Copyright Protection for Industrial Design in Italy: An Endless Story

The issue of protecting design products stands at the crossroads of multiple legal rights, sparking some of the most dynamic and lively discussions about the (partially overlapping) legal mechanisms available for their protection. Copyright protection, in particular, has proven to be a challenging tool, given Italy’s long-standing cautious stance on extending such protection to products of industrial design. However, the landscape is evolving and is likely to shift further in the near future. An overview of these developments follows below.

The beginning: from the “denied” protection to the “artistic value” requirement and its “objective” interpretation in case law

Before the implementation of Directive 98/71/EC on the legal protection of designs, Italy explicitly prohibited the cumulation of design rights (then referred to as “ornamental models”) and copyright protection. Furthermore, copyright protection was subject to the so-called inscindibilità (“separability”) requirement, which essentially stipulated that works of industrial design could only be protected if their “artistic value” was “separable from the industrial character of the product with which they are associated”.

“Separability” was a stringent requirement, and Italian case law applied it in the strictest possible manner. The courts held that only two-dimensional designs applied to three-dimensional objects could meet the “separability” criterion and thus qualify for copyright protection. In contrast, three-dimensional works were deemed inherently incapable of satisfying this requirement. An emblematic example of this orthodox approach was the 1994 ruling by the Italian Supreme Court (ruling No 10516/1994) which denied copyright protection to Le Corbusier’s chaise longue, one of the most iconic pieces of industrial design from the 20th century.

Things changed radically in 2001, when the Italian legislator – tasked with implementing Directive 98/71/EC on the legal protection of designs – undertook a comprehensive reform of the matter. As a result, not only was the cumulation of copyright protection and design protection allowed (as was the cumulation of design protection and trade mark protection, which had been consistently denied by case law and legal scholars), but the controversial “separability” criterion was replaced by the “artistic value” requirement.

This remains the relevant legal framework, primarily defined by Article 2.10 of the Italian Copyright Law, which states that only works of industrial design having both inherent “creative character” and “artistic value” are eligible for copyright protection.

As the general condition for copyright protection of intellectual works, the requirement of “creative character” has been (and was already at the time) the subject of well-established case law, according to which the condition is satisfied if the work constitutes the author’s own intellectual creation, thereby setting a relatively low threshold for protection. Not surprisingly, therefore, it is the interpretation of the novel “artistic value” requirement that has sparked (and continues to spark) debate over the scope of copyright protection for design in Italy.

Scholars and judges seem to agree that this requirement was intended to reserve copyright protection for design works distinguished by a pronounced aesthetic or artistic value – essentially, those at the so-called “high end” of industrial design products. This reflects a deliberate legislative policy choice to subject mass-produced industrial goods to a rigorous merits test before granting access to copyright protection.

As for the interpretation of the requirement by case law, a clear orientation has gradually emerged, anchoring the assessment of “artistic value” to objective criteria. In particular, emphasis has been placed on “objective” elements such as accolades from critics and cultural institutions, inclusion in the collections of design or contemporary art museums, or clear affiliation with certain artistic or cultural movements. For instance, the Court of Milan, in a 2012 judgment, reiterated that “the legislator’s choice to limit copyright protection for industrial design works to those possessing, in addition to a creative character... an ‘artistic value,’ undoubtedly raises the threshold for such protection far above that required for design registration”. The court further clarified that “determine whether a work of industrial design possesses artistic value, it is necessary to assess, in the most objective manner possible, the established perception of the work within the community, particularly in broader cultural circles”. It also stated that “in this context, the widespread recognition of a design work’s artistic quality by cultural institutions carries significant weight. This recognition demonstrates the work’s alignment with and expression of artistic trends and movements, beyond the intentions or awareness of its creator”. Addressing the objection that such an approach ties the intrinsic and original character of the work to events occurring after its creation, the court further clarified: “The consolidation over time of explicit and unanimous recognition by critics, cultural institutions, and museums does not constitute the foundational basis for attributing artistic value to a work of industrial design – an attribution inherently linked to the creative act. Instead, it represents the manifestation and shared acknowledgment of the work’s belonging to the category of copyright-protectable works” (Court of Milan, 2 August 2012).

These principles have also been applied to fashion products, although not that frequently. For instance, the Court of Milan, in a judgment of 12 July 2016, held that “Moon Boots”, the legendary après-ski boots designed in the 1970s, qualify for copyright protection, finding that boots “can well boast the characteristics of a creative work, endowed with artistic value... in view of their particular aesthetic impact, which, upon their appearance on the market, profoundly changed the aesthetic conception of the après-ski boot, becoming a true icon of Italian design and its ability to irreversibly evolve the taste of an entire historical era with respect to objects of everyday use”. The court particularly emphasised that the product had won national and international awards, been widely featured in monographs on contemporary, Italian, and international design, and received favourable criticism from experts and designers. Moreover, the Moon Boots had “garnered widespread and enduring public approval” and were chosen by the Louvre Museum in 2000 as one of the 100 most significant symbols of 20th-century design internationally. The court concluded that all these factors collectively indicate that the Moon Boots represent a prime example of how industrial design can elevate everyday objects to the realm of art, understood as a creative and innovative interpretation of the world.

