Until recently, article 239 IPC of law 99/2009 clearly prevented the concrete possibility of enforcing copyright for works of design in Italy. In fact, it provided that copyright on a design was not enforceable against a party that prior to 19 April 2001 (the date of entry into force of the Italian law on cumulative protection, with which the Community Directive No. 98/71/EC was implemented) had commenced the manufacture, offer and marketing of goods made in accordance with designs/models of public domain. In short, legitimacy was acknowledged of the conduct of those parties who had copied the works of design that had become public domain prior to April 2001 and the law permitted them to continue to do so, without any time limit.

As part of the proceedings of a lawsuit between Flos SpA, Assoluce and Semeraro,the Court of Milan decided to refer the matter to the EC Court of Justice, in order to evaluate whether this rule was to be considered not valid due to its incompatibility with the community regulations.
On 24 June 2010 in proceeding (C-168/09) the Advocate-General of the Court of Justice, in presenting his conclusions, suggested to the Court to recognise the incompatibility of article 239 with the community regulations.

As a result Legislative Decree 13 August 2010, No. 131 was issued which rewrote article 239 in conformity with the Directive 98/71/EC.
According to the new wording, protection under copyright includes also the works of industrial design that, prior to 19 April 2001, were, or had become, of public domain.
Third parties who, in the 12 months prior to 19 April 2001, manufactured or marketed goods made in accordance with the works of industrial design at that time in public domain are not responsible of violation of copyright committed continuing this activity also after this date, provided the goods were manufactured or purchased prior to 19 April 2001 and were manufactured in the five years subsequent to that date and provided said activity was maintained within the quantitative limits of prior use.

Therefore under the new law, the copies manufactured after 19 April 2006 by those third parties do constitute a violation of copyright. This is a welcome change for the owners of copyright and design rights which clarifies the matter and harmonizes it further.

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