Textile designs and legal protection: copyright, unfair competition and industrial property rights

Copyright protection for works of industrial design: requirements and limitations

In the case at hand, the claimant first relied on the protection afforded by Italian copyright law (Law No. 633/1941), arguing that the designs reproduced on its fabrics could be classified as works of industrial design, i.e. creations intended for mass production and therefore potentially eligible for protection.

Indeed, Article 2(10) of the Italian Copyright Act includes among copyright-protected works “works of industrial design which inherently possess creative character and artistic value”.

The provision therefore allows copyright protection to extend to creations intended for mass production, provided that they satisfy certain qualitative requirements going beyond “their mere functionality”.

More specifically, in order for a design work to qualify for such protection – which must be assessed by the court “on a case-by-case basis, having regard to the particular features of each case and by reference to criteria that are as objective as possible” – it must display:

1. creative character: namely, the author’s personal imprint, “to be recognised in forms that constitute a personal representation” of the author;
2. artistic value: namely, a higher degree of originality than ordinary forms available on the market, “inferred from objective indicators, […] such as creation by a renowned artist, recognition of the existence of aesthetic and artistic qualities by cultural and institutional circles, exhibition in shows and museums, publication in specialist journals, the receipt of awards, or the achievement of a market value so high as to transcend that linked to its functionality.”

Against this background, the Court held that the designs in question could not benefit from copyright protection. In particular, the claimant had merely emphasised the creativity of the graphic patterns and the research and development activity behind them, without providing evidence capable of demonstrating the existence of the objective indicators required to establish the artistic value of the work (for further information, see That “artistic value” the European Union doesn’t require (but Italy does) – Canella Camaiora).

In the absence of such evidence, the Court therefore excluded the textile designs from the copyright protection sought by the claimant.

The exclusion of copyright protection, however, did not bring the Court’s analysis to an end. It was still necessary to consider whether the disputed conduct might be relevant under the separate rules governing unfair competition.

Appropriation of another party’s creative solutions under unfair competition law

Having excluded copyright protection for the designs, the Naples Court examined the case from the different perspective of unfair competition under Article 2598 of the Italian Civil Code.

First, the Court found that there was a competitive relationship between the parties, noting that this requirement is met where businesses offer products intended to satisfy the same market need, even where their customer bases are only potentially overlapping.

That said, the Court excluded unfair competition based on likelihood of confusion (ex Article 2598(1)(1) of the Italian Civil Code), observing that the evidence submitted by the claimant did not establish that the fabric designs had acquired a specific “distinctive character capable of creating confusion among the public when confronted with the fabrics in question”.

Nevertheless, an overall assessment of the circumstances led the Court to find conduct contrary to professional fairness within the meaning of Article 2598(1)(3) of the Italian Civil Code.

In particular, according to the Court, “it is the repeated, rather than isolated, reproduction that makes it possible to establish conduct contrary to professional fairness, since its purpose is to appropriate the advantages deriving from the use of a series of designs already created by others without making any economic or organisational effort or any appreciable modification.”

It was precisely the systematic nature of the reproduction that led the Court to rule out coincidence and instead conclude that the graphic solutions had been taken from the claimant’s designs. In light of these considerations, the Court found the defendant liable under Article 2598(3) of the Italian Civil Code for having benefited from the systematic use of designs developed by the claimant, and ordered it to pay damages exceeding €50,000.

The decision shows that, even where the requirements for copyright protection of industrial designs are not met, the slavish reproduction of another party’s creative solutions may nevertheless amount to unfair competition.

When copyright is not enough: tools for protecting design

The decision highlights how, in the design and fashion sectors, copyright is an important form of protection but is not always easily available, particularly for creations intended for industrial production.

In such cases, relying exclusively on copyright protection may prove risky, because protection depends on establishing requirements – such as artistic value – that may not always be easy to demonstrate in practice.

For this reason, businesses operating in the sector may wish to supplement copyright protection with more structured forms of protection, such as the registration of designs and models under Articles 31 et seq. of the Italian Industrial Property Code or, where the relevant requirements are met, trademark protection (Articles 7 et seq. of the Italian Industrial Property Code), for example for repeated motifs or patterns.

A preventive protection strategy can reduce uncertainty and protect the economic value of creative output more effectively, avoiding the need to rely exclusively on remedies available only after an infringement has occurred.