Criminal law, Industrial property, works of industrial design, industrial products, informed user, Court of Cassation, III Criminal Section, Judgment n. 2402 of 22/01/2018

Essential lines of the arguments of the Supreme Court of Cassation

Appeal against the sentence of the Court of Appeal of LECCE, Sec. Dist. TARANTO on 21/11/2016.

The following principle of law must be affirmed: “The crime of manufacture and trade of goods made by usurping industrial property rights is also integrated in the case of industrial design works intended for serial production, which are protected under the art. 2, n. 10, of the law n. 633 of 1941, where the normatively indicated conditions occur, given the creative character and the artistic content of the work (This case concerns the question of the authoritative protection of models of the serial production of … SpA, in which the Court considered correctly integrated the offense referred to in Article 517-ter of the Criminal Code, noting that the characteristic of the works referred to in Article 2 (10) is based on the fact that they, unlike the figurative ones, fall within the category referred to in paragraph 4 of the same Article 2, find their collocation in the design phase of an object destined to a serial production, such as the industrial one) “.

BELIEVED IN FACT

1. With a judgment of 21.11.2016, filed on 20.02.2017, the Court of Appeal of Lecce, sect. dist. Taranto, in partial reform of the sentence of the GUP / court of Taranto of 11.07.2014, appealed by … …., by P.G. and from the … .S.p.A., in declaring inadmissible the appeal proposed by Fr. as regards the crime referred to in Articles 110, 81, 474, 474 – ter, c.p. challenged in point a), declared the defendant guilty of the crime referred to in art. 517-ter c.p. for having introduced into the State, being able to know the title of industrial property in order to profit, industrial products made by usurping the title of industrial property and in violation of the same, condemning the same to the penalty of …. of imprisonment and … of a fine, as well as compensation for damage in favor of the aforementioned decree and to the court costs of both levels of judgment, in relation to facts contested as committed until 12.04.2011, according to the executive and spatial – temporal modalities best described in the indictment.

2. Against the aforesaid judgment, the defendant appealed to the defendant through the defense counsel, also appointed as special attorney, registered in the special register pursuant to art. 613 cod. proc. Pen., by deducting three reasons, hereafter stated within the limits strictly necessary for the motivation ex art. 173 available att. cod. proc. pen.

2.1. Deduces, with the first reason, the defect referred to in art. 606, lett. b) and c), c.p.p., in terms of the violation of the law in relation to art. 517-ter c.p. and a related defect of misrepresentation of the proof determined by the gross and apodictic methodological error related to the comparison technique of counterfeiting and to the reconstruction of the figure of the informed user.

In short, the appellant claims, after recalling that in the matter under examination, the standard for the protection of national models is a harmonized standard with the regulation provided by the EU regulation governing the registered EU model, notes that the expert appointed in the first judgment degree … .. would have correctly used the same model of analysis as EUIPO, the European Union Intellectual Property Office which issues international model titles, as regards the appearance of a product, intended as a form, motives and colors (in the application there is an excerpt of the expertise …., claiming that the expert’s opinion would concern not only the product examined, that is a bunny, but also the other products seized); the modus procedendi of the expert, it should be noted, would be in line with the model followed by the EUIPO, recalling by way of example an annulment decision dated 1.03.2010 of the aforementioned Patent Office in relation to two models (reproducing a chair), the naked eye, but different according to the model granting law; the same applicant, passing then to illustrate the figure of the c.d. informed user, refers to the guidelines laid down by the CJEU, which clarified the concept in the context of a proceeding (C-281/10 P) on a Community design showing metal or plastic disks intended for children’s play; the EU Court of Justice would have taken the opportunity to clarify some concepts of the EC regulation n. 6/2002 on the community designer, overlapping with the Italian harmonized standard on the subject of a registered model; moving from the notion of informed user, fundamental in the assessment of the requisites of registrability of a design, the CJEU clarified that it is an intermediate notion between that of average consumer and that of competent person on the subject, having to be understood by a user informed a user provided not with medium attention, but with a particular diligence, regardless of whether the latter is due to his personal experience or to his in-depth knowledge of the sector in question; this figure, states the CJEU, without being a designer or a technical expert, knows several designs or models existing in the reference sector, has a certain degree of knowledge as to the elements that these designs or models normally involve, and, due of his interest in the products in question, as proof of a relatively high degree of attention when using them; in the present case, the appellant, the expert … allegedly adhered to that guideline of the CJEU as regards the concept of informed user, referring in this regard to the appeal an extract of the expert’s report describing the figure in corresponding to the aforementioned guidelines, highlighting how the target market for the products discussed is very crowded.

