By Giulia Gialletti and Merel Lommen

The French fashion company Longchamp is well known for its Le Pliage tote bag, which has been one of the brand’s best-selling items since its launch in the nineties. However, in the recent decision of the Court of Milan of 13 December 2021, it became clear that the commercial success of a product is not sufficient for it to enjoy copyright protection. How did the Court of Milan come to this decision?

The case concerned the marketing of bags imitating the Le Pliage bag, where Longchamp claimed trademark and copyright infringement as well as unfair competition. As to the first claim, Longchamp had several EU registrations for 3D trademarks covering the trapezoidal shape and the distinctive elements of Le Pliage bag. Given that the contested product adopted all the distinctive elements of the original bag such as the stitches, the tubular handles and the two leather tongues at the ends of the zipper, the Court of Milan upheld the claim of trademark infringement.

However, regarding to the claim of copyright protection, the Court found that it was not applicable to Le Pliage bag because the requirement of “artistic value” for copyright protection was not met.  The artistic value can be inferred from a series of objective parameters, such as:

• the recognition by cultural and institutional circles of the aesthetic and artistic qualities of the product;
• exposure in exhibitions or museums
• publication in specialized magazines
• prizes awarded or
• the acquisition of a market value so high as to transcend that linked solely to its functionality or the creation by a well-known artist.

The Court explained that “it does not appear to be possible to identify, in the case in question, the actual existence of the artistic value required for such item to enjoy such specific protection”. In fact, the Court held that despite the undeniable commercial success of the bag demonstrated by 54 million units sold in 1,500 points of sale, Longchamp did not provide elements which could confirm the presence of the artistic value requirement in the external appearance of the handbag in question.

At first sight, it could thus be argued that the decision deviates from the most recent Italian case-law on copyright protection, especially after the Cofemel decision, where the Court of Justice of the European Union clarified that any national provision granting copyright protection to creative works subject to requirements other than originality (e.g. the Italian “artistic value” requirement or the Portuguese “aesthetic effect” in the case at stake) is not compliant with EU law.

However, the conclusions reached by the Court can be explained by the fact that Longchamp failed to provide adequate and specific evidence in relation to the artistic value requirement and there was a precedent of 2017 of the same Court on the same bag which denied copyright protection, which is expressly cited and relied on in the decision.

Therefore, since plaintiff did not submit any new argument or evidence, the Court did not have reason to depart from it precedent. In any event, the case shows the importance of building an exhaustive portfolio and the need to distinguish the evidence needed for the purposes of distinctiveness from that relating to artistic value because the commercial success of the product is suitable for the former but is not sufficient for the latter.

If you want further information on this topic, you can contact us at giulia.gialletti@dlapiper.com and merel.lommen@dlapiper.com.