Il futuro della tutela di diritto d’autore del design alla luce della recente giurisprudenza della Corte di Giustizia

The reading of 'Cofemel' and 'Brompton' in this study differs from the common view that these decisions opened the door to the application of copyright to any design work. In Cofemel, the question whether designs are generally classifiable as 'works' within the meaning of Directive 2001/29 was answered in the negative. The main discipline for design protection remains the special protection of designs under the Directive 1998/71 and the Regulation 6/2002. The cumulation with copyright exists only under certain special conditions. If only a subset of protected designs can aspire to the cumulation with copyright, this means that the requirement of originality is more selective than that of “individual character” under special protection of designs. The requirement of originality governs the selection from among all designs of those that may qualify for cumulation. The Court specifies the test of “own intellectual creation” and refers to the fact that the design creation must reflect the personality of its author, manifesting the author's “free and creative choices”, i.e. choices not determined by technical considerations, rules or other constraints that leave no room for creative freedom. The doctrine of functionality is further explored in Brompton. For originality to exist, it is not sufficient that there was a choice to obtain the desired technical result; the existence of a choice only indicates that a certain function could be realised through different formal solutions, but still does not prove the existence of a margin of creative freedom in determining such formal solutions. The Court also applies to copyright the principle of 'causality' that it had already applied to designs and trade marks. The need to prevent technical innovation from being hindered through the application to functional aspects of protections that serve to protect different values, arises in all these disciplines. In ascertaining originality, it is the appreciation of the author's 'possibility of choice' and the factors that guided the choice (considered from an objective, and not subjective, point of view) that plays a decisive role. The possibility of choice may be limited by the need to pursue functional results and by regulatory or other constraints. The author comments on how this doctrine of functionality, according to the principle of causality, would merit further investigation, with regard, on the one hand, to the analysis of the reasons that guided the choice between different alternatives equally valid from a functional point of view, and, on the other, to the problem of the "description of function". Regulatory and other constraints may also limit the designer's margin of freedom and thus contribute together with the doctrine of functionality to attributing to the originality its role of filter for copyright protection of design. In the final part, the study focuses on some further consequences that can be drawn from the decisions under review. Originality appears to be a gradable requirement, and the breadth of protection may vary according to the degree of originality (a statement that does not seem at odds with ‘Painer’ where the Court of Justice seems to have referred to the range of exclusive rights conferred irrespective of the degree of originality and not the breadth of protection). This position appears to be consistent with that accepted in the field of the special protection of design and also in the field of patents for inventions in which a greater distance between the protected design or invention and the state of the prior art also corresponds to a broader protection, for underlying reasons that are common to these different disciplines.