreams). This advertising material featured on Caleffi's website and as part of an advertising insert of a well-known Italian magazine. 

In particular, Audrey Hepburn's heirs argued that her right of publicity was infringed under Article 96 of the Italian Copyright Law and Article 10 of the Italian Civil Code. The first provision establishes that a person's portrait cannot be displayed, reproduced or put in the market without the person's consent – or the heir's consent – unless the requirements of Article 97 are met: among others, the celebrity status of the person justifies the lack of consent when the image's reproduction refers to facts, events, ceremonies of public interest and when the reproduction of the image took place in public circumstances. 

In any event, the portrayal's display and commercialisation are forbidden when they hinder the reputation, the honour and the dignity of the person concerned. Likewise, Article 10 of the Italian Civil Code grants physical persons the right to ask for the cessation of the unlawful display or publication of their portrayal and for compensation in the form of damages, when such uses occurred outside the cases provided by the law or when the person's dignity and reputation are impaired. 

The Court of Milan first held that Article 96 and 97 of the Copyright Law could not resolve the dispute in that the alleged breach did not encompass Audrey Hepburn's real image. The Court then applied Article 10 of the Italian Civil Code, as the present case entailed the rearrangement of the famous window-shopping scene in Breakfast at Tiffany's where Holly (alias Audrey Hepburn) was looking at Tiffany's showcase. 

The photographer of the advertisement depicted, partially from behind, a model in a black dress, with lookalike Holly hairstyle, with black gloves and sparkling jewellery while posing in front of a shop showcase. All these circumstances were enough for the Court to find that there had been an undue association between the photography's narrative subject matter and Audrey Hepburn's image, although that image only evoked her ‘Holly’ character. In allowing the claim, the Court of Milan applied old settled case law dating back to 1984, 1992 and 1997, which had extended the physical person's right to portrayal to elements not directly connected to that person such as clothing, decoration, make-up. The Court however considered that the Hepburn/Holly persona was a public person in the audience's perception, this being an evocative reference which required a request for consent to use the person's image.

From a legal and photographic point of view, I am not completely sure that the Court of Milan got it right in this case in that, when I first read the judgment, I immediately wondered whether the judges had confused Audrey Hepburn's and Holly's images, despite how much the public may hold the actress performance in Breakfast at Tiffany's in high esteem. 

As regards the legal perspective, the Holly character originated from Truman Capote's creativity and it was later envisaged and adapted in an audiovisual work under Blake Edward's direction. Within the cinematographic conception of Holly a considerable degree of recognition should be accorded to Mr Hubert de Givenchy, the fashion designer who shaped Audrey Hepburn's image in and out of movie sets. Overall, Holly's features derive from the commitment of all these great professionals in the realisation of the Breakfast at Tiffany's masterpiece, produced by Jurow-Shepherd. 

That said, it would have been different if Audrey Hepburn's image had been used in Caleffi's advertisement, as happened in Ryanair's campaign in which one of Charles Prince of Wales' photographs had been used without authorisation to sponsor the suitability of its air fares. In its decision of 3 March 2004 the Advertising Standard Authority censured the advertisement in that it infringed the Prince's right to privacy because the Royal Family's permission to use the photograph had not been requested according to Article 13 of the Code of Advertising Practice. 

The Audrey Hepburn case was also different from that involving the legendary Italian songwriter Lucio Dalla, to which the Court of Milan referred. In Dalla the advertiser had used elements which delineated Dalla (left) by reference to symbols that typified him, namely a knitted hat skullcap and a pair of metal-framed spectacles. However, those features belonged to Dalla as a physical person who had also a public recognition and fame. 

In the Audrey Hepburn dispute, should there be any infringement of a right to the portrayal of Holly? Who is the holder of Holly character's image? Is there any right of portrayal available for fictional characters? Eventually, these questions could be answered by reference to the Italian Copyright Law, in particular to Article 46ff concerning copyright and related rights in cinematographic works. 

