The Supreme Court takes stock of the concept of parody in our legal system

Laura Bussoli - Senior Associate

Eleonora Carletti - Junior Associate

By Dec. 30, 2022, in ruling No. 38165, the Supreme Court ruled, among other things, on the legitimacy of an advertisement starring the fictional character Zorro. In this context, the Supreme Court addressed some issues particularly relevant to copyright, such as the protection of fictional characters regardless of the work in which they appear as well as the protection, under certain conditions and within certain limits, of the parody work in our legal system. The issue on which the Supreme Court ruled starts from the broadcasting of an advertising campaign for a well-known mineral water ("Brio Blu") featuring as its protagonist the famous character of Zorro, created by the writer Johnston McCulley in 1919 and on which the U.S. company Zorro Productions Inc. claims copyrights, in addition to other Intellectual Property rights that has been claimed.

In the “infringing” advertising spot, Zorro was used, in a comic and satirical key, in order to advertise a product (water). As a result of this use of the Zorro character, which allegedly took place without authorization, the American company sued the mineral water company, claiming infringement of its copyright on the Zorro character, as well as a long series of breaches related specifically to the protection of its intellectual property rights.

After the first instance, in which the Court of Rome condemned the defendant company to indemnify Zorro production Inc. for the infringement of its copyright, and the second instance, while the Court of Appeal, had denied such damages, on the basis that - according to the judges – the Zorro character is now in the public domain (and, therefore, there would be no valid copyright to protect), the Supreme Court fixed some very important points on copyright, and in particular on the parodistic use of a work (or character) on which - evidently - copyrights are still valid and existing.

First of all, therefore, the Supreme Court excludes the fall into the public domain of copyrights on the work and on the character of Zorro, deeming applicable the Article 25 of our copyright law (L. 633/1941 “LDA”), which provides the copyright protection until the seventieth year after the author’s death.

Secondly, and this is the main issue of this decision, the Court pointed out the content and limits of parody in our legal system. Since our legal system does not expressly provide among the so-called “exceptions” to the copyright protection, the hypothesis of “parody”, according to the Supreme Court the latter finds, instead, full recognition in our legal system pursuant to art. 70 LDA, “as an expression of thought”: according to the Supreme Court in fact, “the lawfulness of the parody of the work or character created by other people finds its basis in the free use referred to in the above mentioned Art. 70, paragraph 1, L. No. 633/1942”. In fact, this article allows the summary, citation or reproduction of extracts or parts of works and their communication to the public, “made for critical use or discussion, within the limits justified by such purposes and as long as they do not constitute competition to the economic use of the work.”

According to the Supreme Court in the very first place, for the purpose of the recognition of the lawfulness of parody, it is not required that the parody acts as a “creative elaboration” or original of the original work in accordance with Article 4 LDA, since the association to the main work is a congenital and fundamental element of the parody itself. Moreover, if this were the case, the Supreme Court points out, it would be necessary from time to time to obtain the authorization of the author of the original work, who would hardly consent to the “comic misrepresentation of it.”

Moreover, and this is the second very important point of this decision, the reference contained in Article 70 LDA “provided that they do not constitute competition to the economic use of the work” by no means should be interpreted, as the Rome Court of Appeals erroneously did, in the sense of "commercial or profit-making purpose."

Therefore, uses allowed by Article 70 LDA - including parody – now seem to be not excluded if there is a profit or commercial purpose the author of the parody may pursue, even incidentally: they are excluded only in the case of a competitive relationship between the original work and the parody itself.

In conclusion, according to the Supreme Court, the lawfulness of parody reposes, in addition to the free expression of thought, both in the functionality of it with respect to its parodistic and satirical purpose (i.e., it must not have purposes and contents that are merely denigrating and depreciating of the main work or of one of its characters) and in the absence of a competition relationship with the protected work that would instead make the parody descend from an unlawful exploitation of the work itself.

