CELEX: 62009CJ0168
Language: en
Date: 2011-01-27 00:00:00
Title: Judgment of the Court (Second Chamber) of 27 January 2011. # Flos SpA v Semeraro Casa e Famiglia SpA. # Reference for a preliminary ruling: Tribunale di Milano - Italy. # Industrial and commercial property - Directive 98/71/EC - Legal protection of designs - Article 17 - Obligation concerning the cumulation of design protection with copyright protection - National law precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which entered the public domain before the entry into force of the law - Principle of the protection of legitimate expectations. # Case C-168/09.

Case C-168/09
      Flos SpA
      v
      Semeraro Casa e Famiglia SpA
      (Reference for a preliminary ruling from the Tribunale di Milano)
      (Industrial and commercial property – Directive 98/71/EC – Legal protection of designs – Article 17 – Obligation concerning the cumulation of design protection with copyright protection – National law precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which
         entered the public domain before the entry into force of the law – Principle of the protection of legitimate expectations)
      
      Summary of the Judgment
      1.        Approximation of laws – Designs – Directive 98/71 – Principle of cumulation of design protection with copyright protection
      (European Parliament and Council Directive 98/71, Art. 17; Council Directive 93/98, Art. 1(1) and 10(2))
      2.        Approximation of laws – Designs – Directive 98/71 – Principle of cumulation of design protection with copyright protection
      (European Parliament and Council Directive 98/71, Art. 17)
      1.        Article 17 of Directive 98/71 on the legal protection of designs must be interpreted as precluding legislation of a Member
         State which excludes from copyright protection in that Member State designs which were protected by a design right registered
         in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation,
         although they meet all the requirements to be eligible for copyright protection.
      
      It is clear from the wording of Article 17 of Directive 98/71, and particularly from the use of the word ‘also’ in the first
         sentence thereof, that copyright protection must be conferred on all designs protected by a design right registered in or
         in respect of the Member State concerned.
      
      The intention of the European Union legislature to confer that protection also emerges clearly from recital 8 in the preamble
         to Directive 98/71, affirming, in the absence of harmonisation of copyright legislation, the principle of cumulation of protection
         under specific registered design protection law and under copyright law.
      
      Nor does the fact that the Member States are entitled to determine the extent of copyright protection and the conditions under
         which it is conferred affect the term of that protection, since the term has already been harmonised at European Union level
         by Directive 93/98 harmonising the term of protection of copyright and certain related rights.
      
      In that regard, Article 1(1) of Directive 93/98 provides for copyright in a literary or artistic work within the meaning of
         Article 2 of the Berne Convention for the Protection of Literary and Artistic Works to run for the life of the author and
         for 70 years after his death. Article 10(2) of Directive 93/98 provides that that term of protection is to apply to all works
         and subject matter which, on 1 July 1995, were protected in at least one Member State.
      
      It follows that, under Article 17 of Directive 98/71, designs which were protected by a design right in or in respect of a
         Member State and which met the conditions under which copyright protection is conferred by the Member States, in particular
         the condition relating to the level of originality, and in respect of which the term laid down in Article 1(1) of Directive
         93/98, in conjunction with Article 10(2) thereof, had not yet expired, were to be eligible for copyright protection in that
         Member State.
      
      In that regard, it is clear from Article 10(2) of Directive 93/98 that application of the terms of protection laid down by
         the directive may have the effect, in the Member States which had a shorter term of protection under their legislation, of
         protecting afresh works or subject matter which had entered the public domain. That consequence results from the express will
         of the European Union legislature and such a solution was intended to achieve as rapidly as possible the objective – formulated,
         in particular, in recital 2 in the preamble to Directive 93/98 – of harmonising the national laws on the terms of protection
         of copyright and related rights and to avoid the situation where rights have expired in some Member States but are protected
         in others.
      
      That reasoning must also hold true in relation to the revival of copyright protection for designs which were previously protected
         by another intellectual property right.
      
