The concept of “prototype” and ensuing rights

Copyright law regulates the relationships between the copy of a work and its reproductions through an article, namely art. 109 of Italian Copyright Law (in brief, LA), that deals with two separate cases and provides that:

« Unless differently agreed, the transfer of one or more copies of a work does not entail the conveyance of the rights of use, regulated by this law.

However, the transfer of a mould, engraved copper or other similar means used to reproduce a work of art includes, unless differently agreed, the right to reproduce the work of art itself provided that the transferor is entitled to such a right».

The first case regards the transfer of a work of art, a painting for example, to a subject that purchases it to enjoy it directly.

The transfer concerns the material object (the painting) which in legal terms is defined as the “corpus mysticum” and is restricted to that.

Therefore the purchaser of a work of art can only use it, look at it and enjoy it, but shall never be able to reproduce it nor even use it, for example, for advertising purposes or sell copies or photographs thereof.

The second case regards, on the other hand, the creation of an object for the purpose of reproducing a work of art. The classic case is that of a mould, but art. 109, second paragraph, adds that the rule provided herein also applies to any “similar means” that can be used to reproduce a work of art.

In one of its rulings (ruling no. 20188 of 18.08.2017), the Court of Cassation had to deal with a case fraught with difficulties that stemmed from the transfer of rights to the artistic drawing of a glasswindow, which had been used as the prototype for subsequent ones.

The heirs of the author of the drawing advocated that art. 109, first paragraph, LA applied and that therefore the transferee had no right to make glasswindows that reproduced that drawing. On the contrary, the glassworks that had purchased it asserted that that drawing was in fact the “mould” to carry out artistic glasswindows and, as a result, the second paragraph of the aforesaid article had to be applied.

The Court held in favour of the purchaser as the second paragraph of art. 109 LA must be interpreted so as to encompass any means that can be used as a matrix for the execution of subsequent works of art and believed it was correct to treat the drawing as the mould:

«And such a treatment is justified by the underlying consideration that the drawing, which concerns the case at hand, is not viewed as an object in itself for immediate use, but as a reproduction tool. Now, the trial Court gave an extensive rather than an analogic interpretation of the provision, considering the prototype not (only) as the copy of the work, but as the means used to reproduce the work of art, that is the project developed by the designer, to be subsequently transmitted to the technical office of the glassworks to reproduce the additional pieces.»

Although art. 109 LA is an exceptional provision, hence of strict interpretation, the extensive interpretation is nonetheless allowed and necessary to respect the will of the legislator.

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