This important interpretation of parody in our legal system fits perfectly into the interpretative groove of the Court of Justice, which argued its conclusion by stating that it is necessary to make a balance between opposing interests, namely, from one hand the exclusive rights of reproduction and communication to the public of the work, and on the other hand, the user’s freedom of expression of a protected work, which benefits of the parody exception (EU Court of Justice, C-201/13, cited above, 34).

Italian version

Intellectual Property

Copyright

INTERNET SERVICE PROVIDER - lights and shades of Italian case-law pending transposition of Directive 2019/790

Gaia Bellomo - Senior Associate

With two recent judgments of January 20 and 21 2021, the specialized section of the Court of Rome sanctioned two internet service providers, Veoh and Dailymotion, for having broadcast on their platforms television programs owned by RTI (Reti Televisive Italiane) and sentenced them to pay damages for breach of copyright for a total sum of more than 25 million Euros.

This case concerned the unauthorized transmission of videos and clips of some of the most famous programs on R.T.I.'s schedule, such as "Uomini e Donne", "C'è posta per te", "Casa Vianello", "Melaverde".

The Court upheld R.T.I.'s argument that, as producer and broadcaster of the programs listed above, Veoh and Dailymotion infringed its exclusive right connected to the copyright of reproduction and exploitation of its own works (pursuant to Articles 78-ter and 79 of Law No. 633/1941).

The legal issue at the heart of the matter concerns the degree of liability attributable to internet service providers for the unlawful acts committed through the internet by the users of the same platforms: Veoh and Dailymotion claimed, in fact, to be simple "hosting providers" and to play a merely passive role with respect to the content shared by the users, who, by accepting the policy of use of the platform, undertake not to violate the rights of third parties and assume on their own all the liabilities.

In this regard, the European "E-Commerce" Directive provides that the hosting provider cannot be held liable for materials posted by users of the platform provided that it is not aware of its unlawfulness and, as soon as it becomes aware of it, it immediately removes the information and content that infringes the rights of third parties (Art. 14 Dir. 2000/31/EC).

The Court ruled out the merely passive nature of the hosting activities of Veoh and Dailymotion, highlighting the fact that both portals indexed the content uploaded by users by creating thematic channels and associating numerous advertisements to the programs; these activities were not considered compatible with a merely passive role of the platforms which are intended to make a service available to users without intervening. According to the Court, since the platforms’ managers through the activities of indexing and cataloguing s necessarily became aware of the content of the catalogued videos, including the fact that there are works protected by copyright, they cannot be held just as passive holders.

This approach is compatible with the interpretation provided by the Court of Justice with respect to the role of e-commerce platforms, which has held that there is a liability of the hosting service provider where the latter performs content management activity of any kind, such as optimizing the presentation of offers for sale and promoting them.

In this sense, Article 17 of the Directive on Copyright and Related Rights in the Digital Single Market (Directive (EU) 2019/790), soon to be transposed in Italy and not yet in force, now provides direct liability for the sharing activity performed by a service provider which infringes copyright works by the upload of its users and places a stricter duty of care on video-sharing platforms. The European standard now requires platforms wishing to be exempt from liability either to negotiate collective licenses with copyright holders in advance or to comply with certain cumulative requirements consisting of having made best efforts to obtain permission from right holders, to ensure that specific works and other materials for which they have received information are not available for licensing, and to demonstrate that they have acted promptly upon notice to disable access to or remove from the website the works or other materials for which they have received notice and to prevent their future uploading.

Going back to the judgments, a merely passive role of Veoh and Dailymotion cannot be recognized in the case at stake since, according to the Court, the exemption of liability provided for by Article 14 of the Directive could not apply, having RTI previously indicated to the platforms which contents to remove and having the platforms not promptly removed them all.