      (see paras 37-44, operative part 1)
      2.        Article 17 of Directive 98/71 on the legal protection of designs must be interpreted as precluding legislation of a Member
         State which – either for a substantial period of 10 years or completely – excludes from copyright protection designs which,
         although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date
         of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed
         products based on such designs in that State – irrespective of the date on which those acts were performed.
      
      As regards, in the first place, a legislative measure providing for a transitional period in relation to a specific category
         of third parties with a view to protecting their legitimate interests, it follows from the principle that acquired rights
         must be respected and from the principle of the protection of legitimate expectations that Article 17 of Directive 98/71 does
         not preclude such a measure, provided that the measure does not have the effect of deferring for a substantial period the
         application of the new rules on copyright protection for designs so as to prevent them from applying on the date laid down
         by that directive.
      
      In that regard, the assessment of the compatibility of the length of that transitional period and of the category of third
         parties covered by the legislative measure must be carried out in the light of the principle of proportionality.
      
      Accordingly, the legislative measure adopted by a Member State must be appropriate for attaining the objective pursued by
         the national law and necessary for that purpose – namely ensuring that a balance is struck between, on the one hand, the acquired
         rights and legitimate expectations of the third parties concerned and, on the other, the interests of the rightholders. Care
         must also be taken to make sure that the measure does not go beyond what is needed to ensure that that balance is struck.
      
      For that purpose, the measure may be regarded as appropriate only if it is directed at a category of third parties entitled
         to rely on the principle of protection of legitimate expectations – that is to say, persons who have already performed acts
         of exploitation in relation to designs within the public domain at the date of entry into force of the legislation transposing
         Article 17 of Directive 98/71 into the domestic law of the Member State concerned.
      
      Furthermore, a legislative measure of that kind should ensure that the period of use of the designs by those third parties
         is limited to what is necessary for them to phase out the part of their business that is based on earlier use of those designs
         or to clear their stock. The measure does not go beyond what is necessary to ensure that a balance is struck between the competing
         rights if it does not defer entitlement to copyright protection for a substantial period.
      
      As regards, in the second place, a legislative measure abolishing the moratorium and rendering copyright protection unenforceable
         for an indefinite period in the case of products manufactured on the basis of designs which were in the public domain before
         the entry into force of the national legislation transposing Directive 98/71, it follows from the foregoing that such a measure
         negates Article 17 of Directive 98/71, since it has the effect of preventing, generally, the application of the new protection,
         that is to say, protection relating to copyright. Nor does that measure seek to restrict the category of third parties who
         may rely on the principle of the protection of legitimate expectations. On the contrary, the measure renders copyright more
         generally unenforceable, since, under the provision, it is not necessary for a third party to have begun exploiting the designs
         before the entry into force of the national legislation transposing Directive 98/71.
      
      (see paras 55-60, 64-65, operative part 2)
JUDGMENT OF THE COURT (Second Chamber)
      27 January 2011 (*)
      
      (Industrial and commercial property – Directive 98/71/EC – Legal protection of designs – Article 17 – Obligation concerning the cumulation of design protection with copyright protection – National law precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which
         entered the public domain before the entry into force of the law – Principle of the protection of legitimate expectations)
      
      In Case C‑168/09,
      REFERENCE for a preliminary ruling under Article 234 EC from the Tribunale di Milano (Italy), made by decision of 12 March
         2009, received at the Court on 12 May 2009, in the proceedings
      
      Flos SpA
      v
      Semeraro Casa e Famiglia SpA,
      intervener:
      Assoluce – Associazione nazionale delle Imprese degli Apparecchi di Illuminazione, 
      THE COURT (Second Chamber),
      composed of J. N. Cunha Rodrigues, President of the Chamber, A. Arabadjiev, A. Rosas, U. Lõhmus (Rapporteur), and A. Ó Caoimh,
         Judges,
      
