When you have a handbag design bestseller with over 54 million copies sold around the world since its creation in 1993, the question concerning the IP rights vesting in it is not just an academic one.
The Milan court accepted to enforce Longchamp’s 3D EU trade marks (EUTMs) protecting the shape of Le Pliage, but refused to acknowledge that copyright protection could also vest in such a design.
In 2019, Longchamp initiated proceedings for trade mark and copyright infringement, as well as unfair competition, against a company making and selling a bag design closely resembling that of Le Pliage, specifically Le Pliage 1623 Nylon.
The characterizing elements of Le Pliage, according to Longchamp, would be the original combination of:
- The trapezoid shape of the bag;
- The slightly circular leather element between the handles of the bag, which covers part of the zipper;
- The stitching on the front of the bag, which serves to highlight the contour of its internal pocket;
- The tubular handles which end with circular elements on each side of the bag;
- The small leather tabs at the sides of the zipper;
- The contrast between the colours and materials (leather and nylon) used.
Besides enforcing said registrations, Longchamp also argued that the shape mark would enjoy protection in accordance with Article 6bis of the Paris Convention and be protected by copyright under Article 2, No 10 of the Italian Copyright Act. In relation to the latter, it should be noted that the wording of the Italian Act allows for designs to receive copyright protection only insofar as they display creative character (carattere creativo) and artistic value (valore artistico).
Noting that it would be “necessary, first of all, to determine the protection actually available to the products at issue”, the Milan Court only accepted some of the claims advanced by Longchamp.
Turning to copyright, referring to an earlier decision of the same court (decision 5443/2017), the Milan judges rejected any such claim: although the design of Le Pliage could be considered original, it would display no artistic value. Traditionally, such a value could be demonstrated through objective factors such as:
- Recognition of aesthetic and artistic qualities by specialist cultural and institutional establishments;
- Display in exhibitions or museums;
- Publication in specialist press;
- Awards received;
- Market value that exceeds the functionality of the design;
- Creation of the design by a well-known artist.
According to the Court, the claimant had failed to provide any evidence of the above.
The Longchamp case adds to a series of decisions in which the question of the type(s) of IP protection available to shapes was key.
Only a few weeks ago, The IPKat reported on the most recent Moon Boot trade mark decision, highlighting a situation which is the reverse of what happened in Longchamp: while in Longchamp the shape mark registrations were not questioned but copyright protection was refused, in Moon Boot the shape mark registrations were held partially invalid despite previous recognition of copyright protection in the shape of the famous after-ski boots by Italian courts.
In sum: Longchamp confirms the old adagio that, while a shape (or, more generally, an object) can be protected by different IP rights, the actual availability of each and every right needs to be assessed on its own merits.
In addition, from a more specific (and concerned) copyright perspective, the decision does not question at all the validity of the traditional Italian approach to evaluating copyright subsistence in industrial designs.
It is highly unlikely, if at all conceivable, that the wording of the Italian Copyright Act may still be regarded as compatible with EU law as interpreted by the Court of Justice of the European Union (CJEU) in cases like Flos (a referral from the Milan Court itself!) and, more explicitly, Cofemel [Katposts here].
In Flos, the CJEU held that EU law prohibits Member States from denying copyright protection to designs that meet the requirements for copyright protection - including designs other than registered ones (subject to Article 17 of the Design Directive) - and suggested that Member States cannot set any particular requirements as to how protection is achieved.
In other words: if a design is eligible for protection under the InfoSoc Directive and is, as such, original in the sense clarified by the CJEU - then Member States cannot deny such protection. Such reading of the Flos case is the one that the then Advocate General Jääskinen proposed in Titus Donner: "the judgment in Flos indicates that the items here in issue, although unprotected under Italian copyright law during the relevant period, were entitled to protection under EU copyright law".
Cofemel has closed once and for all the question of what requirements can be imposed for copyright protection to arise in respect of designs: what is needed is that the design at hand is an original work. Nothing less and nothing more. Requiring that a design still displays creative character and artistic value is not only out of fashion, but also – on a more serious note – out-of-sync with EU law.
[Originally published on The IPKat on 10 March 2022]