This “objective” approach has also been endorsed by the Italian Supreme Court, which has confirmed that “artistic value” should be inferred from objective indicators, not necessarily cumulative. These indicators include recognition by cultural and institutional circles of a work’s aesthetic and artistic qualities, exhibition in museums or galleries, publication in specialised journals, awards, and a market value that surpasses mere functionality or the fame of its creator (ruling No 7477/2017). Such a request for objective “historicisation” certainly has the merit of bringing predictability to a requirement as inherently susceptible to widely varying interpretations as that of artistic value. However, it makes it challenging, if not nearly impossible, for design works by relatively unknown artists to qualify for copyright protection.

The Cofemel decision as a second (potential) turning point

Despite its potential flaws, the issue of copyright protection for design appeared to be settled on the “objective” approach mentioned above. Indeed, Article 17 of Directive 98/71/EC provides that “a design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State” and that “the extent to which, and the conditions under which, such protection is conferred, including the level of originality required, shall be determined by each Member State” (see also Article 96.2 of Regulation 6/2002/EC). Based on this provision, it was reasonable to assume that the requirement of “artistic value” was excluded from the harmonising authority of the EU Court of Justice, which instead left this to the discretion of national legislators.

However, the cards were reshuffled once again by the 2019 Cofemel ruling of the Court of Justice. The case arose from a referral by the Supreme Court of Portugal, a country where the legislation on design protection through copyright law is substantially similar to the Italian one. The Court was asked to determine whether it is compatible with EU law for national legislation to confer copyright on works of applied art, industrial designs and works of design: 1) “which, over and above their practical purpose, create their own visual and distinctive effect from an aesthetic point of view, their originality being the fundamental criterion which governs the grant of protection in the area of copyright?”; and 2) “if, in the light of a particularly rigorous assessment of their artistic character, and taking account [of] the dominant views in cultural and institutional circles, they qualify as an ‘artistic creation’ or ‘work of art’?”

In answering the first question, the court noted that all objects, including design objects, that represent “works" must benefit from copyright protection; and that, in line with its previous case law, for an object to be considered precisely a “work”, two and only two conditions must be met. The first is the requirement of “originality”, which occurs when the subject matter is “the author’s own intellectual creation”, for which “it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices”. The second condition is “the existence of a subject matter that is identifiable with sufficient precision and objectivity”.

The court went on to note that design law and copyright law may in certain situations overlap, but pursue different objectives and are subject to different disciplines: in particular, while on the one hand design protection is intended to protect “subject matter which, while being new and distinctive, is functional and liable to be mass‑produced” and “is to apply for a limited time, but sufficient time to ensure a return on the investment necessary for the creation and production of that subject matter, without thereby excessively restricting competition”, on the other hand “the protection attached to copyright, the duration of which is significantly greater, is reserved to subject matter that merits being classified as works”.

The court, coming more specifically to the subject of the first question, noted that since “the aesthetic effect that may be produced by a design is the product of an intrinsically subjective sensation of beauty experienced by each individual who may look at that design”, this “subjective effect does not, in itself, permit a subject matter to be characterised as existing and identifiable with sufficient precision and objectivity” as required by the second condition of the definition of “work”.

The court added that while it is true that “aesthetic considerations play a part in creative activity”, nonetheless “the circumstance that a design may generate an aesthetic effect does not, in itself, make it possible to determine whether that design constitutes an intellectual creation reflecting the freedom of choice and personality of its author”, thereby meeting the originality requirement.

The court then answered the first question by noting that EU copyright law must be interpreted as “precluding national legislation from conferring protection, under copyright, to designs such as the clothing designs at issue in the main proceedings, on the ground that, over and above their practical purpose, they generate a specific, aesthetically significant visual effect”.

Finally, the court held that, in light of the answer given to the first question, there was no need to answer the second question (which was the one that most directly touched on the Italian “artistic value” legislation).

The sharpness with which the EU Court of Justice asserted in Cofemel – and later implicitly reiterated in the Brompton decision – that all objects, including industrial design products, that meet the two conditions required to qualify as “works” must benefit from copyright protection, seems to leave little room for doubt. Although the Court of Justice ultimately avoided addressing the direct question, its reasoning strongly suggests that the imposition of an additional requirement, such as “artistic value”, is incompatible with EU law and should therefore be disregarded by national courts.

