Italian Supreme Court applies CJEU Cofemel decision to makeup store layout

A KIKO store

A couple of years ago, The IPKat reported on the interesting decision of the Court of Appeal of Milan in a case concerning, inter alia, copyright protection of makeup producer and retailer KIKO's store layout under Italian law.

The ruling, which upheld the decision at first instance, confirmed that the layout of KIKO concept stores – notably the way in which the various elements used to furnish such stores are combined, coordinated and assembled – is eligible for protection under Article 2 No 5 of the Italian Copyright Act as as an architectural plan. It also found that defendant WYCON’s stores had infringed copyright in it.

Now, the Italian Supreme Court has confirmed the appropriateness of this conclusion [this court is not a court on the merits, and may only be seized on issues concerning the correct interpretation of the law] in a decision published earlier this week (decision 780/2020).

Of the twelve grounds of appeal filed by WYCON, one is particularly interesting and deserving of attention, as it allowed the Supreme Court to assess – in what appears to be the first opportunity for the highest Italian court to do so – the implications of the recent decision of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [Katpost here].

The CJEU Cofemel ruling

As readers will remember, in that seminal ruling, the CJEU held that copyright in a design would only arise subject to the design at issue being original. In so doing, the EU court confirmed what had been in the air during the previous decade of CJEU case law, ie that the only requirements for copyright protection are:

1. a work, in the sense clarified in Levola Hengelo, C-310/17 [Katpost here] of – I add (though the CJEU has yet to be asked who/what an authors is under EU law) – authorship, which is
2. sufficiently original, in the sense progressively clarified through a string of decisions, starting with the 2009 decision in Infopaq, C-5/08 [10-year anniversary Katpost here].

Protection of a store layout: copyright or design?

Both at first instance and on appeal, the KIKO store layout had been qualified as an architectural work consisting of a “successful and creative combination” of various elements. However, WYCON had submitted that the architectural plan at issue would not be fully defined in all its formal expressive aspects: rather, it would be a basic indication – subject to variations - of the way in which the various objects should be placed within the individual stores.

The Supreme Court noted that, while ideas are not protectable per se, the decision on appeal had correctly interpreted the law and found that the plan did not consist of a series of “abstract indications”. Rather, the plan had a specific expressive form which included “a series of elements, whose choice, coordination and organization displayed the required creative character.”

WYCON had also submitted that that the Court of Appeal had incorrectly qualified the KIKO concept store layout as a work of architecture. Instead, it should have assessed its protectability as a design under Article 2, No 10 of the Italian Copyright Act.

Whilst Italian copyright law envisages an open-ended list of protectable subject-matter, traditionally – as it was has been the case, at least pre-Cofemel, in several other EU Member States – designs have been held eligible for copyright protection subject to fulfilling an ‘artistic value’ requirement that would go beyond the originality of the object at issue.

A WYCON store

Qualification of a store layout as an architectural work

The Supreme Court noted that – from Cofemel – it descends that, whilst copyright and design protection can subsist simultaneously, they also pursue different objectives and are subjected to different requirements. Hence:

The EU Court has thus confirmed that the subsistence of originality as required under copyright, that is the subsistence of a well-defined and creative expressive form, which reflects the free choices and personality of its author, does not also imply that it produces a visually relevant effect from an aesthetic standpoint, as it is instead required for protection as a design. [my own translation from Italian] 

From all this the Italian Supreme Court derived the following legal principle:

An interior design plan or work, which reflects a unitary project that adopts a well-defined and visually relevant scheme displaying a clear ‘stylistic key’, concerning individual elements that are organized and coordinated to render a certain environment functional and harmonic, that is [something that reflects] the personal touch of the author, is protectable as an architectural work, in accordance with Article 5 No 2 of the Italian Copyright Act[. It is] irrelevant whether such elements are necessarily part of a building or the individual furnishing elements are simple, common or have been already employed in the interior design sector, as long as [the project] results from an original combination, which is not imposed by choices of the author aimed at solving a technical-functional problem. [my own translation from Italian]

To be protectable by copyright, an architectural plan or work needs to be

always identifiable and recognizable from the point of view of its formal expression as an author’s own unitary work, which consists of precise choices concerning the composition of the various elements (eg, the colours of the walls, particular lighting effects, the consistent repetition of decorative elements, the use of certain materials, the size and proportions). Indeed, any exclusive rights vest in the overall combination [of the various elements], the unitary work of space organization, the combined use of the various furnishing elements in accordance with a unitary organizational plan. [my own translation from Italian]

Mirror, mirror on the wall,
who's the fairest of them all?

Relevance of the ruling: copyright and rights cumulation

The Supreme Court's decision is equally important under Italian and EU copyright law.

Starting with the former, it brings clarity regarding the requirements of protection for works, like architectural ones, which result from creative and functional considerations and choices alike.

Turning to the latter, the judgment confirms a reading of the CJEU Cofemel ruling which is in line with the first national application thereof, that is the English Intellectual Property Enterprise Court (IPEC) decision in Response Clothing [commented on The IPKat here].

In addition, the KIKO judgment also contains valuable remarks regarding cumulation of IP rights, notably trade marks and copyright.

The Supreme Court recalled in fact that the CJEU had acknowledged – in Apple, C-421/13 [IPKat post here] – that a store layout could be in principle registered as a trade mark insofar as it possesses distinctive character.

In 2016, the EUIPO First Board of Appeal confirmed refusal to register KIKO store layout as a trade mark due to lack of distinctive character.

According to the Supreme Court, all this should not be relevant to determine copyright subsistence, as the requirement of distinctive character under trade mark is different and is assessed differently from that of originality under copyright law.

This conclusion, which appears both appropriate and correct, is also in line with the position of the CJEU itself. It is sufficient to recall that, only a few days ago, in its important judgment in Gömböc, C-237/19 [IPKats posts here and here], the CJEU held that each IP right has its own subsistence requirements and the analysis required to determine protection under one right is different from that mandated under other rights. The EU court considered that, whilst prior IP protection is not irrelevant, it should not lead to the "systematic" conclusion that an object cannot be protected by other IP rights because of that. 

Mutatis mutandis, in the KIKO case, the Italian Supreme Court made it clear that prior refusal to protect the KIKO store layout by means of a trade mark would not exclude protection of the same under copyright.