In relation to photography, there are a couple of consideration to highlight. First, it could be argued that the photographer's work in Caleffi's advertisement was an original photography and a piece of art on its own, since its suggestive subject matter did not conclusively deprive the image of copyright protection, the author's own creation could be found in the form of a minimum of reinterpretation of the window-shopping scene.
I have found the case-law on which the Court of Milan relied to assess the misuse of Audrey Hepburn's image quite outdated. All in all, I think that the way the people's image should be treated and protected should reflect the conditions of society today and that images should be treated in accordance with the role that society assigns to them. Since the judgments referred to in the present case were given, more than 20 years have passed and our society has evolved into one that recognises the wisdom of communication inspired and managed by images. 

We are driven to make our choices and to think about everything in terms of images and photographs, without stopping to think about what a photograph actually represents. Photography, advertising photography included, is more than a true and simple reproduction of someone or something: they are now often the means by which a story is told and sometimes they are also works of art on their own, like Elliott Erwitt's photography for example. 

Hubert de Givenchy hereLucio Dalla – Caruso hereRoland Barthe – Camera Lucida here

When SIAE isn't everything: Soundreef breaks Italian barrier to rights administration

At a time when readers are thinking of Christmas, what better time can there be than now to take a look at Soundreef, the rights management company whose logo (right) looks more like a seasonal holly leaf than anything do do with copyright and neighbouring rights issues. Anyway, Soundreef has been engaged in some litigation in Italy that will surely put the nose of SIAE out of joint.  Soundreef's somewhat excited media release, quoted in part here, gives readers a flavour of things to come:

"Court Holds Soundreef Business Activities in Italy Legitimate

Here’s yet another confirmation of the legitimacy of Soundreef activities: this time it has been the Court of First Instance of Milan to rule in favour of this rising and ambitious British company that administers copyright and neighbouring rights and is a de facto competitor of the Italian Society of Authors and Editors (SIAE).

"At the moment there are no sufficient elements to hold that Soundreef's dissemination of music within the Italian territory is unlawful because of the exclusive granted to the Italian Society for Authors and Editors (SIAE) as per Art. 180 of the Italian Copyright Act, nor does it appear that the music ... managed and disseminated by Soundreef in shopping centres, department stores and similar commercial venues, must be necessarily managed by SIAE. Any such claim would be in conflict with both the principles of the free market within the European Community and the core principles of free competition". [Indeed, in an era in which technology takes the strain and the bureaucratic element of rights management is largely automated, the benefits to rights owners through economy of scale, if they exist at all, must be vanishingly small].

The above is one of the key passages of the decision by which the Court of First Instance of Milan dismissed the arguments advanced by a songwriter and in-store radio service, Ros & Ros, in the context of proceedings aimed at prohibiting Soundreef from continuing its activities, on grounds that – according to the claimants – this would have been tantamount to a violation of the exclusive granted to SIAE, and an act of unfair competition.

In both phases of the interim proceedings, the Court of Milan dismissed all claims against Soundreef.

"The decision holds that Soundreef’s conduct is completely legitimate, since Art. 180 of the Italian Copyright Act cannot be interpreted in contrast with Art. 56 TFUE, that guarantees the free movement of services.”

By means of an interim order, the Court held that Soundreef could not be considered liable of any “unfair conduct” that, “because of the particular modes of implementation, violation of the law or national rules”, could be considered such as to cause an unfair damage to any third parties. The judging panel also added that, since Soundreef is a British collecting society, “it cannot be held that European collecting societies may only operate in Italy by means of reciprocity agreements with the local collecting societies. This is a possibility that is open to the parties to consider, not an obligation.”
...

Things continue to change in the market for collective rights management also in Italy. Following the piece of legislation that opened up the market for collective management of neighbouring rights, a panel of judges has now stated that the exclusive mandate held by SIAE is less extensive and widespread than what has been suggested at times.

Soundreef is ... operating in a number of countries around the world, including UK, Italy, France, Sweden, the Czech Republic, India, Greece, Russia, Israel, Ireland Costa Rica, New Zealand, Switzerland, and Spain.

Besides granting music licenses, Soundreef collects and distributes royalties to authors, composers, editors and labels, and by doing so it has provided an alternative to SIAE in Italy. ..."

