Industrial and intellectual property, industrial design, works of the figurative arts and industrial design, industrial production, unfair competition for appropriation of the merits and work of others, parasitic competition, unjustified enrichment, compensation for damages, Court of Cassation, I Civ. Sec., Judgment n. 658 of 12/01/2018

Orientation of the jurisprudence of legitimacy in the matter of industrial design, affirmed, however, in the period following the ruling of the contested judgment, according to which the artistic value of the work consists not in the diversity of the same compared to other pre-existing ones, which relates more to the profile of creativity, but in a quid pluris, whose proof belongs to the part that invokes its protection, and which can be derived from a series of parameters, not all necessarily co-present in concrete, such as the creation by a well-known artist, the recognition of subsistence of aesthetic and artistic quality by cultural and institutional environments, exposure in exhibitions or museums, publication in specialized magazines, awarding of prizes, or the achievement of a market value so high as to transcend that linked to its functionality (see Cass., Section I, 03/23/2017, No. 7477, cited above, No. 13/11/2015, No. 23292, 29/10/2015, No. 21 108).

Essential lines of the arguments of the Supreme Court of Cassation

ORDINANCE against the sentence of the Court of Appeal of Naples, Section specialized for industrial and intellectual property, n. 3625/11 filed November 25, 2011.

on the appeal registered under no. 28553/2012 R.G. proposed by … … S.R.L., in person of the legal representative p.t ….;

– applicant –

against … … S.R.L., in the person of the legal representative p.t. ….

– with troricorrente –

and … .. intimated –

Hearing the report held in the council chamber of the July 2017 by the Councilor ….

CAUSE FACTS

1. … … S.r.l. the court convicted … …. S.r.l. And …., To hear that the crib shepherds produced by the former and marketed by the latter were in breach of the copyright pertaining to it, as well as being the object of unfair competition pursuant to art. 2598 cod. civ., and to be able to order the immediate withdrawal from the market, with order to refrain from the continuation of the aforementioned conduct and order the defendants to pay compensation for damages or, in the alternative, to pay compensation for unjustified enrichment.

The … was established. and resisted the question, demanding its rejection.

1.1. With a sentence of 28 May 2009, the Court of Naples, Section specialized for industrial and intellectual property, rejected the request.

2. The appeal brought by ‘… was rejected by the Court of Appeal of Naples, Section specialized for industrial and intellectual property, with sentence of 25 November 2011. Based on the decision, the Court held that the figurines from the nativity scene produced by the actress, the work of the artist …, they did not possess the requisites necessary for the protection as intellectual works, since they were not products in which a creative work was able to make visible the personal imprint of the author, but of plastic figurines intended for large-scale distribution and serial reproduction in mold, made in a conspicuously cheap and with little attention to detail, with smudges of color and plastic material.

Reaffirmed that the absence of shapes, materials or details that entailed a real diversification with respect to similar products on the market prevented from attributing artistic value, also considered the exclusion of unfair competition for servile imitation, due to lack of truly individualizing characteristics, being completely ordinary forms, fully corresponding to classical iconography.

Having clarified that, despite the detailed indication of the differences between the pastors produced by the plaintiff and those of the defendant, the first instance ruling had excluded the pedestrian imitation and the risk of association on the basis of an overall appreciation, confirmed that on the whole the two collections appeared sufficiently differentiated, noting however that the appellant had not even clarified what were the individual characteristics of his product, corresponding to a general type present on the market for years.

It considered generic the denouncement of unfair competition for the appropriation of merits and the work of others, parasitic competition and violation of public laws, considering the alleged affixing to the statuettes of the wording “registered model”, however not corresponding to the truth, because the same were used to refer to the single word “Italy”, accompanied by a number.

Finally, he confirmed the decision of first instance, in the part in which he had deemed absorbed the issues concerning the unjustified enrichment and the compensation for damages.

3. Against the aforesaid sentence the …. appealed to the Supreme Court, divided into three reasons, also illustrated with memory.

The …. he resisted with a counter-protest, also illustrated with memory.

The …. he did not carry out defensive activities.

REASONS FOR THE DECISION

1. With the first ground of appeal, the appellant denounces the violation and the false application of the articles 1, 2 n. 4 and 10 of the law of 22 April 1941, n. 633, as well as the omitted and insufficient reasoning regarding a controversial and decisive fact for the judgment, observing that, in excluding the configurability of the figurines as artistic creations, the sentence appealed did not consider that they were real works of the sculpture, as the forms did not perform an aesthetic-instrumental function, but exclusively decorative-ornamental.

The serial character of the production did not exclude the artistic value of the creation, to be ascertained with reference to the production of the first original, regardless of its reproducibility in series, now technically possible for each artistic creation, and in any case the subject of an exclusive right reserved to the author .