      Advocate General: Y. Bot,
      Registrar: L. Hewlett, Principal Administrator,
      having regard to the written procedure and further to the hearing on 22 April 2010,
      after considering the observations submitted on behalf of:
      –        Flos SpA, by G. Casucci and N. Ferretti, avvocati,
      –        Semeraro Casa e Famiglia SpA, by G. Floridia and F. Polettini, avvocati,
      –        Assoluce – Associazione Nazionale delle Imprese degli Apparecchi di Illuminazione, by C. Galli, M. Bogni and C. Paschi, avvocati,
      –        the Italian Government, by G. Palmieri, acting as Agent, assisted by S. Fiorentino, avvocato dello Stato,
      –        the European Commission, by H. Krämer and S. La Pergola, acting as Agents,
      after hearing the Opinion of the Advocate General at the sitting on 24 June 2010,
      gives the following
      Judgment
      1        This reference for a preliminary ruling concerns the interpretation of Articles 17 and 19 of Directive 98/71/EC of the European
         Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28).
      
      2        The reference has been made in proceedings between Flos SpA (‘Flos’), a company manufacturing designer lighting, and Semeraro
         Casa e Famiglia SpA (‘Semeraro’) concerning breach of the copyright that Flos claims to hold in respect of a design known
         as the ‘Arco’ lamp.
      
       Legal context
       European Union law
       Directive 93/98/EEC
      3        Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights
         (OJ 1993 L 290, p. 9) states, in recital 2 in the preamble, that differences between the national laws governing the terms
         of protection of copyright and related rights are liable to impede the free movement of goods and freedom to provide services,
         and to distort competition in the common market and that, with a view to the smooth operation of the internal market, the
         laws of the Member States should be harmonised so as to make terms of protection identical throughout the European Union.
      
      4        Article 1(1) of Directive 93/98 provides that protection of the rights of an author in a literary or artistic work within
         the meaning of Article 2 of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act of 24 July 1971),
         as amended on 28 July 1979, is to run for the life of the author and for 70 years after his death.
      
      5        Article 10 of that directive, entitled ‘Application in time’, provides at paragraphs 1 to 3: 
      
      ‘1. Where a term of protection, which is longer than the corresponding term provided for by this Directive, is already running
         in a Member State on the date referred to in Article 13(1), this Directive shall not have the effect of shortening that term
         of protection in that Member State. 
      
      2. The terms of protection provided for in this Directive shall apply to all works and subject matter which are protected
         in at least one Member State, on the date referred to in Article 13(1), pursuant to national provisions on copyright or related
         rights or which meet the criteria for protection under [Council] Directive 92/100/EEC [of 19 November 1992 on rental right
         and lending right and on certain rights related to copyright in the field of intellectual property (OJ 1992 L 346, p. 61)].
      
      3. This Directive shall be without prejudice to any acts of exploitation performed before the date referred to in Article
         13(1). Member States shall adopt the necessary provisions to protect in particular acquired rights of third parties.’
      
      6        Pursuant to the first subparagraph of Article 13(1) of Directive 93/98, Member States were to bring into force the laws, regulations
         and administrative provisions necessary to comply with Articles 1 to 11 of the directive before 1 July 1995.
      
       Directive 98/71
      7        According to recitals 2 and 3 in the preamble to Directive 98/71, the differences in the legal protection of designs offered
         by the legislation of the Member States directly affect the establishment and functioning of the internal market as regards
         goods embodying designs and can distort competition within the internal market; as a result the approximation of national
         design protection laws is necessary for the smooth functioning of the market.
      
      8        In the words of recital 8 to Directive 98/71, ‘in the absence of harmonisation of copyright law, it is important to establish
         the principle of cumulation of protection under specific registered design protection law and under copyright law, whilst
         leaving Member States free to establish the extent of copyright protection and the conditions under which such protection
         is conferred’. 
      
      9        Article 12 of Directive 98/71, entitled ‘Rights conferred by the design right’, provides as follows:
      
      ‘1. The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not
         having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the
         market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking
         such a product for those purposes.
      
      2. Where, under the law of a Member State, acts referred to in paragraph 1 could not be prevented before the date on which
         the provisions necessary to comply with this Directive entered into force, the rights conferred by the design right may not
         be invoked to prevent continuation of such acts by any person who had begun such acts prior to that date.’
      