This blogger thinks that this result is irresistibly correct and hopes that SIAE will redirect its efforts away from trying to stop Soundreef and towards seeking to make its own offering more appealing to those who depend for their income and well-being on the speed and efficiency with which licence revenue is collected and distributed.

Italian Communication Authority issues online copyright enforcement regulation (at last)

Following an earlier failed attempt, a (good) number of mixed signals, suggestions of missing competence to adopt a regulation, a public consultation [handily launched in August last], allegations of violating fundamental freedoms, and EU Commission's evaluation (here, here, here, here, here), this morning the Italian Communication Authority (AGCOM) published its Regulation on online copyright enforcement, or Regolamento in materia di tutela del diritto d'autore sulle reti di comunicazione elettronica e procedure attuative as sensi del Decreto Legislativo 9 Aprile 2003, No 70 [by adopting Legislative Decree 9 April 2003, No 70, Italy implemented the Ecommerce Directive]. 

The Regulation, which will enter into force on 31 March 2014, follows AGCOM's own consideration that something must be done at the level of public institutions to contrast digital piracy. The Regulation is aimed at "massive violations", not individual users and P2P activities. As such, the Regulation "does not affect online freedoms at all".

No, he's not a new member of AGCOM ...
But still ...

Similarly to what was recently recommended in France by the Lescure Report (here and here), the Regulation emphasises how more effective enforcement must go hand in hand with the promotion of legal content offers, education and information of consumers [notably younger ones], and adoption of codes of conduct. 

Overall, the Regulation contains a detailed discipline of an innovative [also in the sense that AGCOM not only drafted and adopted the Regulation, but will be also competent to apply it ... Is that L'Etat c'est moi 2.0 or what?] "notice and takedown" procedure that is intended - among other things - to be particularly swift and effective. 

A more detailed analysis of the Regulation will follow shortly on the IPKat. 

CopyKat - a Thursday typhoon of copyright titbits

The Seoul High Court has ruled that performers and copyright owners whose music is streamed to the public from a digital source can indeed protect their rights. The appellate court ordered Hyundai Department Store to pay 235 million won ($230,000) to the Federation of Korean Music Performers (FKMP) and the Recording Industry Association of Korea (RIAK) for streaming music of their members for a two year peiod between January 2010 and December 2012.  Hyundai had taken the recordings from KT Music, a digital musical source retailer, and used the music at retail outlets.  The court noted  “There is no difference between streaming music and albums, in terms of financial losses from possible performances and sales of music albums” adding  “Streaming music also should be considered as same as music albums because its digital sources were saved in the database of KT Music and they also temporarily stayed on computers of the stores while they were streamed.”  The Korean Ministry of Culture, Sports and Tourism said earlier this year that it plans to revise the IP Law to boost the legal status of digitalized musical sources to the level of albums.  

Back in July, Aimee Mann brought an interesting lawsuit over the possible existence of a massive amount of unlicensed music being streamed online against MediaNet, a company once backed by EMI, AOL, BMG and RealNetworks before being taken over by a private equity firm. MediaNet is essentially a white label that has served up more than 22 million songs to more than 40 music services, including Yahoo Music, Playlist.com, eBay and various online radio services. Mann sued the company for allegedly infringing 120 of her songs, saying that a license agreement signed in 2003 expired three years later. MediaNet maintained it had a valid license and argued that a provision of its agreement with Mann granted it an ongoing statutory license even after the agreement's termination and a Section 115 US Copyright Act compulsory licence. But District Judge George King disagreed, siding with Mann saying "This is a reasonable interpretation of the License Agreement, and MediaNet has failed to argue otherwise," writes the judge. "Accordingly, Mann has adequately alleged that MediaNet does not have a Section 115 compulsory license to use her pre-December 5, 2003 and post-December 4, 2006 songs and Judge King went further agreeing the MediaNet cannot escape a charge of secondary infringement for allegedly causing others to infringe Mann's works. 