In the aftermath of the Cofemel ruling, questions arose – both domestically and in foreign legal circles, where the Italian rule making design copyright protection conditional on “artistic value” is often seen as an anomaly within the European framework – about how Italian case law would respond. Would Italian courts recognise that the “artistic value” requirement had effectively been invalidated by the Court of Justice? If so, would this lead to a significant lowering of the threshold for design works to qualify for copyright protection? Or would the courts, perhaps by emphasising the “originality” requirement and drawing on reasoning previously associated with “artistic value”, continue to apply a particularly rigorous selection criterion? In a nutshell, the debate revolved around whether this development would mark a genuine legal revolution or merely a subtle continuation of the status quo – a kind of legal “cat-and-mouse” game.

As influential as the scholars’ opinions may be, the decisive words rest with the (Italian/EU) courts. But those words have been far less straightforward than scholars had hoped.

For instance, by decision No 8433/2020, concerning the layout of a cosmetics concept store, the Italian Supreme Court explicitly cited Cofemel. However, the case involved a work categorised as architectural and protected under Article 2.5 of the Italian Copyright Law, which does not require proof of “artistic value”. Consequently, the Supreme Court did not directly address the implications of Cofemel on the “artistic value” requirement under Article 2.10 of the Italian Copyright Law. Notably, the only explicit mention of “artistic value” in the decision is an incidental statement suggesting that, in principle, the individual elements of the cosmetics concept store could be protected as works of industrial design, “provided that they have an actual ‘artistic value’”. As if Cofemel had no bearing on the issue.

A similar lack of engagement with Cofemel is evident in several subsequent decisions specifically concerning works of industrial design.

In the Tecnica v Chiara Ferragni case (21 January 2021), which again addressed the copyright protection of the iconic “Moon Boots”, the Court of Milan granted copyright protection based on the “artistic value” of the boots, assuming without question that “artistic value” remained a valid requirement for protecting works of industrial design.

The same approach was followed in a decision regarding a lamp designed by the seminal designers Achille and Piergiacomo Castiglioni. By a ruling of 15 February 2021, the Court of Milan recognised the “artistic value” of the lamp and granted copyright protection, once again without considering or discussing the potential impact of Cofemel on the case.

Other decisions, however, have demonstrated, on the one hand, an awareness of the Cofemel ruling, but on the other hand, caution in drawing interpretative conclusions from it. For instance, by the decision of 19 April 2021, the Court of Milan stated that it considered it necessary “to refer the matter to the Court of Justice to allow an express assessment of the compatibility of the national provision in Article 2.10 of the Italian Copyright Law with the EU legal framework” (it does not appear that the matter was ultimately referred to the Court of Justice).

Similarly, in an order issued on 5 July 2021, the Court of Milan declared that it was “not yet in a position to draw definitive conclusions regarding the consequences that this ruling might have on the issue of the compatibility of the national provision with EU law”. The court also observed that “domestic case law... can still guide interpreters in identifying the originality requirement, as indicated by the European Court, even though the criteria identified in such case law were originally developed to support the ‘artistic value’ requirement”.

In other decisions, case law has instead focused on the requirement of “creative character”, explicitly stating that it would “set aside the question of whether the additional requirement of artistic value still applies following the well-known Cofemel ruling by the EU Court of Justice”.

In this uncertain context, it is worth noting that, in a recent judgment (No 11413/2024), the Italian Supreme Court observed – albeit incidentally, as the question was deemed irrelevant to the resolution of that case – that “regarding the reference to the artistic-creative value of the setup, it is true, as the appellant argues, that such a requirement is not mandated by the position of the CJEU. In the aforementioned 2019 judgment (Cofemel, ed.) – whose principles were reaffirmed in the subsequent ruling of June 11, 2020 (Brompton, ed.) – the CJEU considered the requirements of originality and individuality sufficient for copyright protection. In this regard, there is a contrast with the jurisprudence of the Supreme Court, which instead requires an additional element (a quid pluris) consisting in the artistic value of the work”.

The possible impact of the recent EU Design Reform

If the 2024 decision of the Italian Supreme Court just mentioned above seems to signal an (incidental, but significant) acknowledgement of case law on the incompatibility of the “artistic value” requirement with EU law, the recent Directive (EU) 2024/2823 and Regulation (EU) 2024/2822, issued in November 2024, may deliver a definitive blow in affirming this position.

The new Directive amended Article 17 of the old Directive, which, as noted above, expressly granted member states the freedom to determine the extent to which, and the conditions under which, copyright protection is conferred on works of industrial design, including the required level of originality. This explicit attribution of discretion is no longer present. Instead, Directive (EU) 2024/2823 (see Article 23) simply states that “a design protected by a design right registered in or in respect of a Member State… shall also be eligible for protection by copyright… provided that the requirements of copyright are met”. Article 96 of Regulation 6/2001 has also been modified accordingly by Regulation (EU) 2024/2822.

These amendments seem to remove the primary legal basis that supported the argument that, despite the Cofemel ruling, the “artistic value” requirement could still be considered compatible with EU law. Whether this truly marks the end of the “endless story” outlined here remains to be seen, however.