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Avvocato Arlo Canella
In the complex landscape of intellectual property and design law, the recent Judgment No. 5551/2024 of the Naples Court on “Thun-like” products raises a series of questions regarding a widespread misinterpretation of the meaning of artistic value, which everyone now seems to have grown accustomed to.
The case at hand concerns the unauthorised commercialisation of various “Thun-like” products, meaning imitations of the renowned design items produced by the company Thun. Founded in 1950 in Bolzano by Count Otmar Thun and his wife Lene, Thun has become synonymous with quality and innovation in the ceramics and home décor sectors. Its products, such as angels, animals, and various decorative objects, are easily recognisable for their distinctive and now iconic design.
Judgment No. 5551/2024 of the Naples Court found several individuals guilty of the unlawful imitation of Thun products, qualifying it as counterfeiting. Specifically, the court recognised the counterfeiting of the trademark (under Article 20 of the Italian Industrial Property Code), the infringement of the registered design (Article 41 of the Italian Industrial Property Code), and unfair competition by slavish imitation (Article 2598, no. 1 of the Italian Civil Code). However, the court found no violation of copyright (under Article 2, paragraph 1, no. 10 of the Italian Copyright Law) in relation to Thun’s creations, raising an issue that I believe is of considerable importance: are Thun products not entitled to copyright protection?
In my view, while the Naples Court’s decision is based on rigorous legal reasoning, it highlights once again the “regulatory schizophrenia” that characterises design protection in Italy. Although the European Union has made significant efforts to harmonise design regulations, the rules remain very different across member states. This forces Italian judges to intervene with “creative” interpretations during enforcement, in an attempt to bring coherence and reasonableness to a regulatory framework that, in Italy, appears inherently fragmented and inconsistent.
It is therefore worth considering a judicial and legislative reform that could address these inconsistencies and provide more comprehensive and uniform protection for design, going beyond the mere protection of trademarks and registered designs, and including copyright protection when appropriate. But is it really that simple? The Naples Court’s ruling seems to draw a clear line between what is lawful and what is not, yet the legal reality is much more nuanced. Could it be that, in Italy, copying someone else’s design is not always prohibited?
Thun S.p.A. filed a claim with the Naples Court against several parties, accusing them of producing and selling unauthorised imitations of its products. These products were marketed using phrases like “Simil Thun” and “Thun Model”, capitalising on the prestige and renown of the Thun brand. The Court initially adopted an urgent measure leading to the description and seizure of the disputed products. Subsequently, in the substantive proceedings, some of the involved parties actively participated, while others remained in default. Judgment No. 5551/2024, published on 28 May 2024, ultimately recognised the infringement of Thun’s registered design models and trademark, also confirming the presence of unfair competition.
The Naples Court applied Article 20 of the Italian Industrial Property Code (IPC), which allows the trademark owner to prohibit the use of identical or similar signs for similar products when such use could cause confusion among consumers. In this case, the labels “Simil Thun” and “Thun Model” were deemed a clear infringement of the Thun trademark, as they improperly exploited the brand’s reputation, leading consumers to associate the imitated products with the original brand.
As for the protection of registered designs, the Court applied Article 41 of the Italian Industrial Property Code (IPC). This provision grants the owner of a registered design the exclusive right to use it and to prohibit unauthorised use by third parties. The Court found that the contested models reproduced the details of Thun products almost identically. Consequently, the imitated designs failed to produce a different “overall impression” on the informed user, thereby constituting an infringement of the registered industrial models.
Finally, the Court addressed the issue of copyright protection, evaluating whether the contested models could be protected under Article 2, paragraph 1, no. 10, of the Copyright Law. However, the Court concluded that not all Thun products possess the “artistic value“ required to justify copyright protection. Specifically, copyright protection was denied for the “Pattern New Country“ line, which was deemed to lack sufficient artistic merit. The Court thus followed prevailing case law, which requires an additional element (quid pluris) to extend copyright protection to industrial design works.
But what does this really mean for design creators in Italy? Is it possible to fully protect one’s creativity from imitations even without registration? And what are the gaps in the legislation that allow some imitations to be considered lawful? We will soon delve deeper into the ambiguities of the Italian legal system and its practical implications for companies and professionals operating in the design sector.
Judgment No. 5551/2024 of the Naples Court represents an example of legal rigor in the application of the rules set out in the Italian Industrial Property Code and the Italian Copyright Law. The judges found a violation of the registered industrial designs and the Thun trademark, also ruling against the defendants for unfair competition. However, the decision to deny copyright protection for Thun’s “Pattern New Country” line was based on the absence of sufficient “artistic value“, as required by Article 2, paragraph 1, no. 10, of the Copyright Law.
