Art. 2598 of the Civil Code _ Unfair Competition Acts

Passim

• Rights of economic use of the work

• This Court has recently affirmed the principle according to which article 110 is not applicable when the client has purchased the rights to use the work economically as a result and in execution of an intellectual work contract concluded with the author (Cass. June 24, 2016, n. 13171; conf. in the matter of contract relating to a format, Cass. 18633/2017): this is because, in this case, a transfer does not take place due to the will of the contracting parties , since these rights arise directly from the client, as a natural effect of the self-employment relationship or of the professional work contract, unless otherwise agreed.

• Moreover, art.110 I.a., regarding the need for written proof of the transmission of the rights of use, does not operate in the actions promoted by the author’s right holder against third parties who have illegally used the work [cf. Cass. 3390/2003: «the art. 110 of the law of copyright (law 22 April 1941, n. 633), in providing that the transmission of the rights of use of intellectual property must be proven in writing, refers to the hypothesis in which the transfer is invoked by the transferee towards those who claim to have the same right assigned to him; it does not operate outside the conflict between securities, or between claims entitled to the same right of exploitation, when the transfer is invoked by the assignee of the right of use towards the third party who, without having a titled position, has violated this right, performing acts of exploitation of the same property, in which case the purchase could, as a simple historical fact, also be proved by means other than the document “].

• Indeed, the work of the intellectual is protected by the order as long as it presents some element or some combination that is original, the result of creativity, even if minimal of its author (Cass. 908/1995), so as to be able to identify, while inserting itself in a widespread genre, to be a singular product of the author and to be identified among other analogues (Cass. 7077/1990).

• What is protected is the work of ingenuity as manifested in a certain form and not the idea in and of itself, even if original, since the idea once it is expressed in a certain form becomes, in its intellectual content, in the public domain: from that moment, everyone can use it with the only limitation of not reproducing the same artistic form in which it materialized and therefore the creative idea, which cannot be protected in itself, must be “represented” outside and consolidates into a new, complete (and therefore not in its raw state) and original expression that represents “an autonomous and specific creative result”, “an autonomous and definitive intellectual creation”, not in need of further adjustments and treatments (Cass.5301 / 1999).

• In the grounds of the precedent of this Court n. 11953/1993, it has been shown that, in the explanatory memorandum to the draft of the copyright law, be drawn to the requirement that “the work has merit, albeit modest, because otherwise it would not have the creative value that justifies the protection and which gives the work the necessary originality “, so that” the character of creativity coincides, in essence, with that of originality with respect to previous works and cannot therefore be excluded only because the work is composed of ideas and notions ” simple “, included in the intellectual patrimony of people” having experience in the matter “”, especially since the object or protection of the copyright is not the object or intrinsic content of the work, but the formal and original representation in which it for the purpose of communication to third parties (see also Cass. 5089/2004; Cass. 15496/2004; Cass. 25173/2011; Cass. 13524/2014; Cass. 14635/2018).

• EU Court of Justice

• 2014

• Moreover, the Court of Justice has recently admitted, in the preliminary ruling, pursuant to art. 267 TFEU, that a set up of a sales space could, in principle, act as a trademark (10/7 / 2014, case C-421/2013, Apple) “provided that it has a distinctive capacity, it is therefore capable of distinguishing the products and services of the author of the registration application from those of other companies, and” diverges significant by the law or by the uses of the economic sector concerned “.

• 2019

• In another recent judgment of the Court of Justice of 12/9/2019, Case C-683/17 (also referred to in the pleadings of the parties), the EU Court, specifically concerned with the question of the cumulability of the protection offered by the specific legislation on designs and models registered with that offered by copyright, in relation to clothing, has ruled that “Article 2 (a) of Directive 2001/29 / EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society, must be interpreted as meaning that it prevents the conferment, by national legislation, of protection pursuant to copyright to models such as models of items of clothing which are the subject of the main proceedings on the basis of the finding that, beyond their utilitarian purpose, they produce their own visual effect which is relevant from an aesthetic point of view “.

• The Court highlighted that an authorial work is such where an “original object” occurs, for which, on the one hand, it is necessary and sufficient that it reflects the personality of its author, manifesting the latter’s free and creative choices (see, in this sense, judgment of 10 December 2011, Painer, C-145/10, EU: C: 2011: 798, paragraphs 88, 89 and 94, as well as of 7 August 2018, Renckhoff, C-161/17 , EU: C: 2018: 634, point 14), and that its realization was not the result of technical considerations, rules or other constraints that leave no margin for creative freedom, and, on the other hand, that there is an object – work – identifiable with sufficient precision and objectivity (see, in this sense, sentence of 13 November 2018, Levola Hengelo, C-310/17, EU: C: 2018: 899, paragraph 40).

• In the presence of these two elements, the Union legislature has opted for a system according to which the protection reserved for designs and that guaranteed by copyright are not mutually exclusive but can cumulate.

• In par. 50, it was specified that “the protection of designs, on the one hand, and the protection guaranteed by copyright, on the other, pursue fundamentally different objectives and are subject to distinct regimes”, in that:

• a) the protection of designs is intended to protect “objects which, although new and individualized, are of a useful nature and are intended for mass production” and this protection must be applied for a limited but sufficient duration to allow capitalize on the investments necessary for the creation and production of such objects, without however excessively hindering competition;

• b) copyright-related protection, the duration of which is significantly longer, is reserved for objects that deserve to be classified as works.