      10      Article 17 of Directive 98/71, entitled ‘Relationship to copyright’ provides:
      
      ‘A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall
         also be eligible for protection under the law of copyright of that State as from the date on which the design was created
         or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level
         of originality required, shall be determined by each Member State.’
      
      11      The first subparagraph of Article 19(1) of Directive 98/71 provided that Member States were to bring into force the laws,
         regulations or administrative provisions necessary to comply with the directive not later than 28 October 2001.
      
       Directive 2001/29/EC
      12      Article 1 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain
         aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10), entitled ‘Scope’, states, at paragraph
         1, that the directive concerns the legal protection of copyright and related rights in the framework of the internal market,
         with particular emphasis on the information society.
      
      13      Article 2 of Directive 2001/29, entitled ‘Reproduction right’, provides:
      
      ‘Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction
         by any means and in any form, in whole or in part:
      
      (a)      for authors, of their works;
      …’
       National legislation
      14      Protection of designs is conferred by Royal Decree No 1411 of 25 August 1940 concerning provisions laid down by law in respect
         of patents for industrial designs (Gazzetta Ufficiale No 247 of 21 October 1940). In the version which applied until 19 April 2001, Article 5 of the royal decree provided:
      
      ‘An ornamental design patent may be granted in respect of a new design which is capable of conferring on certain industrial
         products a special ornamental character by virtue of shape or by a particular combination of lines, colours or other features.
         The provisions relating to copyright shall not apply to the abovementioned designs …’
      
      15      Point 4 of the first paragraph of Article 2 of Law No 633 of 22 April 1941 concerning copyright and other rights related to
         the exercise thereof (Gazzetta Ufficiale No 166 of 16 July 1941, ‘Law No 633/1941’), in the version which applied until 19 April 2001, made copyright protection for
         designs subject to the condition of ‘separability’ (‘scindabilità’), providing that copyright protection was afforded for
         ‘works …, even the industrial applications of such works, provided that their artistic value is separable from the industrial
         nature of the product with which they are associated’.
      
      16      Article 22 of Legislative Decree No 95 of 2 February 2001 implementing Directive 98/71 (GURI No 79 of 4 April 2001, ‘Legislative
         Decree No 95/2001’), which entered into force on 19 April 2001, amended point 4 of the first paragraph of Article 2 of Law
         No 633/1941, removing the requirement for ‘separability’ and adding to the categories of protected works, as a new point 10,
         ‘industrial designs which possess in themselves creative character and artistic value’. 
      
      17      Legislative Decree No 164 of 12 April 2001 implementing Directive 98/71 (GURI No 106 of 9 May 2001, ‘Legislative Decree No
         164/2001’), inserted Article 25a into Legislative Decree No 95/2001, which introduced, as a transitional provision, a 10-year
         moratorium starting on 19 April 2001, during which ‘the protection conferred on designs under point 10 of the first paragraph
         of Article 2 of Law [No 633/1941] shall not be enforceable as against those persons who engaged before that date in the manufacture,
         supply or marketing of products based on designs that were in, or had entered into, the public domain’.
      
      18      That provision was subsequently restated in Article 239 of the Italian Industrial Property Code (the ‘IPC’,) which was adopted
         in 2005. 
      
      19      Article 4(4) of Decree-Law No 10 of 15 February 2007 implementing Community and international obligations (GURI No 38 of 15
         February 2007), converted into a law by Law No 46 of 6 April 2007, abolished the 10-year moratorium introduced by Legislative
         Decree No 164/2001, amending Article 239 of the IPC. Article 239, as amended, provided:
      
      ‘The protection conferred on industrial designs under point 10 of the first paragraph of Article 2 of Law [No 633/1941] shall
         not be enforceable as against products based on designs that were in, or had entered into, the public domain prior to the
         entry into force of Legislative Decree [No 95/2001].’
      
       The dispute in the main proceedings and the questions referred for a preliminary ruling
      20      On 23 November 2006, Flos brought proceedings against Semeraro before the Tribunale di Milano (Milan district court) complaining
         that Semeraro had imported from China and marketed in Italy a lamp called the ‘Fluida’ lamp, which, in its submission, imitated
         all the stylistic and aesthetic features of the Arco lamp, an industrial design in which Flos claimed to hold the property
         rights. 
      