The originality of the figurines, characterized by a shape and somatic peculiarities, posture, clothing and accessories not found in similar products of the nativity scene, as attributable to the artistic personality of the author, was also recognized by a well-known publication of the sector , and was not excluded from the simplicity of the idea, for whose protection a modest creativity could be considered sufficient, inserting the work in a widespread genre.

In assessing these characteristics, the contested judgment did not consider that the object of protection is not the idea itself, but the expressive form in which it is translated, and has therefore neglected the particularities of representation, unique in its genre, and the context historical-cultural era in which the works were made, giving prominent prominence to the identity of the subjects represented and failing to note that the burden of providing evidence of lack of creativity loomed the defendant.

1.1. The reason is unfounded. On the subject of copyright, this Court has recently pointed out the difference between the works of the figurative arts, protected by art. 2 n. 4 of the law n. 633 of 1941, and those of the industrial design, protected by n. 10 of the same article, stating that the characteristic of the latter lies in the fact that they find their place in the design phase of an object intended for a serial production, such as the industrial one, while the former constitute a product of creativity, identifiable through the its author and declined in the figurative form, which must find expression in a single specimen or in a limited number of specimens (assuming that the interest in the work is solicited, in users, also by the uniqueness of the creation or the limited quantity of its Replicas) and is destined for a different market, certainly more limited, than the one to which the goods subject of industrial production are addressed (see Cass., Section I, 23/03/2017, No. 7477).

Like this criterion, which the College shares and intends to reiterate here too, the sentence under appeal does not merit criticism, in the part in which it denied the qualification of works of sculpture to the statues for nativity scenes produced by the applicant, highlighting on one hand the destination for serial reproduction and for large-scale distribution, sufficient in itself to exclude circulation within a restricted public of connoisseurs, and on the other the absence of a personal impression of the author, such as to prevent you from seeing creative work, also because of the cheap bill and the poor quality of the reproductions.

1.2. It is also true that, as consistently stated by the jurisprudence of legitimacy, the legal concept of creativity referred to in art. 1 of the law n. 633 cit. it does not coincide with that of originality and absolute novelty, requiring only a personal and individual expression of an objectivity attributable to one of the categories listed in that provision, so that protection is subordinated to the only condition that a creative act can be found in the work , albeit minimal, susceptible to manifestation in the outer world, creativity can not be excluded simply because the work consists of simple ideas and notions, already part of the intellectual patrimony of people with experience in the subject (see Cass. , Section I, 28/11/2011, No. 25173, 11/08/2004, No. 14596, 12/03/2004, No. 5089).

In the present case, however, the stereotypical character of the represented figures was ascertained, whose full correspondence to the classical iconography of the nativity figures, highlighted by the Court of Merit in one to the impossibility of identifying a personal trait of the author and the technical mediocrity of the realization, must be considered sufficient in itself to prevent recognizing in the work that indispensable subjective contribution to make it possible to distinguish it from hundreds of similar creations.

If it is true, in fact, that the creativity required by art. 1 cit. it does not necessarily have to concern the idea itself, but it can also refer to the form of its expression, with the consequence that the same idea can be the basis of several works of authorship, as often happens between works by different artists. it is also true, however, that the latter are usually different from each other precisely because of the particular subjective creativity that each of the authors expresses to you, and that as such is relevant to the recognition of protection (see Cass., Section I, 28). / 11/2011, No. 25173, 11/08/2004, No. 15496, cit.).

1.3. The lack of creativity could have been considered decisive even for the purpose of denying protection as a work of industrial design, in relation to which the judgment under appeal also found the defect of the other requirement prescribed by art. 2 n. 10 of the law n. 633 cit., That is to say the artistic value of creation, observing that the recognition of the same to the statues produced by the applicant was prevented by the absence of shapes, materials or details that would entail a real diversification with respect to similar products on the market.

This appreciation does not appear in line with the orientation of the jurisprudence of legitimacy in the matter of industrial design, which was also affirmed at the time following the ruling of the contested judgment, according to which the artistic value of the work consists not in its diversity compared to other pre-existing ones , which relates rather to the profile of creativity, but in a quid pluris, whose proof belongs to the party who invokes its protection, and which can be derived from a series of parameters, not all necessarily co-present in concrete, such as the creation by of a well-known artist, the recognition of the existence of aesthetic and artistic qualities by cultural and institutional environments, exposure in exhibitions or museums, publication in specialized magazines, the awarding of prizes, or the achievement of a market value so high as to transcend that linked to its functionality (see Cass., Section I, 03/23/2017, No. 7477, c it .; 13 / 11/2015, n. 23292; 29/10/2015, n. 21108).