• The EU Court therefore reiterated that the need for originality required for authorial protection as an intellectual work, that is to say the existence of a defined and creative form of expression, which reflects the freedom of choice and the personality of its author, does not implies that it produces an aesthetically relevant visual effect, like protection as a model or design.

• Judgment under consideration.

• The following principle of law must therefore be affirmed: “in terms of copyright, a project or an interior design work, in which a unitary design occurs, with the adoption of a scheme defined in itself and visually appreciable, which reveals a clear “stylistic key”, of components organized and coordinated to make the environment functional and harmonious, that is, the personal imprint of the author, can be protected as a work of architecture, pursuant to art. 5 n. 2 La. (“The architectural drawings and works”), not detecting the requirement of the inseparable incorporation of the furnishing elements with the property or the fact that the individual furnishing elements that constitute it are simple or common and already used in the interior design sector, as long as it is an original combination result, not imposed by the will of the author to solve a technical-functional problem ».

• It is true that the expressive form worthy of authorial protection must be the result of an act of intellectual creation, unnecessary or trivial, constituting the creative character and the objective novelty of the work, constituting elements of copyright on intellectual property (Cass . 24594/2005; Cass. 25173/2011).

• Unfair competition

• The jurisprudence of the Supreme Court (Cass. N. 5852/1984; Cass.n. 9387/1994) has specified that:

• 1) the figure of the so-called Parasitic competition consists of behavior which is normally carried out in a plurality of acts which, taken together, constitute an offense, in that they represent the continuous and repeated imitation of the competitor’s initiatives and, therefore, the systematic exploitation of the work and the creativity of others;

• 2) an activity that, in a single moment, imitates “all” the initiatives taken by the competitor can also be considered parasitic;

• 3) the repetitiveness of multiple imitative acts over time is not necessary, as systematicity and continuity can also be simultaneous and express themselves in the quantitative characters of imitation, in the sense that “creativity, which is the fundamental value that with the recognition of parasitic competition as a form of unfair competition was sought to enhance and protect, is equally vulnerable both in the case of a dilution over time of several repetitive acts, and in the simultaneity of their global external manifestation “[Cass. n. 13243/2004, precedent referred to by the applicant, where it has also been observed that “nevertheless creativity is protected in our system only for a specific time, as long as, that is, it can be considered original … in the sense exactly that, when the originality has run out, that is when that specific way of producing and / or trading has become common heritage of knowledge and experience of all those operating in the sector, thus having depreciated, by the primitive entrepreneur, the capital employed in the creative effort , imitating that activity which, at its inception and formation, then became generalized and depersonalized, no longer constitutes an act contrary to professional correctness and capable of damaging the company of others “,

• so that, in both forms of parasitic competition, both in what can be called “diachronic”, as it manifests itself in a plurality of acts that follow one another over time, all aimed at a continuous and repeated imitation of the competitor’s initiatives,

• both in the other, which can instead be defined as “synchronic”, where the systematic exploitation of the work and creativity of others is achieved through a plurality of acts or a global behavior carried out simultaneously,

• imitation can be considered illegal only if carried out at “short time” by each individual initiative of the competitor (in diachronic parasitic competition) or by the last and most significant of them (in synchronic one), where for “short” to understand that period of time for the entire duration of which the creator of the new initiative has reason to expect particular utilities (of collections, advertising, goodwill) from the launch of the novelty,

• or as long as it is considered as such by the customers’ public and therefore requires their attention in choosing the product; conf. Cass. 25607/2018].

• In particular, lastly, it was reiterated that “unfair parasitic competition, included among the hypotheses provided for by art. 2598, no. 3 of the Civil Code, consists in a continuous and systematic operation in the footsteps of the competing entrepreneur through the imitation not so much of the products but rather of relevant entrepreneurial initiatives of the latter, by means of behaviors suitable to damage the company by any other means not compliant with the principles of professional correctness;

• it refers to means different and distinct from those relating to the typical cases referred to in the previous nos. 1 and 2 of the same provision, so, where the center of the imitative activity has been correctly excluded in the element of the servile imitation of the products of others (a requirement pertaining only to the cases of unfair competition provided for by No. 1 of the same art. 2598 cc ), the competitor’s activities must be systematically and durably plagiarized, with the adoption and exploitation, more or less integral and immediate, of any initiative, study or research, contrary to the rules of professional correctness “(Cass. 25607 / 2018; Cass. 22118/2015).

• Damage in re ipsa

• The principle expressed by this judge of legitimacy is consolidated according to which, in the matter of copyright, the violation of an exclusive right that belongs to the author pursuant to art. 12 of the I. n. 633 of 1941 constitutes damage “in re ipsa”, similarly to that of an absolute right or a personal right, without giving evidence to the injured party other than that of its extension (Cass 12954/2016; Cass. 8730/2011; Cass . 14060/2015; Cass. 3672/2001).

• With regard to the equitable settlement of the damage, in order to prevent the related decision from appearing arbitrary and removed from any control, it is necessary that the judge indicates, at least briefly and within the ample discretionary power that is proper to him, the criteria followed to determine the extent of the damage and the elements on which it based its decision on the “quantum” (Cass. 2327/2018).

Source Supreme Court of Cassation