Chiara Ferragni’s Snow Boots infringe the copyright on the iconic Moon Boots by Tecnica Group, as the Court of Milan reiterates the latter’s “artistic value.”
With its decision of January 21, 2021 (the “Decision”), the Court of Milan once again deemed the après-ski footwear model Moon Boots to be a work of industrial design pursuant to Art. 2(1)(10) of Law No. 633/1941 (the “Copyright Law”).
The ruling was issued in the context of full proceedings brought by the owner of the rights to the Moon Boots, Tecnica Group S.p.a. (the “Plaintiff”), against companies that manufactured, promoted, and distributed an après-ski footwear model labeled Snow Boots by Chiara Ferragni, the well-known Italian influencer (jointly, the “Defendants”).
Background
In 2018, the Plaintiff challenged the Defendants for manufacturing and marketing two footwear models that, with a few differences, reproduced the shape of the Moon Boots. On that occasion, the Plaintiff and (some of) the Defendants entered into a settlement agreement, under which (some of) the Defendants agreed not to manufacture and market the disputed models anymore (the “Settlement Agreement”).
Despite that, the Plaintiff found that the Defendants kept on manufacturing similar footwear models, thus substantially infringing the obligations undertaken with the Settlement Agreement.
Therefore, the Plaintiff initiated legal proceedings, claiming that the Defendants infringed its copyright on the Moon Boots and committed acts of unfair competition.
The “artistic value” requirement for designs to be eligible for copyright protection
Under Italian law, copyright belongs to the author of a creative work from the moment of its creation, and copyright is not subject to any obligation in terms of filings, registrations, applications, or other formalities. Therefore, a party that claims copyright infringement must in the first place be able to prove the existence and ownership of copyright to the allegedly infringed work.
In general, the only requirement for intellectual works to be eligible for copyright protection in Italy is their creative nature—that is, their originality (i.e., the works are the manifestation of the author’s intellectual labor) and novelty (i.e., there must not be prior art with the same essential features—to this point, firmly established case law states that a minimum degree of creativity is sufficient to fulfill the originality requirement).
However, specifically with regard to works of “industrial design,” Art. 2(1)(10) of the Copyright Law imposes a special additional requirement, i.e., that the work be endowed with “artistic value.”
According to the case law of the Supreme Court of Cassation, any assessment of a design model’s “artistic value” shall be based on objective criteria, meaning that the alleged author shall give evidence of some —not necessarily concurrent—circumstances indicating that value, e.g., that “cultural and institutional circles have recognized the work’s aesthetic and artistic qualities, that the work has been displayed in exhibitions or museums, that it has been published in specialized magazines, that it won prizes, that it acquired a market value so high as to transcend the value linked only to its functionality, that the work has been created by a well-known artist.”[1] (our translation).
Therefore, as a matter of fact, under Italian law copyright protection of industrial designs is reserved for those that qualify as “top tier,” “iconic” models whose artistic value has been widely recognized: for instance, recently copyright protection has been acknowledged for designs like the Ferrari 250 GTO, one of the most famous Italian car models of all time,[2] and the Vespa by Piaggio, a true symbol of the Italian dolce vita.[3]
The artistic value of the Moon Boots
With the Decision, the Court of Milan reiterated and fully upheld the reasoning set forth in its prior decision issued on July 12, 2016 regarding—like the case at hand—the infringement of the copyright on Moon Boots.
According to the Court, “[S]ince the judge cannot arrogate to himself the task of establishing the existence or lack of artistic value in a given work, it is necessary to detect, in the most objective way possible, the perception that a given work of design may have established itself firmly in the community and, even more importantly, in cultural circles in the broadest sense […].”(our translation).
Therefore, the court stressed that in practical terms assessing the artistic quality of a design work involves considering any widespread recognition expressed by a variety of cultural institutions about the work’s position within artistic movements or, in any case, “the author’s ability to interpret the spirit of the time, even beyond their own intentions and awareness […].” (our translation).
As a consequence, when assessing whether a design is eligible for copyright protection, the judge does not (and cannot) “attribute” artistic value to the work by means of an ex post operation. Rather, the judge shall assess whether, in light of the established relevance of the work, it has become iconic.
Thus, as already determined in 2016, the Court of Milan ruled that the Moon Boots are endowed with artistic value and, therefore, are eligible to access copyright protection.
The comparative test between the Moon Boots and the Snow Boots
According to the Defendants, in any case, the Snow Boots cannot be considered a counterfeit version of the Moon Boots due to their being characterized by a particular glittery coloring and by the presence of a logo consisting of a large eye with long eyelashes.
However, the Court of Milan stated that, as has been clarified by the Supreme Court of Cassation,[4] for the purposes of a comparative test between the original work and the allegedly counterfeit item, it is not relevant whether the public is confused by the two works, nor whether the alleged counterfeiter made minor changes to the original work. The only thing that matters is the unlawful reproduction of the original work “even if [such reproduction has been] camouflaged in such a way as not to make the original work immediately recognizable.” (our translation).
Considering the above, the court found that the footwear models of the Defendants were a counterfeit of those whose copyright is held by the Plaintiff because, as visual comparison shows, they reproduced all of the feature elements of the Moon Boots. The Decision points out that the glittery coloring of the Snow Boots by Ms. Ferragni, as well as the presence of a logo, are details that do not exclude infringement of the original work. The Court dismissed the unfair competition claims on factual grounds because they appeared to coincide with the counterfeiting conduct that had already been ascertained and did not include additional information that would have allowed them to move forward as claims distinct from the copyright infringement.
Finally, the Court of Milan also ruled that the Defendants infringed their obligations under the Settlement Agreement.
Conclusions
The Decision is consistent with recent case law of Italian courts on copyright protection of design. However, in light of the latest decision on copyright protection of designs issued by the Court of Justice of the European Union (the “CJEU”), it may not be exactly what some would have expected.
Indeed, with a ruling issued on September 12, 2019 in Cofemel, C-683/17,[5] the CJEU ruled that—pursuant to directive EC/2001/29, implemented by the Italian provisions related to copyright protection of designs—on the one hand the only condition for a design to be eligible for copyright protection is its originality, and it shall not be subject to further scrutiny—meaning that it need not have any artistic value to access copyright protection—while, on the other hand, the mere fact that it may generate a visual impact from an aesthetic perspective is not per se relevant in the assessment of its nature as a creative work, that is, of its originality.
Following the CJEU’s Cofemel decision, according to many Italian commentators a change of approach to the criteria to rely on when assessing a design’s artistic value should be implemented by Italian case law.
As the Decision demonstrates, this is not happening: as of today, Italian courts still require the party claiming copyright protection over a work of industrial design to provide evidence of (at least) some of the circumstances set forth by the Supreme Court of Cassation in 2015.
[1] See Court of Cassation, decision No. 23292/2015.
[2] See Court of Bologna, decision of June 20, 2019 . We wrote about this decision here.
[3] See Court of Turin, decision No. 1900/2017.
[4] See Court of Cassation, decision No. 98541/2012.
[5] We wrote about this decision here.