2.2. Deduce, with the second reason, the defect referred to in art. 606, lett. b), c.p.p., in terms of violation of the law in relation to art. 517-ter c.p. as to the wrong assumption of the existence of copyright in the models … as well as in the matter of copyright when it is recognized to the objects …. artistic value.

In short, the applicant claims – after recalling that the protection provided by copyright is not a registered industrial property, governed by the industrial property code, and does not provide for constitutive formalities unlike industrial property rights, the violation of . 171 and ss. L. n. 633 of 1941 – which would not be legally founded as supported by … about the changeability of protection of their works, both pursuant to art. 2, n. 4, law n. 633 of 1941 as works of sculpture, both pursuant to art. 2, n. 10, cited law, as works of industrial design; one observes, as regards the first rule referred to above, that being the production of industrial objects, the same creations can not be considered works of sculpture; as for the second norm mentioned, it is recalled that protection is reserved for works of industrial design which in themselves have a creative and artistic value; in this case, it would lack in the products … the artistic value, that is the consideration, on the aesthetic and artistic level, that the work enjoys at the public or at cultural and institutional environments regardless of the pleasantness of the form and the functionality of the object; under this profile, it is claimed in this respect that the articles … do not have artistic value, not having received recognition from bodies responsible for protecting works of art, or from cultural environments, even if the characteristics of the creations … are represented by the features rounded sinuous and rounded, dreamy-looking.

2.3. Deduce, with the third reason, the defect referred to in art. 606, lett. c), p.p.p., from the point of view (as shown by the content of the plea, not having indicated the violated standard), of the violation of the law in relation to art. 648 of the Italian Criminal Code, for violation of the principle of the sentence formed following the withdrawal of the appeal by P.G. in relation to the crime sub a).

In short, he claims – after recalling that the defendant had originally been challenged the crime referred to in art. 474 and 474-ter c.p. (chapter a) and that referred to in art. 517 c.p. – ter (chapter b) – that the acquittal due to the absence of the event for the offense referred to in point a) would preclude the adoption of a sentence of conviction for the head b), also taking into account the jurisprudence of this Court that has always considered the relationship between the aforementioned criminal offenses as being subsidiary; the procedural fact of the renunciation of the appeal by the court in the hearing in relation to chapter a) would not be meaningless, making that part of the sentence in favor of the defendant become res judicata; recalling to this end the provisions of art. 648 of the Code of Criminal Procedure, the petitioner argues that the rigorous prohibition of instituting a new criminal procedure for the facts subject to irrevocable assessment is opposed to the capacity of the thing judged to be in relation to other proceedings that relate to regiudicande more or less coincident with that defined ; in the case in question, the resident would be in favor of the claimant that the fact does not exist and that therefore there is a lack of the objective element of the crime, common to both charges; in the final analysis, it would operate the force of the internal substantial judgment which, unlike the formal one, refers to the substantial protected situation that is the object of the process; therefore, from a logical-juridical point of view, it was not possible for judges to appeal for the sentence b), for the irrevocability of the sentence on the offense a) due to the fact that the objective elements would be common to both the indictments formulated by the PM.

CONSIDERED IN LAW

3. The appeal is unfounded and must be rejected as a whole.

4. Following the order suggested by the structure of the appeal proposed in the legitimacy, it is necessary to move from the first motive, with which the appellant carries out complaints with which it evokes a defect of violation of the law in relation to the art. 517-ter c.p. and a related defect of misrepresentation of the proof determined by the gross and apodictic methodological error related to the comparison technique of counterfeiting and to the reconstruction of the figure of the informed user.