From Italy - with  no love? The Court of Rome has blocked Italian resident's access to VKontakte the Russian social network (with over 160 million subscribers) after a successful complaint by Medusa Film, who said that a non authorised copy of their comic film Sole a catinelle had circulated among the users of the Russian media giant. The Public Prosecutor decided the effective remedy was to block access to Vkontakte from Italy and now an Italian - or a Russian living in Italy, cannot communicate with their friends in Russia on VKontakte. But how long will this blanket ban extend for? And is it a reasonable solution to the problem - not least as it seems The Public Prosecutor did not make any attempt to contact the Russian social network and ask for the removal of the illegal copy of the film? One commentator mused “It is right to protect copyright...but the [Italian] Constitution puts the right of expression and communication and authors right on the same level. It is not correct to have one right prevail over the other” and Marco d’Itri who runs Osservatorio Censura, a site dedicated to reporting on Italian web censorship commented that action was being taken before a hearing on the full merits of the case. Rapidgator has also been blocked.

Six days before movie studios were set to begin a jury trial over alleged copyright violations by the "cyberlocker" site Hotfile, the case has settled. Hotfile has agreed to pay $80 million and to stop operating "unless it employs copyright filtering technologies that prevent infringement," according to a press release sent out today by the Motion Picture Association of America (MPAA). Judge Kathleen Williams had already ruled that Hotfile was not eligible for the DMCA "safe harbor" protection and that it was going to be liable for the actions of its users. Hotfile employed an incentive system to encourage downloading and paid users who uploaded popular files, including copyrighted files. 

Chinese online video site Youku Tudou has won a number of copyright infringement cases brought against Chinese search giant Baidu. Baidu was found guilty of copyright infringement by a court in Beijing. It was ordered to pay 491,000 yuan ($101,107) for illegally hosting 18 Chinese television shows that Youku Tudou bought exclusive rights to. Since October this year Youku Tudou has 32 filed cases against Baidu for infringing it's copyrights. The remaining cases are awaiting verdicts.

A new study by Peter DiCola for Northwestern University's School of Law shows that the 'average' musician relies more on income from live music and teaching than from the copyright industries. A study of the revenue streams of 5,000 musicians found that the largest portion of musician earnings are from live gigs (28 percent). Teaching comes second with 22 percent, salaried musical work has a 19 percent, share along with session work, also 19 percent. Songwriting/composing fees and recording earnings - the two categories most tied into copyright, bring in 6 percent each with DiCola's saying "A hypothetical boost in revenue from more effective [copyright] enforcement would only increase the average musician's total revenue by a small amount today, in the short term," adding "Stronger copyright might provide them incentives to move up the income ladder in a winner-­take-­all kind of market. But it will not put more money in their pocket today; for the hypothetical legislation to help them in the future, they must get rich first."

A man who was found to be in possession of one of the largest hauls of hi-tech equipment for use in copyright theft ever found in the UK has been sentenced to 18 months in prison. 52-year-old Keith Tamkin from Bognor had pleaded guilty to six offences - one of distributing articles infringing copyright, two of money laundering (a total of £140,000), one of transferring criminal property - a computer - and two of possessing prohibited weapons, a pepper spray and a stun gun. At one of the two properties used by Tamkin the police found more than 100 full computer hard drives, an estimated 150,000 CDs and DVDs, computers and eight 'multiple bay burning towers' to copy music, films and software. A large catalogue of 25,000 titles distributed to an extensive client base was also seized. 

The Turtles

Sirius XM have failed in an attempt to move a $100 million class action lawsuit in California for distributing and performing pre-1972 sound recordings to New York, where the broadcaster is facing another action. The satcaster is also facing two more actions brought by major record labels and a fifth lawsuit from SoundExchange, the digital performance rights organization that collects royalties on behalf of sound recording copyright owners. The California lawsuit is being led by members of The Turtles who say that Sirius cannot rely on section 114 of the US Copyright Act for protection – as pre 1972 recordings are subject to state law – which may arguably mean that Sirius plays songs recorded before that date without permission. Sirius argued that the plaintiffs were playing "lawsuit lottery" alongside the actions in New York and the third in Florida and sought to have the case transferred to New York and perhaps consolidated. But U.S. District Judge Philip Gutierrez denied Sirius' motion saying "it seems at this point that although the three suits share a common factual core, they are legally distinct and will turn on the separate interpretations of California, New York, and Florida law, respectively."