In this respect, the two judgments of the Court of Rome, which held that it was sufficient for RTI to have indicated to the ISPs the name and title of the program and not the URL (Uniform Resource Locator, i.e. a sequence of characters that uniquely identifies the address of a resource) appears to be inconsistent either with the orientation of the EU legislator, which established that the information provided by the copyright holder to the provider to identify the contents must be relevant and necessary, nor with the national case law, which established that the lack of indication of the URL was not sufficient to trigger the provider's obligation to remove the infringing contents (thus Tr. Turin, Dailymotion v. Deltatv Programs, judgment of 17 November 2017, where it is stated that the failure to indicate the URL is inconsistent because: "...to expect the ISP to "scan" the contents of the materials already uploaded on the platform before they were reported with a specific URL, unjustifiably goes beyond the point of balance, identified above, between the opposing roles and interests of the hosting provider and the copyright holder who complains of the infringement of his rights").

Court of Rome, judgments 20 - 22 January 2021

Prince's single 'The most beautiful girl in the world': compensation for moral damages for infringement of copyright also confirmed.

Laura Bussoli - Senior Associate

The case is not recent, (it all started in 1995...), but a few days ago the Supreme Court gave its last word on the mount of damages due to Bruno Bergonzi and Michele Vicino from the heirs of the famous American pop star, Prince Rogers Nelson, better known as Prince, for having violated the latter's copyright with the famous song "The most beautiful girl in the world".

On January 25th 2021, the Supreme Court ruled on the appeal filed by Prince's heirs against the 2018 decision of the Rome Court of Appeal awarding the two Italian authors, in addition to economic damages (in Euro 956,608.00...), also moral damages, in the lower amount of Euro 40,000.00, for the "artistic frustration" suffered by the same authors as a result of the plagiarism of their original work.

But let's take a step back: in 1995 Bruno Bergonzi and Michele Vicino together with Edizioni Chappell s.r.l. - respectively authors and assignee of the exploitation rights of the song "Takin' me to paradise" - brought an action before the Court of Rome to ascertain the plagiarism of the above-mentioned musical work by Prince Rogers Nelson, Controversy Inc. and Fortissimo Gruppo Editoriale s.r.I., respectively author and assignee of the economic rights of the song distributed under the title "The most beautiful girl in the world", with the consequent sentence to pay compensation for economic and moral damages.

On January 30th 2003, the Court of Rome rejected the application of Bruno Bergonzi, Michele Vicino and Edizioni Chappell s.r.l..

However (although after 7 years...) the first Court's decision was overturned on appeal: the Court of Appeal ascertained the plagiarism, prohibited the diffusion of the song in the Italian State and condemned Prince and Controversy Inc. jointly and severally, to pay compensation for economic damages liquidated in the amount of Euro 956.608.00 to Bergonzi and Vicino. Fortissimo Gruppo Editoriale was instead condemned to pay compensation in the lower amount of Euro 6,888.40; in this judgment, the Court of Appeal rejected, however, the claim for compensation for damages for breach of moral rights of the Italian authors, deeming insufficient the allegations of evidence in support of such damage provided by the plaintiffs.

This ruling was appealed and with judgment no. 11225 of May 29th 2015, where the Supreme Court ruled on both the extension of the effects of the conviction limited to the Italian territory and on the non-recognition of the infringement of the moral copyright, considering that the latter should instead have been recognized .

In particular, the Supreme Court held that the reasoning of the Court of Appeal of Rome was apodictic when it assessed as insufficient the evidence put forward in support of the moral damage suffered by the authors in their documents, reiterating the well-known principle, therefore also applicable to the infringement of moral copyright, according to which, in the event of an ascertained infringement of the same, the damage suffered by the author must be considered in re ipsa and as such must be demonstrated only in its extent, without the plaintiff being required to prove anything else. According to the Supreme Court, the "artistic frustration" complained of and suffered by authors as a result of plagiarism is sufficient to justify the claim for compensation for the moral right.

In 2018, the Court of Appeal of Rome issued a judgment prohibiting Prince's heirs from any further reproduction of the song "The most beautiful girl in the world" and, on the basis of the referral of the Supreme Court, sentenced them, to pay the sum of EUR 40,000.00 each, calculated on an equitable basis, plus interest for moral compensation.