      21      It is apparent from the order for reference that, in interim proceedings preceding the action on the merits in which that
         order was made, it was found that the Arco lamp, which was created in 1962 and entered the public domain before 19 April 2001,
         was eligible for copyright protection as an industrial design under Law No 633/1941, as amended by Legislative Decree No 95/2001,
         and that the lamp imported by Semeraro ‘slavishly imitated all [its] stylistic and aesthetic features’. The court hearing
         the interim proceedings, by order of 29 December 2006, therefore confiscated the imported lamps and prohibited Semeraro from
         continuing to market them. 
      
      22      As regards the proceedings on the substance, the national court states that, since these proceedings were commenced, legislative
         amendments have been made concerning copyright protection for industrial designs and that some doubt arises as to their conformity
         with Directive 98/71 and, more specifically, with the principle of cumulation of protection established by Article 17 of that
         directive. 
      
      23      In particular, the national court refers in that regard to Article 239 of the IPC, as amended by Article 4(4) of Decree Law
         No 10 of 15 February 2007.
      
      24      In those circumstances, the Tribunale di Milano decided to stay the proceedings and to refer the following questions to the
         Court for a preliminary ruling:
      
      ‘1.      Must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a … law of a Member State which
         has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded
         to such a Member State to establish independently the extent to which, and the conditions under which, such protection is
         conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements
         for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which
         the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in
         so far as they had never been registered as designs or in so far as the relevant registration had already expired by that
         date?
      
       2.      If the answer to the first question is in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning
         that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal
         order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent
         to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection
         in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded
         as having entered the public domain before the date on which the statutory provisions introducing copyright protection for
         designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of
         the copyright on such designs – has already produced and marketed products based on such designs in that State?
      
      3.      If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted
         as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into
         its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently
         the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such
         protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell
         to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright
         protection for designs into the domestic legal order entered into force and where a third party – without authorisation from
         the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State,
         where protection is precluded for a substantial period (a period of 10 years)?’
      
       Consideration of the questions referred
       Preliminary observations
      25      The European Commission and Semeraro express some doubts as to the relevance of Article 19 of Directive 98/71 for the outcome
         of the dispute in the main proceedings, since that provision merely sets the period within which the Member States were to
         comply with the directive. 
      
      26      In that regard, the order for reference contains no explanation of the relevance, for the resolution of the dispute before
         the national court, of the expiry of the period for transposition of Directive 98/71. Indeed, in the grounds explaining this
         reference for a preliminary ruling, the national court refers solely to Article 17 of Directive 98/71.
      
      27      The questions should therefore be considered to relate essentially to Article 17 of Directive 98/71 and accordingly the Court
         will reply to them in the light of that provision alone.
      
       First question
      28      By its first question, the national court asks, in essence, whether Article 17 of Directive 98/71 must be interpreted as precluding
         legislation of a Member State which excludes from copyright protection designs which were in, or entered into, the public
         domain before the date of entry into force of the legislation that introduced such protection into the domestic legal order
         of that State, either because the designs were never registered as such or because their registration had ceased to have effect
         as at that date, although they met all the requirements to be eligible for such protection.
      
      29      The national court thus envisages two cases: first, the case of designs which, before the date of entry into force of the
         national legislation transposing Directive 98/71 (19 April 2001), were in the public domain because they had not been registered
         as designs and, second, the case of designs which, before that date, entered the public domain because the protection deriving
         from registration ceased to have effect. 
      
      30      In that regard, although Flos stated, at the hearing, that it had not registered the lamp at issue in the main proceedings
         as a design, the order for reference provides no information in that respect.
      
      31      The Court must therefore take into account both the cases mentioned in paragraph 29 of this judgment when it replies to the
         first question. It falls to the national court to determine whether or not the lamp was registered as a design. 
      
      32      As regards the first case (that of designs which have never been registered as such), Article 17 of Directive 98/71 provides
         that only a design protected by a design right registered in or in respect of a Member State in accordance with that directive
         may be eligible, by virtue of the directive, for protection under the law of copyright of that State. 
      