The reason is inadmissible for generality. The applicant, in fact, is limited to supporting the correctness of the evaluation procedure followed by the expert …. (whose report had been shared by the first judge in order to arrive at an absolutory judgment for the crime in question) in order to answer the question whether the products … could or could not enjoy the protection provided by art. 2, n. 10, law n. 633 of 1941, and to recall a decision of the CJEU regarding the notion of “informed user”, without taking into account the widespread and articulated argumentative path of the Court of Lecce, which promptly refuted the liberating arguments of the first judge and highlighted the methodological errors committed by the expert appointed to answer the question. The appeal proposed here, therefore, lacking the indispensable requirement of specificity, is not explicitly stated and argued critical findings with respect to the factual or legal reasons underlying the contested decision, whence the principle applies, authoritatively – filed by the SSUU, according to which the appeal, like the appeal by cassation, is inadmissible due to lack of specificity of the grounds when the critical findings regarding the factual or legal reasons of the contested decision are not explicitly stated and argued , without prejudice to the fact that this specific charge, borne by the appellant, is directly proportional to the specificity with which the aforementioned reasons have been set out in the contested provision (Section U, Judgment No. 8825 of 27/10/2016 – dep. / 02/2017, Galtelli, Rv. 268822).

And, in the case in question, the analytical presentation of the reasons for which it was not possible to share the acquittal with which the first judge had arrived and of the errors committed by the expert …. excluding the protection of the products of … made the reasons set out in the contested provision absolutely specific.

5. On the contrary, it must be considered with reference to the second ground of appeal, which the Board deems unfounded and, for this reason, to be rejected. With this reason, the plaintiff denounces a breach of the law in relation to art. 517-ter c.p. as to the wrong assumption of the existence of copyright in the models … as well as in the matter of copyright when it is recognized to the objects …. artistic value.

The reason – with the limits mentioned above to justify its non-manifest groundlessness – partially participates in the same grounds of inadmissibility of the first plea, since the applicant does not take into account the precise arguments, correct both from a legal and an argumentative point of view, with to which the Court of Appeal recognizes not only the protection of copyright for works … that their artistic value pursuant to art. 2, n. 10, law n. 633 of 1941, as works of industrial design. In this regard, the principle according to which the appeal by cassation based on non-specific reasons, ie generic and indeterminate, which reiterate the same reasons already examined and deemed to be unfounded by the judge of the encumbrance or which lack the necessary correlation between the arguments put forward by the contested decision and those set at the basis of the appeal (Section 4, No. 18826 of 09/02/2012 – Dep. 16/05/2012, Pezzo, Rv. 253849).

However, as anticipated, the complaints, on this point, are to be considered totally unfounded, given that the appeal judges clarify (page 9), that the models of three-dimensional figurines of … (depicting characters, animals and objects), is the distinctiveness and immediate connectability in the perception of consumers, to the same … has been recognized, due to the unmistakable style and a recognized quality both with reference to materials and colors, and to the rounded and sinuous lines that characterize the shape and which give the product that characteristic “dream” aspect linked to dreams and memories of childhood.

The above, adds the Court of Appeal, is confirmed precisely in the jurisprudence of the sections on industrial and intellectual property (referred to on pages 9/10 of the contested judgment, here fully understood as transcribed), which has recognized … the characteristics of the novelty (not being identifiable on the market, before their conception, similar products) and of the individuality placed that in all the models and regardless of the represented subject, it is possible to grasp a peculiar and unique mark that leads back to the collection …. The same jurisprudence has therefore correctly framed the stickers, in the category referred to in art. 2, n. 10, law n. 633 of 1941 (as “works of industrial design that in themselves have a creative and artistic value”), for the particular innovative value given to the use of rounded shapes, dreamy appearance, joyful and smiling expression that infuses good mood and serenity, characters that give them an unmistakable style. It is therefore beyond doubt that the recognition of the authorial protection of the models … has been granted by the aforementioned specialized Sections, but also because (see the Tribunal of Milan, speci fi c Property Properties, 23.05.2013), the stickers … have had a very wide response in terms of publication in the major Italian and international magazines, in terms of exposure in fairs and catalogs, in terms of single-brand stores, and corners of department stores all over the world, having to add – as pointed out by the judges of appeal – that two statuettes of “angels” were exhibited at the Triennale Design Museum in Milan, organized with the Foundation Museum of Design and curated by the architect and designer A. Mendini.

6. Assumes, moreover, a significant and very recent decision pronounced by this same Court of legitimacy in civil proceedings which, on the one hand, confirms the protection of products … for their artistic value on the basis of the art . 2, n. 10 law n. 633/1941, otherwise, excludes – thus partially comforting the defensive deductions – the protection as per art. 2, n. 4, law cited.

