On 28 July, the Court of Cassation handed down a decision establishing that a design object, and specifically the Rubik’s Cube, qualifies as a work of intellectual creation and is therefore protected by copyright under Italian law pursuant to Law No. 633 of 22 April 1941.
The Facts of the Case
The defendant, a Chinese trader, had been convicted by both the Court of First Instance and the Court of Appeal and sentenced in accordance with the law for the criminal infringement of copyright, in particular for having reproduced and/or offered for sale twenty-one Rubik’s Cubes without authorization.
The Rubik’s Cube was deemed by the courts of merit to be a product possessing creativity and originality, thus qualifying as a work of intellectual creation protected under Italian copyright law. Specifically, the combination of geometric form, colors, and mechanical structure was held to display the requisite characteristics for such protection.
The defendant subsequently lodged an appeal before the Court of Cassation, arguing, conversely, that the Rubik’s Cube should be freely reproducible, as it merely constitutes a toy lacking the requirements necessary to qualify for protection under Italian copyright law. In particular, she relied on the case law of the Court of Justice of the European Union, which had denied the registration of the Cube as a trademark.
The Rubik’s Cube
It is the well-known three-dimensional puzzle created in 1974 by the design professor and architect Ernő Rubik, characterized by its distinctive colors, shape, and operating mechanism. The puzzle, whose internal mechanism allows for millions of possible configurations, is exhibited at the Museum of Modern Art (MoMA) in New York as an expression of design and a symbol of the 1980s.
The Case Law of the Court of Justice of the European Union
The appellant relied on recent case law developed by the General Court of the European Union, which ordered the annulment of the trademarks consisting of the three-dimensional shape of the Rubik’s Cube. Considering it to be merely a shape necessary for the functioning of an object, the Court applied EU legislation prohibiting the registration of trademarks consisting exclusively of a shape necessary to obtain a technical result.
Accordingly, the Rubik’s Cube cannot be registered in Europe as a three-dimensional shape mark.
The Ruling of the Supreme Court
The Supreme Court held that the appeal was unfounded and dismissed it, endorsing the reasoning set out by the lower courts.
As a preliminary matter, the Justices clarified that the protection afforded by Italian copyright law concerns copyright as such, understood as the authorship of a work of intellectual creation, as well as the rights connected with its exercise, including the right to its economic exploitation, irrespective of any formalities relating to trademark or patent protection.
With regard to the Rubik’s Cube, the Justices of the Court of Cassation observed that the defense argument concerning the annulment of the trademark was irrelevant, since the acknowledged impossibility of registering the Cube’s three-dimensional shape mark — consisting of six faces in specific colors — does not preclude, for the purposes of the offence charged, its qualification as a work of intellectual creation protected by copyright.
The case law of the Court of Cassation is well established in this respect: in previous cases, the same principle had been applied to the sale of T-shirts reproducing cartoon characters; to the possession for sale of mobile phone holders unlawfully reproducing printed images of cartoon characters intended for cinematic and television distribution; and to another case concerning the protection of images depicting cartoon characters.
The Legal Principle Established
In Italy, works qualifying as industrial design may likewise receive criminal law protection as works of intellectual creation.
Concluding Remarks
In Italy, the criminal protection afforded to design objects is not contingent upon trademark or patent protection; rather, it is granted to a work of intellectual creation as the result of creative activity. Industrial design objects are therefore recognized and protected under criminal law where they meet the requirements established by copyright legislation, namely creative character, originality, and artistic value.
In the case of the Rubik’s Cube, these requirements are clearly satisfied: the author’s creativity produced an object whose originality is evident in its six faces, the distinctive combination of colors, the cubic geometric form, the rotational mechanism, and the possibility of achieving millions of configurations.
For these reasons, it has become a symbol of an era and cannot be equated with a mere puzzle, which would not benefit from protection under copyright law.
Studio dal Pozzo, law firm based in Milan, provides assistance to private individuals, organizations and businesses.