      33      It follows that designs which, before the date of entry into force of the national legislation transposing Directive 98/71
         into the legal order of a Member State, were in the public domain because they had not been registered do not fall within
         the scope of Article 17 of the directive.
      
      34      However, it is conceivable that copyright protection for works which may be unregistered designs could arise under other directives
         concerning copyright, in particular Directive 2001/29, if the conditions for that directive’s application are met, a matter
         which falls to be determined by the national court.
      
      35      As regards the second case (that of designs which have entered the public domain because the protection resulting from registration
         has ceased to have effect), although the first sentence of Article 17 of Directive 98/71 provides that a design protected
         by a design right registered in or in respect of a Member State is also eligible for protection under the law of copyright
         of that State as from the date on which the design was created or fixed in any form, the second sentence of Article 17 allows
         the Member States to determine the extent to which, and the conditions under which, such a protection is conferred, including
         the level of originality required.
      
      36      However, the second sentence cannot be interpreted as meaning that Member States have a choice as to whether or not to confer
         copyright protection for a design protected by a design right registered in or in respect of a Member State if the design
         meets the conditions under which copyright protection is conferred. 
      
      37      Indeed, it is clear from the wording of Article 17 of Directive 98/71, and particularly from the use of the word ‘also’ in
         the first sentence thereof, that copyright protection must be conferred on all designs protected by a design right registered
         in or in respect of the Member State concerned.
      
      38      The intention of the European Union legislature to confer that protection also emerges clearly from recital 8 in the preamble
         to Directive 98/71, affirming, in the absence of harmonisation of copyright legislation, the principle of cumulation of protection
         under specific registered design protection law and under copyright law. 
      
      39      Nor does the fact that the Member States are entitled to determine the extent of copyright protection and the conditions under
         which it is conferred affect the term of that protection, since the term has already been harmonised at European Union level
         by Directive 93/98.
      
      40      In that regard, Article 1(1) of Directive 93/98 provides for copyright in a literary or artistic work within the meaning of
         Article 2 of the Berne Convention for the Protection of Literary and Artistic Works to run for the life of the author and
         for 70 years after his death. Article 10(2) of Directive 93/98 provides that that term of protection is to apply to all works
         and subject matter which, on 1 July 1995, were protected in at least one Member State.
      
      41      It follows that, under Article 17 of Directive 98/71, designs which were protected by a design right in or in respect of a
         Member State and which met the conditions under which copyright protection is conferred by the Member States, in particular
         the condition relating to the level of originality, and in respect of which the term laid down in Article 1(1) of Directive
         93/98, in conjunction with Article 10(2) thereof, had not yet expired, were to be eligible for copyright protection in that
         Member State. 
      
      42      In that regard, as the Court stated in paragraphs 18 to 20 of its judgment in Case C‑60/98 Butterfly Music [1999] ECR I‑3939, it is clear from Article 10(2) of Directive 93/98 that application of the terms of protection laid down
         by the directive may have the effect, in the Member States which had a shorter term of protection under their legislation,
         of protecting afresh works or subject matter which had entered the public domain. The Court held that that consequence results
         from the express will of the European Union legislature and that such a solution was intended to achieve as rapidly as possible
         the objective – formulated, in particular, in recital 2 in the preamble to Directive 93/98 – of harmonising the national laws
         on the terms of protection of copyright and related rights and to avoid the situation where rights have expired in some Member
         States but are protected in others.
      
      43      That reasoning must also hold true in relation to the revival of copyright protection for designs which were previously protected
         by another intellectual property right. Indeed, in view of recitals 2 and 3 in the preamble to Directive 98/71, national law
         transposing the directive cannot – without undermining both the uniform application of the directive throughout the European
         Union and the smooth functioning of the internal market for products incorporating designs – preclude copyright protection
         in the case of designs which, although being in the public domain before the date of entry into force of the national law
         concerned, at that date meet all the requirements to be eligible for such protection. 
      