The relevance of the aforementioned contrast is, moreover, excluded from the conviction achieved by the District Court regarding the creative defect of the work, which, by making the assessment made in relation to its artistic value superfluous, involves the absorption of censorship based on the authorship of the reproduced nativity figures and on the publication of the same in a trade magazine.

2. By its second plea, the appellant relies on the failure to examine a disputed and decisive fact for the proceedings, arguing that, in excluding the configurability of unfair competition by servile imitation, the contested judgment did not consider that, for the purposes of judgment of confusibility of the products, the comparison of the same must take place not by means of an analytical examination of the individual characterizing elements, but through a synthetic and overall evaluation.

This operation must be carried out by placing itself in the perspective of the average consumer, to whom the valuation of marginal elements of differentiation is unrelated only to a careful examination, having to give prominent importance to the general impression aroused by the product, and therefore to the similarities , which more intensely affect the risk of association.

In excluding the appropriation of merits, the judgment appealed did not take into account the good reputation acquired by the applicant through the over thirty years of the statues on the market, neglecting the bad faith of the defendant, who, although not yet obtained registration , he had affixed the word “registered model” in the lower part of the figurines.

For the purposes of establishing a parasitic competition, the Court of Justice did not consider that … he had not limited himself to reproducing some of his recurring products, but he had slavishly imitated the entire collection, thereby systematically exploiting his work and his investments. In not taking into account the misappropriation of the work of others, the contested judgment then failed to note that for this purpose the confusibility of the products is not necessary, but the suitability of the act to produce detrimental market effects for the competitor is sufficient, in the case inferred from the identity of the area in which the parties operated, which had led to misuse of business and clients by the plaintiff in favor of the defendant. Lastly, the Court of Deputies failed to examine the question concerning the presence of harmful substances in the figurines produced by the defendant, whose use, in violation of public law, allowing an unlawful saving in production, entailed a competitive advantage conforms to the principles of professional correctness.

2.1. The reason is inadmissible.

In the part concerning the procedures for carrying out the assessment of confusibility, for the purposes of ascertaining servile imitation, the complaints proposed by the appellant do not draw the spirit of the judgment under appeal, which, in finding that the Court had carried out a detailed identification of the differences found between the statues produced by the two parties, did not consider it sufficient to exclude unfair competition, having explicitly recognized the need for a total comparison of products, but having shared the assessment emerging from the first instance judgment, according to which the The general impression aroused by the two collections was that, beyond the general common functional characteristics linked to the type of product and the need to reproduce the forms and attitudes typical of the classic crib tradition, they were sufficiently differentiated, so as to exclude the risk of assoc tion by the average consumer. In denouncing the inadequacy of that appreciation, owing to the exclusive consideration of the differences found between the goods and the failure to assess the similarities, the appellant does not, moreover, take into account the observation of the Court of First Instance, according to which they had not been indicated the truly individualizing characteristics of the product, or the principle implicitly underlying the aforementioned importance, according to which the imitation relevant for the purposes of unfair competition is not identified with the reproduction of any form of the product of others, but only with that which falls on the characteristics external features with individualizing efficacy, that is to say, suitable, by virtue of their distinctive capacity, to reconnect the product to a particular company (see Cass., Section I, 12/02/2009, No. 3478; , No. 28215, 27/02/2004, No. 3967).

2.2. In the part concerning the undue appropriation of merits by the defendant, on the other hand, the complaints proposed by the plaintiff neglect consideration of the contested judgment, according to which the configurability of this case was to be excluded by virtue of the same elements given to justify the ‘lack of servile imitation, on the other hand, they are in contrast with the circumstance, specifically ascertained by the District Court, that the figurines did not bear the word’ registered model ‘, but that’ Italy ‘, accompanied by a number. The first consideration is logically flawless, since the defendant’s behavior has not been deduced in order to attribute to his company merits (such as medals, awards, indications of quality, requisites, virtues) that they do not possess, in order to disrupt the free choice of consumers (see Cass., Section VI, 7/01/2016, No. 100, Cass., Section I, 10 / 11/1994, No. 9837), the exclusion of product confusibility it had to be considered sufficient to prevent the exploitation of the good reputation acquired on the market by the competing company.

The second finding, resolving in the ascertainment of a circumstance objectively resulting from the documents of the case, which did not presuppose any evaluation activity by the Court of merit, is not in its turn censurable here, translating any misrepresentation of the facts into a a purely perceptual error, not relevant to the formulation of the judgment on the logical-legal level, to be asserted with the application for revocation pursuant to art. 395, first paragraph, n. 4 cod. proc. civ. (see Cass., Labor Section 3/04/2009, No. 8180, Cass., Section I, 19/06/2007, No. 14267, Cass., Section III, 23/02/2006, No. 4015).