Could Judge William Alsup's June 2012 ruling that APIs could not be covered by copyright.about to be overturned by Federal appeals court? There are rumours about that at least one appeals judge is  are sceptical of the decision and may be leaning towards overturning it which would no doubt cheer up Oracle.

Watch this space!

Towards a Google Tax in Italy too?

On 22 March 2013 last, following the approval of the Bundestag, the German Bundesrat passed a piece of legislation known as Leistungsschutzrecht für Presseverlege (‘LSR’) [or also "Google Tax" law]. 

By adopting this new law, Germany extended press publishers’ copyright by providing them with an ancillary right over news contents. 

The newly created sections 87f and 87g of the Urheberrechtsgesetz [the German Copyright Act]  provide for the exclusive right of press publishers to exploit their contents commercially for one year, thus preventing search engines and news aggregators (like Google News) from displaying excerpts from newspaper articles without paying a fee.

The stated objective of the LSR is to recoup some of the revenues traditional news publishers have lost to the web. With particular regard to news aggregators, two studies of the Iowa University and ETH and Boston University respectively, have found that not only are these unlikely to have complementary effects on the number of visits to newspapers' homepages, but rather appear to have a substitution effect, which is said to have contributed to declining online traffic in the past few years (see here).

Under-secretary Giovanni Legnini

Although personally I am against laws like the LSR, in that I am afraid that they might have anti-competitive effects and push the boundaries of IP protection a bit too far (although by means of ancillary rights only), there are rumours that the German example might not remain an isolated experience in Europe.

Readers will remember that there was a time when also France was considering introducing a law similar to the LSR (here and here). However, similarly to what had happened in Belgium (here), this idea was abandoned following Google's settlement with French press publishers (here).

Now it seems that also Italy might be about to enter the "Google Tax" debate.

This morning Corriere della Sera published an interview with Giovanni Legnini (under-secretary to the Presidency of the Council of Ministers in charge of publishing and implementation of Government's agenda), in which he spoke about possible measures in favour of Italian press publishers.

Among other things, Legnini mentioned the need for search engines to give their contribution to help Italian press system's renovation and innovation.

Probably cuter than the kind of "help"
Italy might want from Google

The under-secretary highlighted that newspapers and press publishers in general have been subject to a dramatic drop in terms of advertisement revenues and public contribution [the latter is quite a heated political topic at the moment]. Those who have instead increased their revenues have been search engines.

Therefore, Enrico Letta’s Government might “ask” these subjects to "help" renovate the press publishing system. How this will be done, however, will be explained in due time.

In the meantime, Italian Communication Authority (AGCOM) president Angelo Cardani has confirmed that plans to adopt an online copyright enforcement regulation are well and alive (here), although it is currently being discussed whether Italian Parliament should legislate in the area of copyright first. As AGCOM fans will remember, the latter is no new topic (here).

Copyright in design in Italy:a post-Flos review

The 1709 Blog thanks its Italian friends Antonella Barbieri and Federica De Santis (Portolano Cavallo Studio Legale) for letting us have the following contribution:

"Copyright in design in Italy: the approach of the Courts and Law after Flos v Semeraro

You may have read some discussion on this blog regarding the effect of the CJEU's ruling in January 2011 in Case C-168/09 Flos v Semeraro on the protection of industrial designs in EU Member States.

Issues have arisen since Article 17 of Directive 98/71 on the legal protection of designs, while requiring Member States to comply with the principle of ‘cumulation’ of protection of registered designs with copyright protection, also left Member States free to determine the extent to which, and the conditions under which, copyright protection is conferred, including the level of originality required.