      44      Accordingly, the answer to the first question is that Article 17 of Directive 98/71 must be interpreted as precluding legislation
         of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right
         registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that
         legislation, although they meet all the requirements to be eligible for such protection.
      
       Second and third questions
      45      By its second and third questions, which it is appropriate to consider together, the national court asks, in essence, whether
         Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial
         period, namely 10 years, or completely – excludes from copyright protection designs which, although they meet all the requirements
         to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation,
         that being the case with regard to third parties who have produced and marketed products based on such designs in that State.
      
      46      Concerning the revival of protection under an intellectual property right, namely copyright, for designs which were in the
         public domain, Flos, the Italian Government and the Commission, in their written observations, and Semeraro, at the hearing,
         maintained that such protection is likely to give rise to a conflict between, on the one hand, the legitimate interests of
         the rightholders and their successors in title and, on the other, the interests of third parties acting in good faith who
         had relied on the availability of the designs in order to produce or market products on the basis of those designs. 
      
      47      It is true that national legislation transposing Directive 98/71, such as Legislative Decree No 164/2001 inserting Article
         25a into Legislative Decree No 95/2001, and Article 239 of the IPC, setting a 10-year moratorium which renders the protection
         of the designs concerned unenforceable as against a category of third parties to have manufactured products on the basis of
         those designs before 19 April 2001, may give rise to a legitimate expectation, on the part of third party producers of those
         products, that they will be able to continue using those designs.
      
      48      However, as regards the application of copyright protection to designs, Directive 98/71, unlike Article 10(3) of Directive
         93/98, does not contain express provision as to its application in time so far as the protection of the acquired rights and
         legitimate expectations of third parties is concerned. 
      
      49      In that regard, Article 12(2) of Directive 98/71, which concerns the carrying out of acts of exploitation of designs by any
         person who first carried out such acts before the date of entry into force of the national provisions transposing the directive,
         relates solely to rights conferred by registration of a design, as is apparent from the actual wording of Article 12(2), and
         it cannot therefore apply in relation to copyright protection. 
      
      50      However, the absence of a provision expressly referring to protection, for third parties, of acquired rights and legitimate
         expectations in relation to the revival of copyright protection provided for in Article 17 of Directive 98/71 does not preclude
         application of the principle that acquired rights must be respected or the principle of legitimate expectations, both of which
         are among the fundamental principles of European Union law. 
      
      51      In that connection, it should be recalled that, in accordance with the principle that amending legislation applies, except
         where otherwise provided, to the future consequences of situations which arose under the law as it stood before amendment
         (see, in particular, Case 68/69 Brock [1970] ECR 171, paragraph 6; Case 270/84 Licata v Economic and Social Committee [1986] ECR 2305, paragraph 31; and Butterfly Music, paragraph 24), acts performed before the date of entry into force of new legislation continue to be governed by the previous
         law. Thus, the revival of copyright protection has no effect on acts of exploitation definitively performed by a third party
         before the date on which such rights became applicable. 
      
      52      Conversely, by virtue of that principle, the fact that copyright protection applies with regard to the future consequences
         of situations which are not definitively settled means that it has an effect on a third party’s rights to continue the exploitation
         of subject-matter which is protected afresh by an intellectual property right (see, to that effect, Butterfly Music, paragraph 24).
      
      53      It should also be recalled that it is settled case-law that the principle of the protection of legitimate expectations cannot
         be extended to the point of generally preventing new rules from applying to the future consequences of situations which arose
         under the earlier rules (see, to that effect, Case 278/84 Germany v Commission [1987] ECR 1, paragraph 36; Case 203/86 Spain v Council [1988] ECR 4563, paragraph 19; Case C-221/88 Busseni [1990] ECR I-495, paragraph 35; and Butterfly Music, paragraph 25). 
      
      54      In this instance, the Member State concerned adopted two types of legislative measure intended to protect the acquired rights
         and legitimate expectations of a particular category of third parties.
      