In particular, in an affair in which the … S.p.A. he had summoned a company in order to hear declared the counterfeiting of industrial models registered by it, concerning ceramic figurines, as well as to ascertain the unfair competition activity put in place to the counterpart for pedestrian imitation, appropriation of merits and competition parasitic, this Court has, with broad motivation (which this College shares in the exegetical-interpretative approaches of the matter) clarified the boundaries of the protection of products … for their artistic value. However, the legal profiles that had been submitted to the examination of the First Civil Section of this Court had invested, on the one hand, the alleged violation and misapplication of the art. 1 I. aut. in relation to art. 2, n. 4 of the same law (where the judges of merit had wrongly excluded that the creations … could be included in the regulatory provision referred to in Article 2 (4), I. aut. Based on the finding that the same were not true and their sculptures, but objects that are purely decorative and characterized by aesthetic appeal, without the connotations typical of artistic creations), and, on the other, the exclusion of the authorial protection for the lack of the requisites required by art. 2, n. 10, law n. 633 of 1941 (it was argued, in fact, that the “artistic value” required by this rule would be in contrast with the Berne Convention on the protection of literary and artistic works, ratified and enforced with 399/1978, implemented in Italy Iggs No. 95/2001, for which no intellectual work should be burdened by additional requirements with respect to the “creative nature”, recognizing, also, a contrast between the aforementioned norm on the subject of copyright and 98/71 / EC in which mention is made of the “degree of originality” of the work, something very different from the “artistic value” of the same).

No less important, even for the purposes of resolving the legal issue affecting the matter submitted to the examination of this College, is the further aspect examined by the First Civil Section, in particular where the … S.p.A. had censured the judgment of merit in the part in which it had denied the recognition of copyright to … in consideration of the seriality of the production process of the specimens placed on the market, however criticizing it where it stated that the products of … deprived of autonomous value in the art market, expression, this, considered devoid of meaning, since all the objects of the design industry would be devoid of them.

7. The First Civil Section, in examining the various profiles of grievance, has carried out the following considerations, which this College, as anticipated, shares and makes its own for the purposes of resolving the legal question posed in this judgment. In this regard, the judges of legitimacy, such as art. 22 of Legislative Decree no. 95/2001, implementing the dir. 98/71 / EC intervened on the art. 2 I. aut. operating, on one side, the modification of the case referred to in n. 4 (related to the works of sculpture, painting, art of drawing, engraving and similar figurative arts, including the set design), with the elimination of the statement “even if applied to industry, provided that their value artistic is separable from the industrial character of the product to which they are associated “, and introducing, on the other hand, a further category of works capable of protection according to copyright: what took place through the provision contained in n. 10 of the article, relating to “works of industrial design that present in themselves a creative and artistic value”. By virtue of this regulatory intervention, the authorial protection is now also granted to industrial design works that were previously excluded because of the impossibility of separating their artistic value from the industrial connotation of the product for which they were conceived.

The characteristic of the works referred to in art. 2, n. 10 I. aut. it resides in the fact that they, unlike the figurative ones, are included in the category mentioned in n. 4 of the same art. 2, find their place in the design phase of an object intended for a serial production, such as the industrial one.

The two hypotheses (the one referred to in No. 4 and the one referred to in No. 10) are placed on a reciprocal exclusion plan, since, otherwise, they would not have been the subject of separate provisions.

The industrial design work turns out to be, protected, protected under the conditions indicated (given by the creative character and the artistic content of the work) in accordance with art. 2, n. 10.

It is not, however, according to the art. 2, n. 4, a hypothesis that, to differentiate itself from the above mentioned one, can only refer to a product of creativity – identifiable through its author, and declined in figurative form – that must find expression in a single specimen or in a limited number of specimens ( given that the interest in the work is solicited, in the users, even by the uniqueness of the creation or the limited quantity of its replicas) and destined for a different market, certainly smaller, than that addressed to the goods object of the industrial production.

Therefore, the judges of the First Civil Section conclude, it is not a work of figurative art, according to the art. 2, n. 4, the model immediately referable to an economic operator that reproduces it on a large scale, in a standardized manner and in a potentially indefinite quantity of copies, to direct it, directly or indirectly, to a consumer market.

