Article 17 of Directive 98/71 on the legal protection of designs ([1998] OJ L289/28) provides that a design protected by a design right registered in or in respect of a Member State in accordance with the Directive shall also be eligible for protection under the law of copyright of that state as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State. Member States were required to implement Directive 98/71 by October 28, 2001, at the latest. It was implemented in Italy as from April 19, 2001.
Flos brought proceedings against Semeraro before the Tribunale di Milano (Milan district court) complaining that Semeraro had imported from China and marketed in Italy a lamp called the “Fluida” lamp, which, in its submission, imitated all the stylistic and aesthetic features of the “Arco” lamp, an industrial design in which Flos claimed to hold the property rights. In interim proceedings, it was found that the Arco lamp, which was created in 1962 and entered the public domain before April 19, 2001, was eligible for copyright protection as an industrial design under Italian law, and that the lamp imported by Semeraro “slavishly imitated all [its] stylistic and aesthetic features”.
As regards the proceedings on the substance, the referring court stated that, since the proceedings were commenced, legislative amendments had been made concerning copyright protection for industrial designs and that some doubt arose as to their conformity with Directive 98/71 and, more specifically, with art.17 of that Directive. In particular, that court referred to art.239 of the Industrial Property Code, as amended in February 2007, which provided that the protection conferred on industrial designs under the Italian Law on copyright and related rights was not enforceable as against products based on designs that were in, or had entered into, the public domain prior to the entry into force, on April 19, 2001, of the Legislative Decree implementing Directive 98/71.