This seemed to be the end of the matter, but the heirs of the famous pop star challenged the decision again, complaining - as far as is relevant here - of the incorrect application of the rules on moral copyright: this last appeal was entirely rejected by the Supreme Court in its recent ruling, which confirmed the accuracy of the argument followed by the Court of Appeal in settling damages for breach of moral copyright.

The judgment, which definitively closes the case of The Most Beautiful Girl in the World, concerns not only the already widely recognized right of the judge to settle the damage, including moral damage, resulting from copyright infringement on an equitable basis, but above all. the sure connection that can and must exist - says the Court - between the extent of moral damage (and the relative compensation) and the space-time dimensions of the plagiaristic conduct, and therefore, ultimately, of diffusion and success of the infringing work.

Can an anonymous work be protected as a trademark?

Gianpaolo Todisco

According to a recent decision of the EUIPO (Intellectual Property Office of the European Union) it would seem not to be the case: the rejection by the Office of the request for trademark cancellation made by the Full Color Black (manufacturer of greeting cards).

This all started when, in 2014, Banksy decided to register his famous work "The Flower Thrower" as a trademark with the European Union; it is a mural made in Jerusalem in 2005 and still wants to remember how wars and battles should be fought with the flower of hope and abandon violence. In accordance with his line of action characterized by irony, provocation and marketing strategies, the famous British writer has registered the work as a trademark to protect any products distinguished by the famous work.

Howeverthe British greeting card company Full Colour Black, sued by Banksy for counterfeiting, claimed that the trademark should be cancelled because it never intended to use it on any products. This was the argument used by Full Color Black's attorney to exonerate her from the 2018 copyright infringement charge. Well, with the decision of 14 September 2020 the EUIPO rejected the artist's request because, according to the Community Trademark Regulation, in order to claim its right on those images it is necessary to leave the anonymity.

To renounce anonymity, however, would damage the aura of mystery that surrounds him. Banksy has the opportunity to appeal within two months of the ruling, but the legal discipline on the matter makes it clear that the Writer risks losing the protectability of all other works if he chooses not to disclose himself.

Photography and fashion. Clovers obtains a favorable ruling from the Court of Milan on the unauthorized use of a photograph on a fashion collection.

Gianpaolo Todisco – Partner

Laura Bussoli - Associate

One of the gaments of the collection.

Last week the Court of Milan sentenced the company founded by stylist Antonio Marras to pay damages to the American photographer, Daniel J. Cox, for the unauthorized reproduction of a photograph of the latter on clothing.

Daniel J Cox is one of the most successful nature photographers and author of several covers of National Geographic magazine and he know as being the author of a monographic book dedicated to wolves.

The controversy arose when Fashion designer Antonio Marras used this image without the author's consent to develop its fashion collection.

The image was reproduced on a series of women's garments and presented during the woman’s 2014-2015 F/W fashion show in Milan and the collection was distributed and marketed worldwide.

After the parties unsuccessfully completed negotiations aimed at settling the case, the photographer invoked injunctive relief against unauthorized use of the image as well as compensation for damages quantified at the request of the same in the so-called price of consent.

The Court ruled that the image printed on several garments created by Marras coincided with the photograph shot by the plaintiff and met the requirements of the artistic and creative character necessary to access the "enhanced" protection provided by the Copyright Law.

Indeed, Italian copyright law grants photographs a dual level of protection, distinguishing between photographic works (or artistic photographs) and simple photographs.

The orginal photograph. Copyright Daniel J. Cox. - Natural Exposures. All rights reserved.

The difference - which is not always easy in practice - is traced by art. 87 of Italian Copyright Law which define as simple photographs "images of people or aspects, elements or facts of natural and social life, obtained by photographic or similar process, including reproductions of works of figurative art and film stills" and recognize the same protection as neighboring right.

 Conversely, there is no explicit legislative definition of an artistic photographic work  in the Copyright Law and this is left to a “case by case” "practical" evaluation by judges on the basis of a series of indexes.