It follows that correctly had been excluded that the models of … could have access to the authorial protection as real works of sculpture, in accordance with art. 2, n. 4), I. aut.

As regards this profile of grievance, therefore, they capture the complaints made by the defense of …, about the exclusion of products … .. from the protection provided for by art. 2, n. 10, law n. 633 of 1941.

8. On the other hand (and this is the specific subject of the question referred to this Court, justifying the rejection of the appeal by the accused) must come to the question whether the products … may or may not enjoy the protection provided by the ‘art. 2, n. 10, law n. 633 of 1941, a question which, moreover, had been put in identical terms by the GUP to the appointed expert, dott. … … Resuming, in order to resolve the aforementioned question, the arguments made in the aforementioned sentence no. 7477/2017 of the First Civil Section (§ 2.2.), The College observes that the sentence of the first judge, unlike that of the appeal, is reprehensible in identifying the parameters by which to weigh the artistic value of the products … in question.

And indeed, it has been said that industrial design works can be protected if they present in themselves a creative character and artistic value. The legal concept of creativity – as observed on several occasions by this Court – does not coincide with that of creation, originality and absolute novelty, referring, conversely, to the personal and individual expression of an objectivity belonging to the categories listed, by way of example, art. 1 I. aut., So that a work of ingenuity receives protection provided that it is found in it a creative act, albeit minimal, susceptible of manifestation in the external world: with the consequence that creativity can not be excluded only because the work consists of simple ideas and notions, encompassed in the intellectual heritage of people with experience in the subject (Cassation, November 8, 2011, No. 25173, Cassation March 12, 2004, No. 5089).

With reference to the artistic value, on the other hand, it was stressed that it escapes a definition that has the attribute of exhaustiveness, but it is possible to indicate objective parameters, not necessarily competing ones, of which the trial judge must take into account: recognition by of the cultural and institutional environments, about the existence of aesthetic and artistic qualities, the exhibition in exhibitions or museums, the publication in specialized magazines, the awarding of prizes, the acquisition of a market value so high as to transcend that linked only to its functionality or the creation by a well-known artist (Cassation November 13, 2015, No. 23292).

These criteria are based on indicative elements of the artistic gradient of the design work, lacking which – it has been said – the judge could have recourse to the experience and specialized know-how of advisors capable of providing him with useful evaluation elements (Cass. 29 October 2015 , No. 22118).

As a result, as occurred before the judge in the affair examined by the First Civil Section as well as occurred before the GUP in the affair that commits this College, the court of merit could not deny the artistic value of the creations of … on the basis of relief for which would consist of objects that are merely decorative and characterized by aesthetic appeal, but certainly not configurable as true artistic creations.

Nor can the affirmation that the products in question be connoted by a form that can easily be reproduced in a serial and large-scale manner, can not be considered to be a manifestation of a particular expressive intuition and of a strongly individual style of the author, as reproduced for years in thousands of specimens and without autonomous value in the art market.

And indeed, regardless of the fact that it is not necessary, for the purpose of recognizing the artistic value of design works, that they are estimated as true expressions of figurative art (constituting this only one of the possible indices of the aforementioned value), it is to observe how large-scale production is completely meaningless, since every work of industrial design is destined to be exploited through serial manufacturing processes.

The solution indicated by the GUP therefore ends up nullifying the meaning of the legislative intervention put in place by Legislative Decree no. 95/2001, since it effectively makes all industrial design works impossible to protect.

Hence, therefore, the correctness of the interpretation offered by the Court of Appeal in reforming the sentence of the first judge, evidently falling within the products … in the protection provided for by art. 2, n. 10, law n. 633 of 1941, with the consequence of the relative configurability of the art. 517-ter cod. pen.

Therefore, the following principle of law must be affirmed: “The crime of manufacture and trade of goods made by usurping industrial property rights is also integrated in the case of industrial design works intended for serial production, which are protected under the art. 2, n. 10, of the law n. 633 of 1941, where the normatively indicated conditions occur, given the creative character and the artistic content of the work (This case concerns the question of the authoritative protection of models of the serial production of … SpA, in which the Court considered correctly integrated the offense referred to in Article 517-ter of the Criminal Code, noting that the characteristic of the works referred to in Article 2 (10) is based on the fact that they, unlike the figurative ones, fall within the category referred to in paragraph 4 of the same Article 2, find their collocation in the design phase of an object destined to a serial production, such as the industrial one) “.

