In a recent judgement, that has IP jurists analyzing the copyright and design overlap, Italian Court (Turin) has made its stand that copyright subsists in an industrial design. The Court of Appeal of Turin (Italy) has held that the design of Vespa Scooter cannot be reproduced and/or commercialized in Italy, by third parties.
This puts to rest a case that begun in 2013 during the EICMA motorcycle show at Milan. The case began with the police seizing 11 scooters from 7 different exhibitors that had copied the shape of the Vespa scooter, citing a three-dimensional trademark registered by Piaggio (a trademark that protects the Vespa shape.) Piaggio obtained said seizure during the Milan fair; this seizure was of scooters manufactured by two Chinese companies.
Post the seizure, the 2 Chinese companies (the Plaintiff's) filed an action requesting the Court of Turin to declare that their scooters did not infringe Piaggio's rights and that the 3D mark was invalid due to:
1. lack of novelty, being anticipated by the Plantiffs' models,
2. lack of distinctive character and
3. infringement of article 9 of the Italian IP Code under which no signs shall be registered as trademarks if they consist solely of the shape dictated by the nature of the product, the shape of the product necessary to obtain a technical result, or the shape that gives substantial value to the product.1
The uniqueness and novelty of Vespa was upheld (post a technical expert opinion) and further it was iterated that no one is authorized to reproduce its features for other products. This ruling by the Court of Turin has, by doing so, recognized that the three dimensional mark of Vespa is safeguarded.
This judgment has upheld the distinctive character and hence the validity of trademark rights stemming from the creative character and artistic value of the Vespa in its three dimensional form, which is capable of distinguishing it from other scooters. The production of Vespa dates back to the year 1946.
"One of the companies involved in the seizure, China's Taizhou Zhongneng, in reply to provisional measure obtained by the Italian company, began legal proceedings against Piaggio in Turin, claiming the invalidation of the trademark constituted by the scooter's three-dimensional shape. Piaggio on the contrary claimed the infringement of the 3D trademark and infringement of the copyright.2"
Although, the Court of Turin held that, the Vespa scooter itself is a work of industrial design protected by copyright laws in Italy, hence no copy of the same can be commercialized in Italy. Not only the current model, but all its variations and models from 1948 onwards will not be reproduced.
Further it was upheld unequivocally by the Italian Court on the ground that the Vespa model, born as an industrial design, has received so many acknowledgments in the artistic field and has become such a popular and unmistakable Italian style and culture icon that is shall be deemed to have both creative character and artistic value, hence being covered by copyright.3
Italian Copyright Laws state that "works of the mind having a creative character and belonging to literature, music, figurative arts, architecture, theatre or cinematography, whatever their mode or form of expression, shall be protected ..."4 This goes to show that the Italian courts conformed the design of Vespa to the ambit of the above definition. Similar to this definition, Article 2(10) of the Italian Copyright Statute, the protection of copyright exists to industrial designs which themselves have creative value. Although the terms "work of art" and "artistic work" have been used under the Italian copyright laws, they haven't been provided with an exhaustive definition under law and hence is open to liberal interpretation which led to the astounding judgment in the Vespa case.
Whereas, under Indian copyright laws, there exists provisions that excludes copyright protection from the ambit of industrial design and vice versa. Section 15 of the Copyright Act, 1957 clearly restricts the extent of copyright protection for a design capable of protection under the Design Act, 2000 to a mere period till the design is applied to 50 articles using industrial process, post which the protection under the copyright laws for that design is exhausted and the design can only hold protection under the Design Act, 2000.
The rationale of the Indian laws for such provisions is to limit dual protection of a single work. Although, this does leave a grey area for copyrightable work that remain unprotected irrespective of them being capable of holding copyright protection under the copyright regime in India. The Vespa case can be taken as an harmonious example of how copyright and design law can function together to afford a higher brand of protection for work that innately have artistic value or can be qualified as work of art especially for fields that rely upon protection under both the laws such as the fashion industry or those industries that are design intensive.
Although Article 2(10) of the Italian Copyright Statute is a much straightforward inclusion of copyright protection for designs, Indian copyright laws have the same inclusion all be it with some limitations specific only to copyright under design laws. This can be understood from the bare reading of Section 10 of Designs Act, 2000, which states that "When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration." This provision at first seems contradictory to Section 15 of the Copyright Act, 1957 as discussed above but it is distinctively different in the sense that Section 15 restricts copyright protection on works of design that are capable of design registration but has not been so registered. Whereas, Section 10 of Designs Act, 2000 state that a copyright in a work of design shall subsist for 10 years and may be extended for additional 5 years, post registration.
These provisions are very different when it comes to the actual application of the protection under respective legislations. Where a work is capable and registered under the Designs Act 2000 then the copyright in such design will exists for a period of maximum 15 years (10 + 5 years) whereas, if the designs are protected under the Copyright Act 1957 then the registration will extend for lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies, however, this protection is subject to the following conditions:
1. Design not registered under Designs Act 2000
2. Any article to which the design has been applied has not been reproduced more than fifty times by an industrial process.
Hence, it can be said that both Italian laws and Indian laws provide for copyright protection to registered designs. However, the language of the Indian legislation makes it easy to understand the difference of the overlap and the protection term under respective Acts, i.e. Designs Act 2000 and the Copyright Act 1957.
Through the above analysis, it can be concluded that in a work of design, irrespective of its registration, the copyright subsists, however the registration of the design under the respective legislation determines the term of protection of the copyright in design.
1 Kluwer Trademark Blog, :April 22nd, 2017: available at: http://trademarkblog.kluweriplaw.com/2017/04/22/the-artistic-vespa-2/?print=pdf
2 Don't copy the Italian- Silvia Capraro: Available at: https://www.lexology.com/library/detail.aspx?g=fca86f26-cdca-449f-81b4-26245b971618
3 Chiara Marchisotti and Lydia Mendola, Turin Court Upholds Vespa's 3d Trademark, available at http://www.portolano.it/en/2017/06/turin-court-upholds-vespas-3d-trademark-2/
4 Italian Copyright Statute (Last Amendment 2003): Article 1.
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