Artistic photographs are treated like other artistic works have access full protection (up to 70 after the death of their author), whereas simple photographs, on the other hand, enjoy limited protection (20 years from the date of photograph’s production) and the photographer is only entitled to fair compensation in case of unlawful use.

A first and fundamental point of the decision rendered in the Cox/Marras case, concerns the recognition of the artistic value of photography: in the Court’s opinion the artistic value lies "in the creative capacity of the author, i.e. in his personal imprint, in the choice of the subject to be portrayed as well as in the moment of realization and reworking of the shot, such as to arouse suggestions that transcend the common aspect of the reality represented.

The choice to portray the animal in its natural environment and in adverse climatic conditions makes the shot "the result of study and careful photographic analysis by the author" and contributes to the recognition of its artistic value according to the Court.

It is also the technique that comes in this case in relief in order to correctly frame the image within the protected and protectable photographic works: "a wise blurring of the surrounding environment, thus enhancing the expression of the represented subject ... and evoking, in this way, peculiar suggestions in the observer such as to go beyond the mere graphic representation of the animal (...) "a wise use of chiaroscuro and the use, with creative purposes, of light ". Last, the specific authoritative recognition of the artist in the United States and the publishing of the photograph in a monographic work also helped the Court understand the nature of the work.

Therefore, once the artistic nature of the work has been ascertained, the use by the defendant company for commercial purposes of the photograph, by placing it on an item of clothing included in the women's collection, in the absence of any authorization from the author, "constitutes an open violation of the author's right to compensation for damages".

It is interesting to note that the Court of Milan rejected the defendant's objections to the alleged lawfulness of the use of the photograph, since the same can be found on the Google search engine.

The Court found that - "the mere availability on the web of a photograph certainly does not constitute a presumption of absence of authoritative rights, on the contrary, the burden of ascertaining whether or not third parties have rights".

In conclusion, the Court stated that the work of the photographer Daniel J. Cox should be considered to be protected by copyright law, as a creative work in the particular field of photography, ordering the defendants, jointly and severally, to pay damages to the applicant and ordering the publication of the operative part of the judgment by and at the expense of the defendants in the periodical Vanity Fair.

Through this judgment, the Court of Milan has analyzed several legal issues which are constantly being debated experts in the world of intellectual property.

Are Websites Responsible for Readers' posts?

The website manager, even if he is not a professional, is responsible for the comments posted by readers in his page, including those signed, and thus he can be sued for defamation. This is what has been determined for the first time in a decision published few days ago by the Supreme Court.

The case involves Carlo Tavecchio, president of the FIGC (Italian Football Federation), who has been vilified by a comment published in 2009 on a website, “Agenziacalcio.it”, which, due to this matter, has been obscured. The author of the comment called Mr. Tavecchio as a “emeritus scoundrel” and a “convicted felon”, attaching the relevant criminal record. 

At first instance, the operator was acquitted, then convicted on appeal and now the Supreme Court confirmes: he will have to pay to Mr. Tavecchio 6.000 euro, for conspiring in defamation.

According to the Court, there is a complicity by the website’s manager because he should have known it, as its author had sent him an e-mail containing that record. The defendant, instead, claims that he became aware of the libelous comment once the police notified him the seizure.

This ruling surprises because jurisprudence appeared to follow another direction: the European Court of Justice considers managers not responsible even for anonymous comments.

Last November Msssimiliano Tonelli, founder and manager of “Cartellopoli”, a website concerning Rome's decay, was cleared. In the first degree, the man was sentenced to nine months of prison for instigation to crime with regard to some anonymous comments. 

The previous interpretation, which, in 2014, has led to the conviction of the manager of Nuovocadore.it, seemed dropped.

Now, for the first time, the Court goes deeper and adopts a different point of view. Website mangers are all warned. Actually not only them, but all users. Whereas anyone can manage a website or another virtual space, with their (sometimes dangerous) own comments.