9. Finally, the third ground of appeal must be examined, with which the defendant’s defense articulates complaints relating to an alleged defect of violation of the procedural law, in relation (as shown by the content of the plea, not indicated the violated norm) to the art. 648 of the Italian Penal Code, that is to say, for violation of the principle of judges formed following the withdrawal of the appeal by P.G. in relation to the crime sub a).

This reason is also unfounded. The Court of Appeal, referring to the first instance sentence, clarifies the reasons for which the imputation sub a) is to be considered completely independent from that sub b). The question concerned the use of the trademark … .. and the judge of merit had acknowledged that the aforementioned mark, because of its graphic characteristics, did not contain any reference to the mark … nor did it resemble it in any way, excluding (a) that a counterfeiting and alteration of the mark could be identified …

This is evidently an absolutely independent and autonomous issue with respect to that object of contestation under head b), in which we discuss not the brand with which the products … were marketed, but the introduction into the State, in order to draw profit, of the aforesaid products usurping the title of industrial property of the .. and in violation of the same, title of which it is undisputed that the appellant was aware.

That, moreover, the irrevocable acquittal pronounced in relation to the crime sub a) does not reflect on the offense sub b), given the autonomy between the two cases, is also confirmed by the same jurisprudence of this Section, which has clarified how of the integration of the crimes referred to in articles 473 and 474 cod. Penalties, placed to protect the legal good of the public faith, it is necessary the material counterfeiting or alteration of the other brand or distinctive sign that are likely to cause confusion among consumers and to harm the general assignment, unlike the offense foreseen by the art . 517 ter cod. pen., which protects exclusively the property of the owner of industrial property, which occurs both in the hypothesis of products made in imitation of those with other brands, and in the hypothesis of manufacture, use and sale of “original” products by who is not the holder (In application of this discrete criterion, this SC has found immunity from defects the sentence appealed that had excluded the crime referred to in Article 474 of the Italian Penal Code, since there is no counterfeiting of the trademark, recognizing however the integration of the offense under Article 517 ter of the Criminal Code for the undue exploitation of a distinctive sign of others through the reproduction, in a parasitic way, of the essential features: Section 3, No. 14812 of 30/11/2016 – Dep. 27/03/2017, PC in progress, Rv. 269751).

It follows, therefore, precisely because of the obvious autonomy of the facts and the diversity, also from a legal standpoint, of the charges object of dispute a) and sub b), that the conditions for the operation of the internal substantive ex art. 648 of the Code of Criminal Procedure, this assuming that the binding effectiveness of the “decision” extends not only to the facts whose presence or absence was specifically ascertained, even to those other facts whose existence or inexistence serves as a “necessary” postulate with respect to the conclusions incorporated into it.

The foreclosure of the court, in essence, invests all that part, although not having formed the subject of express court ruling, but with the decision is intimately linked.

In the present case, precisely because of the aforementioned autonomy and diversity, it can certainly not be asserted that the irrevocable acquittal from the facts sub a) due to their lack, extends – as well as to the constituent elements of the “fact” of which the lack was specifically ascertained -, also to the others, but different, elements constituting the “fact” sub b), whose existence or inexistence serves as a “necessary” postulate with respect to the conclusions received in the irrevocable decision.

Moreover, and conclusively, this same Court in its most authoritative composition, has clarified, although with reference to the issue of preclusion connected to the principle “ne bis in idem”, that the identity of the fact exists when there is historical-naturalistic correspondence in the configuration of the offense, considered in all its constituent elements (conduct, event, causal link) and with regard to the circumstances of time, place and person (Section U, No. 34655 of 28/06/2005 – Dep. 28 / 09/2005, PG in progress … and more, Rv. 231799).

10. The appeal must be conclusively rejected. The dismissal of the appeal follows the sentence of the appellant to pay the costs of the proceedings as well as the payment of the expenses related to the civil action, paid according to the criteria set out in the D.M. n. 55/2014 in the average measurement in the indicated device.

Source Supreme Court of Cassation