Shoot For The Moon, End Up Sued

Today, in honour of the wintery weather in London, I will be covering the copyright protection case that came out of the Court of First Instance of Milan in January 2021. The case parties were after-ski brand Tecnica Group, producer of the iconic Moon Boots, and digital entrepreneur Chiara Ferragni. This post will examine the circumstances of the case, the court’s ruling, and the impact it has had on copyright protection for fashion brands.

The 2021 case,?Tecnica Group S.p.A. v Diana S.r.l. and Others, is a reiteration of multiple proceedings between the same parties. The first case in 2016 resulted in a settlement agreement where Ferragni agreed to cease the commercial use of their brand’s models, which were ruled to infringe on Tecnica’s copyright for the Moon Boot design. However, Ferragni did not honour this settlement. Instead, Ferragni went on to produce two additional models of after-ski boots with a similar design. Further proceedings in 2018 resulted in a new settlement agreement where Ferragni was required to stop marketing and producing the two newer designs as well.

The 2021 case follows up on these proceedings. The Court of First Instance of Milan was called by the plaintiff to decide if the defendant’s conduct did two things. First, if their actions infringed on Article 2, No 10, of the Italian Copyright Act (Law 633/1941). This article sets forth that works which have a distinctive creative character will be protected as industrial designs under copyright. In 2016, the Court of Milan ruled that Moon Boots had a distinctive enough shape and design to qualify for copyright protection. The defendant’s conduct during 2016 and subsequently 2018 infringed on the Moon Boot copyright by creating a work of industrial design, which mimicked the creative character of the Moon Boot. Because of this, the Court of First Instance of Milan affirmed that the Moon Boot held industrial design copyright protection. It relied on the 2016 ruling, which specifically mentioned the artistic value of the Moon Boot design. Artistic value in IP law is the concept that the protected work will not only be designed for practical purposes but also for artistic ones. Often, as described in an article for Portolano Cavallo, “artistic value shall be based on objective criteria... circumstances indicating that value, e.g., that cultural and institutional circles have recognized the work’s aesthetic and artistic qualities.” Moon Boots have artistic value in this respect because they have been recognized multiple times by cultural circles, most significantly by having been displayed in MoMA as an artistically respected and influential fashion moment.

This reliance on artistic value is of interest because of recent developments in EU case law on the subject. In the case?Cofemel, C-683/17, EU:C:2019:721, the Court of Justice of the EU decided that artistic value was not a significant factor in copyright protection. Milan’s Court of First Instance’s ruling is not in line with general EU law as the 2016 copyright protection relied predominantly on the concept of artistic value. While Italy is part of the EU, its rulings are not required to fall completely in line with broader EU rulings. The 2021 case helped to establish not only that artistic value is still an important value for copyright protection and recognition within Milan and Italian courts but also set a potential precedent for other nations to reference during future cases where artistic value is called into question in copyright disputes.

Secondly, the Court was called to determine if the defendant’s conduct fell under unfair competition as outlined in Article 2598(1)(No 3) of the Italian Civil Code. Article 2598(1)(No 3) defines unfair competition as industry actions which contradict standard honest practices within the commercial sphere. It is part of the Italian Civil Code because such a provision helps safeguard the existence of a fair and competitive marketplace by protecting businesses and consumers alike. Unfair competition was at issue in the 2021 case because the design of Ferragni’s after-ski boots was extremely similar to those of Moon Boot’s, as you can see in the comparison below.

Unfair competition in IP law often rests on the idea that one design is so like another that it could be recognised as a reproduction. Such designs when in the commercial market make it hard for the original product to be distinctly recognised immediately. When this occurs, copyright matters distinguish between ‘simple plagiarism’ (the most recognized concept of plagiarism. Essentially, the use of another’s work without proper reference or acknowledgment) and ‘evolutionary plagiarism’ (plagiarism which develops from original designs, reworking design styles and features into a new product that is then sold on the same market). The Court of First Instance of Milan ruled in 2021 that Ferragni’s after-ski boots fell under the umbrella of simple plagiarism because of the almost identical similarities between the two parties’ products. The small changes such as glitter colour and texture or a lack of a logo were insufficient to differentiate Ferrangi’s product from the original. This decision, in addition to the upheld copyright protections in the 2021 case, meant that the Court reinforced the 2016 and 2018 rulings.

The broader impact of this series of cases between Tecnica Group and Ferragni has had on fashion law is the reinforced criteria that are considered by Italian courts when they are tasked with evaluating copyright protection. Furthermore, it is now clear that Italian courts will continue to uphold the artistic value requirement for copyright protection. When industrial designs are brought before the Italian court, plaintiffs can be assured that they may legally rely on these factors to help reinforce and protect their design rights. This will be essential for iconic Italian-based brands such as Gucci, Prada, and Versace, who commonly find themselves relying on artistic value and fair market competition standards to protect their recognizable works. Finally, due to the legal interconnection of EU courts, these Italian cases can be referenced during copyright disputes in other member states. While rulings from the Court of Justice of the EU will remain the standard guidance, rulings from member states may still be presented as precedence, providing potential avenues for defendants and plaintiffs to successfully argue their cases.

You can find more IP case summaries and law school advice on my blog The Kayla Konnection, linked in my profile.

Sources:

• Legge 22 aprile 1941, n. 633 [Italian Copyright Act] art 2(10)
• Codice Civile [Italian Civil Code] art 2658(1)(No 3)
• Cofemel[MM1]?, C-683/17, EU:C:2019:721
• Court of First Instance of Milan,?Tecnica Group S.p.A. v Diana S.r.l. and Others, decision No 493/2021, 25 January 2021
• Portolano Cavallo, 'Copyright Protection of Industrial Designs: The Court of Milan Rules Once Again in Favor of Moon Boots, Iconic Italian Après-ski Footwear' (Portolano Cavallo, 20 October 2023)
• Moon Boot