GLITTERS DID NOT MAKE SUCH A SPARKLE DIFFERENCE…NOT ON THIS OCCASION!

The sparkle effect that characterizes, since the very beginning, the Blonde Salad shoes did not impress the judges of the Court of Milan in a case in which the Tecnica Group S.p.A. (“Tecnica”) appealed the competent authorities in order to defend their famous Moon Boot snow boots – inspired by the footwear used by astronauts in the 1969 moon landing – against the snow boots marketed with the Chiara Ferragni Collection’s trademark.

BACKGROUND

Back in 2016, the Court of Milan stated that Tecnica’s Moon Boot snow boots have to be considered as an artwork under article 2, number 10, of the Italian Copyright Law No. 633/1941, (“ICL”) enjoying both the design and the copyright protection.

In 2017, Tecnica and two of the companies that are part of the group behind Chiara Ferragni Collection’s trademark, signed a settlement agreement in which the latter undertook not to use the trademarks and designs of the after-ski footwear model Moon Boots, as these are protected by copyright.

In 2018, Tecnica found out that the same companies, together with another one (hereinafter, jointly, “CFC”) were producing and marketing new snow boots reproducing the same designs as the those that were the subject of  the aforementioned settlement agreement and, consequently, contested its violation by means of a precautionary procedure before the Court of Milan, in order to have CFC ceasing the illicit activity.

In light of the above, Tecnica sued CFC before the Court of Milan in order to obtain, inter alia, further confirmation of Moon Boot’s copyright protection.

On its part, CFC claimed that Moon Boot’s copyright protection had to be granted only to the original Moon Boots model, which, however, was totally different from those that were being contested, which bared CFC’s trademarks, since they had their own independent aesthetic characteristics. Said difference lied, according to CFC, mainly in the fact that its products were much more “fanciful” than Tecnica’s, as they were covered in glitter, and could not be confused with Moon Boot, also because of their characteristic large “eye” trademark, placed on the back of the shoes, which excluded any risk of confusion. Also, according to the respondents, the footwear used by astronauts in the Apollo mission constituted a relevant priority that excluded Moon Boot’s novelty. CFC also rejected any unlawful competition allegation given that their snow boots are aimed, in terms of price and quality, at different types of consumers.

CFC interestingly also argued that, if any copyright protection was to be granted to Moon Boot, it could not prevent third parties from re-elaborating the artwork as such prevention would imply a prejudice for artistic research and production and for cultural growth in general.

LEGAL ANALYSIS

The Court, with regard to the issue related to the recognition in favor of the Moon Boots of the quality of a work of industrial design to which the protection under copyright is granted, confirmed the reasoning behind the 2016 judgement. More specifically, the Court recalled its observations related to the interpretation of the so-called “artistic value” requirement that has to be assessed in order to grant copyright protection to an industrial design. In particular, it stated that since a judge cannot establish  the existence of the artistic value in an artwork, what has to be ascertained is the perception that may have been consolidated of a work among the general public and the cultural sector. In this regard, it is relevant, for instance, whether the design has been considered as an expression of a specific artistic trend or the capability of its author to interpret a historical period. It has also to be noted that Italian Supreme Court has specified what has to be deemed as a recognition from the cultural sector, namely the exposition in museums, the publication in specialized magazines, the acquisition of a market value beyond what would be justified by the functionality of the product, and so on. The Court of Milan found the aforementioned requirements for artistic value had been fulfilled by Tecnica famous boots.

In addition, the Court found that the substantial identity between the compared shapes cannot be excluded by the mere color of the product (i.e. apposition of glitters) and its trademark. Consequently, it deemed necessary to highlight the differences between plagiarism, relevant in the case at stake, and counterfeiting, which relates to other aspects of intellectual property law. More specifically, while the latter consists of a reproduction of the original item that does not imply a creative effort, but a mere dissemblance of the counterfeiting itself, the first one consists of an elaboration of the original work which does imply a creative effort. Hence, what is relevant when it comes to assess copyright violations is not the risk of confusion based on distinctive signs, but the unauthorized reproduction of an original artwork, although not immediately recognizable.

With regard to the claim that preventing third parties from elaborating an artwork would result in a prejudice to artistic research and production, the Court of Milan pointed out that plagiarism can also arise as the so-called “evolutionary plagiarism”, that integrates  an only formal distinction between the compared works, so that the newer one is not original enough to be totally autonomous from the prior one and it constitutes an unauthorized reproduction under articles 4, 13, 17 and 18 ICL.

CONCLUSIONS

This judgment necessarily leads to some interesting considerations also with respect to CFC’s arguments. More specifically, the respondents claimed that since the Moon Boots were inspired by the astronauts’ footwear used in the Apollo mission, the latter one represented a relevant priority that excluded Moon Boot’s novelty. However, although such inspiration, Tecnica created a  new and original models of snow boots through which the author interpreted that specific historical period, which is one of the requirements relevant in order to assess the presence of the artistic value.

Additionally, it has to be noted that while in the first judgment issued in 2016, the judge only recognized the counterpart’ shoes plagiarism/counterfeiting of the Moon Boots under ICL, being protected under copyright, and prohibited the production, marketing and advertising of the counterpart’ shoes, in the case at stake the judge also established that CFC shall have to pay a compensation in favor of Tecnica.

As a consequence, Tecnica’s position with reference to its Moon Boots appear definitely strengthened in such a way that it will be interesting to see who else will be brave enough to copy again Moon Boots. However, Tecnica shall not forget that, as Madame Chanel used to say, “imitation is the highest form of flattery”!

By Eleonora Curreri and Camilla Pasino