Brussels, 01/02/2011 (Agence Europe) - In Ruling C-168/09 issued on 27 January 2011, the European Court of Justice says that Italian law withdrawing copyright protection from designs and models already registered in member state but which had fallen into the public domain before the copyright legislation came into force, although otherwise meeting the criteria for benefitting from copyright protection, runs counter to EU law. The Court of Justice states that copyright applies in respect of any third party manufacturing or selling products made with said designs and models in that country, irrespective of when the acts were passed.
The ruling was issued in response to legal questions posed by Milan Tribunal, which is hearing a dispute between a designer lighting company, Flos SpA, which appealed against another Italian company, Semeraro Casa e Famiglia SpA, for importing and selling lighting in Italy that Flos says imitates the style and aesthetics of the Arco lamp over which Flos feels it has copyright. The Milan court asked about the scope of EU Directive 93/98/EEC on harmonisation of the duration of copyright in terms of how long such protection lasted and how widespread it should be.
The ruling covers the applicability of copyright when designs and models are in the public domain and are no longer covered by copyright before copyright legislation providing protection was introduced in the country in question either because they were never registered as such or because copyright protection had ceased to be operative, although in all other respects the designs and models met the conditions to be eligible for such protection. The Milan court considered two options - designs and models were in the public domain because they were never registered for copyright; and designs and models that have fallen into the public domain because copyright has run out.
The European Court of Justice says that the first case is not covered by the EU directive, even though copyright protection of designs and models could be granted by other intellectual property directives (like Directive 2001/29). For the second case, the Court of Justice says the directive stipulates that a design or model registered in or for a member state is granted legal protection by copyright law in that country from the date when the design or model was created or set in a particular format. Likewise, although it allows member states to decide on the scope and criteria for the granting of copyright, it does not give member states the choice of whether to grant copyright protection or not for a design or model registered in or for another member state if that design or model meets the criteria set in that country for copyright registration.
Moreover, member states' ability to decide on the scope and criteria for the granting of copyright cannot govern the duration of copyright because this was harmonised in the European Union by EU Directive 93/98.
Finally, on whether the directive applies to third parties (the Semeraro company) which claim to be acting in good faith under national legislation, the Court of Justice says that when it comes to the applicability of copyright to designs and models, EU Directive 98/71 does not contain any explicit provision on applicability in time, in protecting acquired rights and the legitimate expectations of third parties. Copyright therefore applies to all these elements and is enforceable against third parties. (F.G./transl.fl)