2.3. In the part concerning the configurability of parasitic competition, the objections do not consider that this case, included among the hypotheses provided for by art. 2598, n. 3, cod. civ. and consisting in a continuous and systematic work in the footsteps of the competing entrepreneur through the imitation not so much of his products but rather of significant entrepreneurial initiatives of the latter, postulates the recourse to different means and distinct from those related to the typical cases of which to previous nos. 1 and 2 of the same provision, so that, where the center of the activity of imitative has been correctly excluded in the element of the servile imitation of the products of others (a requirement pertaining to the only case of unfair competition provided for in paragraph 1 of the same Article 2598 Civ.), the activities of the competitor must be indicated systematically and durably plagiarized, with the adoption and exploitation, more or less integral and immediate, of every initiative, study or research, contrary to the rules of professional correctness (cf. Cass., Section I, 29/10/2015, No. 22118). These activities in this case have not been indicated in any way, not even here, since the applicant limited itself to insisting on the systematic imitation of its products, whose referability to the entire collection of statues, rather than individual figures, does not exclude the persistent traceability of the case of art. 2598 n. 1 cod. civ., whose configurability has been excluded from the contested judgment.

2.4. These considerations should also be extended to the censures reflecting the misappropriation of the work of others, while those concerning the use of harmful substances in the production of the figurines can not be entered here, having as its subject a question that involves a factual investigation, not dealt with in the contested judgment, and not having been indicated in which phase and in which measure of the judgment this question has been raised (see Cassation, Section H, 11/04/2016, No. 7048, Cass., Section III , 18/10/2013, No. 23675, Cass., Labor Section, 28/07/2008, No. 20518).

3. By the third plea, the appellant complains, pursuant to Article 360, first paragraph, n. 5 cod. proc. Civ., the omitted examination of claims for damages and compensation for unjustified enrichment, noting that, in considering the related issues absorbed, the judgment appealed did not take into account the serious damage suffered by it due to the misuse of the customers, not commensurable to the mere reduction in turnover, abstractly attributable also to other factors, but quantifiable on the basis of the expenses incurred to cope with the illegal activity of the defendant and the damage caused to its reputation by the presence on the market of non-original products.

3.1. The reason does not deserve acceptance, although it must proceed, pursuant to art. 384, final paragraph, cod. proc. civ., to the correction of the motivation of the sentence under appeal, in the part concerning the claim for compensation for the unjustified enrichment.

Given that the failure to make a ruling by the court of merit on one or more questions put forward by the parties incorporates a defect of activity to be asserted in the legitimacy, not through the denunciation of the violation of a substantive law or, as in the present case, of the defect of motivation, but through the deduction of the relative error in proceeding and of the violation of the art. 112 cod. proc. civ. (see Cassation, Section VI, 12/01/2016, No. 329; Cass., Labor Section, 13/06/2014, No. 13482; Cass., Section V, 18 / 05/2012 , No. 7871), it is noted that the relationship of logical and legal consequential between the application for the assessment of unfair competition and that of the defendant to pay damages, making the acceptance of the latter incompatible with the rejection of the first , allows to recognize in the decision adopted in this regard at first instance and confirmed in the appeal a hypothesis of absorption cd improper, which excludes the configurability of the defect of failure to pronounce, having to consider that the aforementioned application has been implicitly rejected, that the defect of omitted reasoning, consisting the latter precisely in the affirmation of the improper absorption of the related question (see Cassation, Section I, 27/12/2013, No. 28663, Cass., Section V, 16/05/2012, No. 7663).

The autonomy of the proposed application pursuant to art. 2041 cod. civ. with respect to those for ascertaining unfair competition and compensation for damages, it is necessary to exclude that the rejection of the latter has led to the absorption of the former; however, since it could not find the same foundation in the same facts put forward to support the other questions, its proposition would have required the allegation of the event that would have led to the unjustified locating of the defendant to the detriment of the actress, whose failure to identify genericity and therefore the inadmissibility of the application, excluded the duty to adopt a decision in this regard (see Cass., Section I, 31/12/2013, No. 28812, 31/03/2010, No. 7951; , Section III, 20/03/2006, No. 6094).

4. The appeal must therefore be dismissed, with the subsequent condemnation of the appellant to pay court costs in favor of the counter-current, which is liquidated as from the operative part. The non-constitution of the intimated instead excludes the need to provide for the settlement of the costs of the proceedings in relations with the same.

Reject the appeal. Condemns the appellant for the payment, in favor of the countercurrent, of the costs of the judgment of legitimacy, which liquidates € 6,000.00 for compensation, in addition to flat-rate charges of 15 per cent, disbursements paid out at € 200.00, and law accessories.

Source Supreme Court of Cassation