Article 2 of the Italian Copyright Law, introduced by Legislative Decree No. 95/2001 implementing Directive 98/71/EC, represents a key compromise in design law. The rule states that works of industrial design can benefit from copyright protection only if they possess “intrinsic creative character and artistic value“. This compromise was introduced to prevent every industrial design object from automatically receiving the broad protection offered by copyright, which is generally reserved for intellectual works distinguished by their originality and creativity.
The legislator aimed to avoid the complete overlap between the protection granted by registered designs and models and that of copyright, reserving the latter only for works that, in addition to serving a practical function, possess intrinsic value as works of art. However, this approach requires a subjective and often complex assessment by judges, who must determine whether an industrial work truly possesses the necessary additional element (quid pluris) to qualify for broader copyright protection.
In the case under review, the Naples Court found that the “Pattern New Country” models did not meet the “artistic value” criteria necessary for copyright protection, such as:
In the case of the “Pattern New Country” model, the Court found that these parameters were not met. There was no evidence of exhibitions in museums or galleries, nor of publications in specialised magazines, nor of a sale price indicating artistic merit. Furthermore, the model was considered primarily functional, lacking sufficient aesthetic innovation to elevate it to the status of a “work of art” worthy of copyright protection.
Il rischio di mantenere tale barriera è quello di favorire solo chi possiede le risorse per ottenere una registrazione formale o ha un riconoscimento “artistico” già consolidato. Ma se il contesto fosse diverso? Se si trattasse delle creazioni di un giovane artigiano, non registrate e prive di esposizioni in musei? Questo caso evidenzia l’urgenza di un coraggio interpretativo che allinei la protezione del design alle reali caratteristiche del mercato e della creatività contemporanea, offrendo una tutela equa e accessibile anche per chi non si colloca nella “fascia alta” del design tradizionale.
The danger of maintaining such a barrier is that it favours those who have the resources to obtain formal registration or have an already established “artistic” recognition. But what if the context were different? What if we were talking about the creations of a young artisan, unregistered and without museum exhibitions? This case highlights the urgency of an interpretative shift that aligns design protection with the actual characteristics of the market and contemporary creativity, offering fair and accessible protection even for those not positioned in the “high end” of traditional design.
The Italian regulatory system for design protection is characterised by a rigid criterion of “artistic value“, which excludes much creativity from copyright protection. According to the current judicial interpretation, a design work can only benefit from copyright protection when there is collective recognition of its artistic value, such as exhibition in galleries or museums, publications in specialised journals, or a high market price that reflects its artistic merit. But is it really necessary for a work to be placed on a canvas, exhibited, and receive public acclaim in order to be protected?
Many art critics, such as Harold Rosenberg, defined art as an “act of individual expression“, not as a product that requires institutional approval. Rosenberg described the artist as a “man of action” who projects his worldview onto the canvas, regardless of societal recognition. Clement Greenberg, another influential critic, argued that art is valid when it is a genuine expression of the artist, not because it receives applause from the public or institutions. Must we really wait for a sunflower-patterned tablecloth by a young Van Gogh to be exhibited in a museum before recognising its value?
Many artists we now consider pillars of art history were never protected or acknowledged during their lifetimes. Vincent Van Gogh, Paul Gauguin, and many others were only recognised posthumously. Did their works not deserve protection while they were alive simply because they hadn’t yet received collective acclaim?
Perhaps it is time to recognise that the very act of plagiarism attests to a work’s value. If a work is copied, reproduced, and exploited, it means it has impact—it has value. A designer whose models are reproduced without authorisation should be entitled to legal protection not because their work has been exhibited, but because their creation is an artistic expression deserving of protection. As Jean Dubuffet claimed, art can also be the “art of the mad“, the unrecognised, the marginalised; often it is there that the true essence of artistic sentiment resides.
A modern reflection should lead us to understand that a work is a work, even if no one acknowledges or observes it, because what matters is the creative intention and artistic sentiment behind it. If an illustration, a pattern, or a sculpture is the result of an original and genuine creative process, that is already a work of art, and as such it should be protected. Art is not a popularity contest; it is an act of creation that requires protection simply by virtue of its existence.
Overcoming the criterion of “artistic value” for the protection of design works is essential to recognise the contributions of those who innovate outside traditional channels. In an era where innovation moves at lightning speed and new ideas can emerge on a digital tablet as much as on a canvas, it is crucial that the law protects creative expression in all its forms. It is time to understand that creativity does not need collective approval to exist or to be worthy of protection, design included.
Avvocato Arlo Canella
