Italy: The role of aesthetic elements in slavish imitations

18 August 2014

Licia Garotti

On 3 February 2014, the Court of Appeal of Milan, overturning the first instance decision, found that Bratz dolls had been slavishly imitated by the “PopStyle” dolls, reproducing the same aesthetic features that were found on the original toys, including the unusual aggressive facial expression.

By analysing the shape of the respective products, the Court of Appeal held that:

  • The marketing of a doll having the same characterising features of a doll manufactured and distributed by a competitor constitutes an act of unfair competition for slavish imitation if the ensemble of the characteristics (e.g. the proportion of head and body, the accentuation of certain facial, the prominent make-up, etc) are such as to provide the appearance of a doll with a distinctive and unusual aggressive appearance, which appreciably differs from those of other dolls on the market;
  • The above assessment does not change, even if the claimant’s product is provided with some elements that were already available on the market, since “the distinctive and unusual aggressive profile of the Bratz doll substantially differs from both the typology of dolls targeted at younger children - characterised by an appearance designed to inspire tenderness and protection – and those loved by older girls that offer a kind of proportioned doll, with pleasing traits as a representation of a model of a successful girl, ideal beauty and seduction”;
  • The claimant is required to indicate what constitutes the characterising features of its product which have been imitated by the defendant’s product. This burden is discharged even if the characterising and distinctive capacity is provided by aesthetic features only.

By drawing the Bratz v PopStyle battle to a close, the Court of Appeal stressed that, for the kind of products at issue, it is almost impossible to imagine “unessential and fanciful features” (which are therefore characterising) “with no aesthetic connotation”. Therefore, to the extent that the prohibition against slavish imitation concerns the unessential (i.e. not functional) and fanciful features, for doll products, the assessment of slavish imitation will inevitably require an aesthetic approach. Otherwise an entire category of products would remain unprotected.