Before 2001, Italian law afforded copyright protection only to those industrial design works whose artistic value could be appreciated separately from the industrial nature of the product to which it pertained.Legislative Decree no. 95/2001, implementing Directive 98/71, then amended the Italian Copyright Law (Law no. 633/1941) by removing the requirement for ‘separability,’ granting copyright protection to works of industrial design having “inherent creative and artistic value” (Article 2(10), Italian Copyright Law.) and providing that design registration may be combined with copyright protection. Accordingly, thanks to the ‘cumulation’ regime set forth by Directive 98/71 as implemented, designs works can be protected in Italy as:

• registered designs and models under the Itallian Intellectual Property Code (Legislative Decree no. 30/2005: the 'IPC'), from 5 to 25 years; or as
• copyright-protected works, as far as they have ‘inherent creative and artistic value,’ for a period of 70-years after the author’s death.

Moreover, a 10-year transitional regime was established by Legislative Decree no. 95/2001 during which copyright protection granted to industrial designs could not be invoked against third parties that had started in good faith to manufacture or sell, before the date in which the law entered into force (19 April 2001), industrial designs and works that belonged to the public domain either because their design rights had expired or because they were not eligible for copyright protection.

That provision was subsequently restated in Article 239 of the IPC.  Against this backdrop, in 2007, the Italian Government amended Article 239, excluding copyright protection for any design which fell into the public domain before 2001.  The 10-year grace period disappeared and copyright protection for designs that had fallen into the public domain before 2001 was then excluded tout court.

Since the facts briefly summarised above, the interpretation of Article 239 has been highly controversial as to whether industrial designs which were created before 2001 benefit from full copyright protection.

In the meantime, the Italian Courts issued significant decisions which granted copyright protection to design works against their slavish reproduction by third parties.  Recent Italian judicial decisions on the matter have been greatly welcomed by the Italian design industry, as they provide greater protection to what is considered a vital industry for the national economy, marking a new perspective in the Italian industrial design case-law.

Flos v Semeraro 

In November 2006, the company Flos, a manufacturer of designer lighting, brought proceedings against furniture producer and retailer Semeraro before the Court of Milan. Flos argued that Semeraro had infringed its copyright on the “Arco” lamp (illustrated, right), a masterpiece of post-war Italian design created by the Castiglioni brothers in the 1960s, by importing from China and marketing in Italy a lamp called “Fluida” with aesthetically similar features of the Flos “Arco” lamp. The “Arco” lamp was not a registered design.

Semeraro denied infringement and argued that, among other things, the “Arco” lamp was not eligible for copyright protection in that it lacked “inherent artistic value” under the Copyright Law.

In interim proceedings, the Court of Milan ruled that Semeraro infringed Flos’s design rights, ordered the seizure of the imported lamps and prevented Semeraro from continuing to market them.  According to the Court of Milan, the “Arco” lamp was eligible for copyright protection as an industrial design under the Italian Copyright Law. 

In April 2009 the Court of Milan made a reference to the CJEU for a preliminary ruling in connection with the compatibility of the Italian provisions on protection of industrial designs with Directive 98/71. In January 2011 the CJEU ruled that national laws (in this case, the IPC) cannot refuse copyright protection to designs which, even if entered into the public domain, were eligible for that protection. The CJEU also clarified that Article 17 of the Directive concerned only registered designs, (i.e., designs which had been registered and then had fallen into the public domain), in that it providds for the principle of ‘cumulation’ of protection of registered designs with copyright protection. Accordingly, designs which, before the date of entry into force of the national law transposing the Directive into the legal system of a Member State, were in the public domain because they had not been registered did not fall within the scope of Article 17.

Incidentally, the CJEU observed that copyright protection for unregistered design works may arise under the Information Society Directive 2001/29 if the conditions for that Directive’s application (focusing on the concept of “creativity,” to be defined by the national implementing laws) are met.

Very recently, on 12 September 2012, the Court of Milan endorsed the interpretation of the CJEU and ruled that Semeraro’s sale of the “Fluida” lamp, which copied the Flos “Arco” lamp, amounted to a copyright infringement. Semeraro was ordered to stop selling the “Fluida” lamp. Moreover the Court ordered the destruction of any copies of that product that remained in the market, and ordered Semeraro to pay €60,000 damages, a fine of €1,000 for each infringing product imported or marketed after the decision, and for the publication of the decision in a major Italian newspaper. 

