The Italian Supreme Court decision on the KIKO case (Cass. 780/2020) is the most recent judgement made in the wake of the Cofemel decision (case C-683/17) and follows the UK IPEC decision in Response Clothing (click here for our previous blog post).
In this latest development, KIKO S.p.a, a well-known make-up store was able to secure copyright protection for its signature store layout, made of its open space entrance with digital screens, the white/black/pink/purple color combination, the disco lighting effects, the size, proportions, materials and position of furniture.
The Cofemel case
The Cofemel decision outlined that for copyright to subsist in a design the proprietor needs to demonstrate two key points:
- that it is a ‘work’ of ‘authorship’, meaning that it is the intellectual creation of its author; and
- that it is sufficiently original (and not necessarily a work with artistic or aesthetic merit).
This is a departure from previous Italian case-law, as although Italian copyright law does not provide for a set list of subject matter protected by copyright (unlike English law), the courts used to require a work to have some artistic value for copyright to subsist.
The KIKO case
KIKO claimed that Wycon S.p.a, also an Italian make-up chain, had infringed the copyright in KIKO’s store layout. KIKO was successful in both the first instance and appeal, as the courts held that copyright subsisted in the KIKO store layout and that Wycon had infringed their copyright and acted against honest commercial practice.
Wycon filed an appeal to the Italian Supreme Court on the basis that the KIKO store layout could not be classified as a work of architecture, given that it was not incorporated into a building or permanent infrastructure, and that each element of the layout should be considered as a design and, therefore, satisfy the additional requirement of artistic value under Italian law.
Wycon also claimed that given that the EUIPO had previously denied trade mark protection to the KIKO store layout due to lack of distinctive character, the same would translate into lack of originality from a copyright perspective.
However, the court partially upheld the decisions of the lower courts and found that the KIKO store layout should be classified as a work of architecture which results in interior designs being an original combination of elements able to adapt spaces to increase their usability. Hence, the court has confirmed that the requirement of a stable incorporation to buildings no longer applies to works of architecture.
In addition, the court stressed that multiple intellectual property rights can subsist on the same work and failing to meet all requirements for protection under one of these rights, does not imply that another right cannot be claimed. As such, KIKO’s failure in registering its store layout as a European trade mark did not preclude it from obtaining copyright protection.
Lastly, the KIKO decision provides an interesting point of view on unfair competition under European law (which can differ quite significantly under English law). The Court of Appeal of Milan will now have to consider the issue related to the behavior of competitors, including choosing similar sale assistants’ uniforms, comparable look and feel of single products, packaging and bags as well as analogous marketing campaigns.
This decision will be welcomed by companies investing in their store layouts as part of their brand identity and it will give other companies greater comfort to do so by developing a creative and consistent look of their stores to apply worldwide and possibly protect as a trade mark, design and copyrighted work.
We believe that items that could have previously failed to have copyright protection may now qualify and, as a result, companies may have a greater ability to enforce their rights against infringers. This is of great importance, given that with increasing online sales, brands wish to provide costumers with unique experiences in store.