      55      As regards, in the first place, the legislative measure providing for a transitional period in relation to a specific category
         of third parties with a view to protecting their legitimate interests, it follows from the principle that acquired rights
         must be respected and from the principle of the protection of legitimate expectations that Article 17 of Directive 98/71 does
         not preclude such a measure, provided that the measure does not have the effect of deferring for a substantial period the
         application of the new rules on copyright protection for designs so as to prevent them from applying on the date laid down
         by that directive (see, to that effect, Butterfly Music, paragraphs 23 and 28).
      
      56      In that regard, the assessment of the compatibility of the length of that transitional period and of the category of third
         parties covered by the legislative measure must be carried out in the light of the principle of proportionality.
      
      57      Accordingly, the legislative measure adopted by the Member State concerned must be appropriate for attaining the objective
         pursued by the national law and necessary for that purpose – namely ensuring that a balance is struck between, on the one
         hand, the acquired rights and legitimate expectations of the third parties concerned and, on the other, the interests of the
         rightholders. Care must also be taken to make sure that the measure does not go beyond what is needed to ensure that that
         balance is struck. 
      
      58      For that purpose, the measure may be regarded as appropriate only if it is directed at a category of third parties entitled
         to rely on the principle of protection of legitimate expectations – that is to say, persons who have already performed acts
         of exploitation in relation to designs within the public domain at the date of entry into force of the legislation transposing
         Article 17 of Directive 98/71 into the domestic law of the Member State concerned.
      
      59      Furthermore, the legislative measure should ensure that the period of use of the designs by those third parties is limited
         to what is necessary for them to phase out the part of their business that is based on earlier use of those designs or to
         clear their stock. 
      
      60      The measure does not go beyond what is necessary to ensure that a balance is struck between the competing rights if it does
         not defer entitlement to copyright protection for a substantial period.
      
      61      In this instance, as regards the definition of the category of third parties as against whom it is provided that copyright
         protection is for a temporary period to be unenforceable, Legislative Decree No 95/2001 and Article 239 of the IPC may be
         regarded as appropriate since they are directed solely at persons who acquired their rights before the entry into force of
         the national measures transposing Directive 98/71. 
      
      62      Conversely, unenforceability for a transitional period of 10 years does not appear to be justified by the need to safeguard
         the economic interests of third parties acting in good faith, since it is apparent that a shorter period would also allow
         the part of their business that is based on earlier use of those designs to be phased out and, even more so, their stock to
         be cleared.
      
      63      Furthermore, a 10-year moratorium in respect of copyright protection appears to go beyond what is necessary, since, by taking
         10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application
         of copyright protection is deferred for a substantial period.
      
      64      As regards, in the second place, Article 4(4) of Decree Law No 10 of 15 February 2007, abolishing the moratorium and rendering
         copyright protection unenforceable for an indefinite period in the case of products manufactured on the basis of designs which
         were in the public domain before 19 April 2001, it follows from the foregoing that such a measure negates Article 17 of Directive
         98/71, since it has the effect of preventing, generally, the application of the new protection, that is to say, protection
         relating to copyright. Nor does that measure seek to restrict the category of third parties who may rely on the principle
         of the protection of legitimate expectations. On the contrary, the measure renders copyright more generally unenforceable,
         since, under the provision, it is not necessary for a third party to have begun exploiting the designs before 19 April 2001.
         
      
      65      In view of all the foregoing considerations, the answer to the second and third questions is that, Article 17 of Directive
         98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial period of 10 years
         or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for
         copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case
         with regard to any third party who has manufactured or marketed products based on such designs in that State – irrespective
         of the date on which those acts were performed.
      
       Costs
      66      Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court,
         the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs
         of those parties, are not recoverable.
      
      On those grounds, the Court (Second Chamber) hereby rules:
      1.      Article 17 of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection
            of designs must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that
            Member State designs which were protected by a design right registered in or in respect of a Member State and which entered
            the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible
            for copyright protection. 
      2.      Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial
            period of 10 years or completely – excludes from copyright protection designs which, although they meet all the requirements
            to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation,
            that being the case with regard to any third party who has manufactured or marketed products based on such designs in that
            State – irrespective of the date on which those acts were performed. 
      [Signatures]
      * Language of the case: Italian.