The Court of Milan also stressed that, based on the CJEU ruling, industrial design works could be protected as copyrighted works regardless of whether they have been previously registered as industrial designs.  In this respect, the Court of Milan fixed important principles to ascertain whether an industrial design work bears “artistic value” and is therefore eligible to copyright protection, e.g, one should look at the widespread appreciation of the design work in the cultural and institutional sector (e.g. critics, cultural institutions, museums, etc.), irrespective of the fact that it is of daily use.  The relevant assessment should be objective, rather than subjective

Further, the Court gave relevance to the fact that the “Arco” lamp represents the trends of post-war Italian industrial design and has been included in the collection of the New York Museum of Arts and Design for over ten years. Similar arguments had been used by the Court of Milan when, with two injunctions of 26 April and 7 July 2011, it granted copyright protection to an unregistered design item, the "LC/4" chair by Le Corbusier, produced by the Italian company Cassina (reproduced, left), against High Tech S.r.l., another Italian company selling pieces of furniture identical to those designed by Le Corbusier. In that occasion, the Court of Milan emphasised that non-registered design works also are eligible for copyright protection as long as the conditions for copyright protection are met, i.e., if such works have inherent creative and artistic value.

In another very recent decision of 13 September 2012, the Court of Milan granted copyright protection to the well-known design work “Panton Chair” by Verner Panton (illustrated, right), produced by Vitra Patente A.G., against its slavish imitation by High Tech S.r.l.  According to the Court, the exposure of this work in famous exhibitions and museums was considered evidence of its artistic value, making this item eligible to copyright protection.

Further amendments to IPC

After the CJEU decision in Flos v Semeraro, Article 239 of the IPC was further revised:

·                    in 2010, to provide full copyright protection for designs that met the substantial requirements of such protection;

·                    in 2011, to provide expressly that the protection granted to designs works under the Copyright Law applied also to those industrial works that, before 19 April 2001 (the date on which the law implementing Directive 98/71 entered into force), were in, or had become part of, the public domain, and, finally,

·                    in 2012, by Law no. 14/2012, which extended the transitional period granted on 19 April 2001 from five to thirteen years, with such extension of this transition period appearing to be in conflict with the CJEU decision in Flos v Semeraro."

This is a summary of a longer article which you can access here.

PM Monti opens the Italian market for neighbouring rights

Prof Monti explaining the reforms
included in the Decreto Liberalizzazioni

Here's some news from the Italian side of the world of collecting societies. 

On 20 January the new Italian government led by Prof Mario Monti passed a reform (known as "Decreto Liberalizzazioni", which is available in full here) aimed at boosting the Bel Paese's suffering economy, in particular by promoting the value of competition (our English-speaking readers may access details here). 

"The Italian economy has been held back for decades. More competition means more openness, more space for young people, less space for privileges and rent-seeking, more space for merit" said the Prime Minister.

Since his appointment in November 2011, Prof Monti has indeed made no secret of the fact that liberalisation of services is to be pursued wherever possible (you can read his interview with The Economist here).

Sectors involved in the liberalizzazione are - inter alia - taxis, pharmacies, local public transport, petrol stations, lawyers, MDs, dentists and ... the Italian collecting society SIAE (Società Italiana degli Autori ed Editori).

According to Article 39(2) of the Decreto Liberalizzazioni (the translation is mine),

Candidates for intermediary
positions are ready for interviews

"To favour the creation of new undertakings aimed at protecting the rights of artists, performers and executors, by enhancing competitive pluralism and allowing for a more economic-oriented management, as well as by favouring the actual involvement and control by rights owners, administration and intermediation activities relating to neighbouring rights, pursuant to the Italian Copyright Act - no matter how these are carried out - are free."

As some of our readers may remember, Article 180 of the Italian Copyright Act provided for intermediation activities in the field of neighbouring rights be carried out exclusively by SIAE.

It will be interesting to see, also in light of the recent ruling of the CJEU in Murphy (discussed in this Blog here and here and by the IPKat here), how things develop further, now that the Italian market for neighbouring rights seems open to competition by Italian and foreign intermediaries alike.