The Instagram Trademark Battle has just begun.

The Office for Harmonization in the Internal Market (“OHIM”) recently declared the invalidity of the registered Community trademark “instaweather” confirming the possible confusion between Instagram’s famous trademark and other signs which use the prefix “Insta” and the suffix “Gram”.

 The “instaweather” trademark was filed in January 2013 for products in Class 9 (software), and it identifies an application that allows users to include weather information as tags on pictures, and then share those images on Instagram.

In its decision, the Office stated that the “instagram” and “instaweather” trademarks are similar when compared from a visual, aural and conceptual point of view. Moreover, the Office established that the “instagram” trademark enjoys a great reputation at the date on which the application for the “instaweather” trademark was filed by  demonstrating that the app had millions of users and was considered one of the leaders in the field of social networks together with Facebook, Twitter and Pinterest.

In light of all of the above, the OHIM then declared the invalidity of the Instaweather trademark. 

Does Fair Use Apply to Web Giants?

Google won a decisive victory on Friday in a copyright-infringement case that the Authors Guild originally launched almost a decade ago. A federal appeals court ruled that the company’s book-scanning project, which has turned millions of books into searchable digital files, is entitled to the full protection of the “fair use” clause in copyright law.

The case is hugely important, not just for Google (now part of a larger holding company called Alphabet) and the authors whose works are being digitized, but for the principle of fair use itself. Copyright law may be murky and difficult to pin down at the best of times, but interpreting the concept of fair use often makes regular copyright law look like a day at the beach.

That’s because what qualifies as fair use—which theoretically lets anyone use copyrighted content without having to get permission from the creator or rights-holder—isn’t specifically spelled out in federal copyright law. It’s something that ultimately has to be decided by a court, and even then the judges have to consider four factors before they can come to a decision. Those factors are:

• The purpose of the infringing use, specifically whether it qualifies as “transformative”
• The nature of the original content (i.e., whether it is artistic or commercial)
• The amount and “substantiality” of the original content that is used in the derivative work
• Whether the infringing use will affect the market for the original product or content

The part about Google being a multibillion-dollar entity was clearly what caused the Authors Guild to fight the case for so long—arguably long after it had already become obvious that it would probably lose. For the Guild, this was a classic case of David versus Goliath, with book authors representing the David character and Google the clearly evil Goliath using the work of others for its own purposes.

The appeals court, however, pointed out in its decision that the purpose of copyright law is not to guarantee authors a living, nor is it to give them exclusive control over who uses their work and how. The purpose of the law is to provide an incentive for people to create artistic works because doing this benefits society—and ultimately, the social benefit of Google Books outweighed the infringement aspect.

The key part of the ruling is that the book-scanning project was fundamentally “transformative” in nature. In other words, Google isn’t just copying the books it scans and indexes — it uses those copies to provide searchable “snippets” or short sections of each work so that users can find books more easily.

What Google does is significantly different from simply copying books wholesale and then putting them on the Internet, the court said. And it provides a clear social benefit. It also provides a potential benefit to authors themselves, since it makes their work much easier to find, which is why some authors opposed the long-running case launched by their union. But the Guild refused to give up.

If the fair use aspect of Google Books wasn’t already obvious, a recent decision by another federal court—in a case related to the Authors Guild vs. Google—showed that the Guild’s challenge was likely to fail. In that case, the authors’ group sued the Hathi Trust, a collective of universities that partnered with Google on the scanning project. In 2012, a federal court rejected the Guild’s argument and found that what Google was doing clearly qualified as fair use.

The Google Books decision doesn’t mean that the web giant can do whatever it wants with other people’s content and have that covered by fair use. But it does invalidate the argument that something done by a commercial entity can’t possibly qualify as fair use. And that’s an important point at a time when copyright holders seem to have all the power, and fair use often gets overlooked because it is seen as too confusing and not relevant.

Lindt wins the "Battle of the Bears" over Haribo

German confectionary maker Haribo has lost a long-running battle against Swiss chocolate giant Lindt after the Germany’s supreme court ruled that Lindt chocolate teddy bears were not a copy of the Haribo’s gummy bears.

"Lindt’s sale of bear-shaped chocolates wrapped in a golden foil with a red ribbon is neither a violation of Haribo's ‘Gold Bear’ trademark nor an illegal imitation of the fruit gum products," the court ruled on Wednesday.
Haribo produces a ‘Goldbär’ (‘Gold Bear’) gummy bears and the package features a cartoon bear wearing a red ribbon around its neck, while the Lindt & Sprüngli product features a bear caricature printed on gold foil, with a real red ribbon wrapped around its neck.
Bonn-based Haribo has been producing the ubiquitous gummy bear since the 1960s. The ‘Lindt Teddy’ came out in 2011.

The two sides had been locked in a three-year court battle after Haribo argued the two products were too similar and that people would confuse the two.

Cologne's regional court had originally ruled in favour of Haribo in 2012, but Lindt successfully appealed in Cologne last year. The case then moved to the Federal Court of Justice, Germany’s highest legal instance. The judgement is now final.

Have break, Kit Kat!

Confectionery giant Nestle's attempt to trademark the shape of its four-finger KitKat bar in the UK does not comply with European law, a senior European Court lawyer has said.
The opinion of the advocate-general effectively ends Nestle's attempts to trademark the snack. It also brings to an end the latest chapter in the internecine chocolate wars between Nestle and Cadbury.
The High Court had already rejected Nestle's trademark application in 2013. Advocate-general opinions are usually, although not always, followed by the European Court judges.
Had its application been successful, Nestle would have been able to prevent competitors making rival chocolate bars of the same shape and size.
But Nestle faced significant opposition to is trademark application from bitter rival Cadbury's and its US owner, Mondelez International.
The advocate-general opinion is the latest development in a more than 10-year battle between Nestle and Cadbury fought in the courts, which started when Cadbury tried to trademark the purple colour it uses on its Cadbury chocolate wrappers.
Nestle objected and finally had the original decision allowing Cadbury to trademark the colour overturned in 2013.
Now it appears Cadbury has had its revenge.

Fake Goldman Sachs is the Latest Chinese Trademark Infringement Case.

Goldman Sachs (Shenzhen) Financial Leasing comes to light after pirate branch of China Construction Bank offered customers deposits but no withdrawals. Goldman Sachs (Shenzhen) Financial Leasing Co has no connection with the New York-based financial institution. Its existence has come to light a few weeks after a Chinese man was arrested for setting up an entire fake bank branch. The company uses the same Chinese characters as the real Goldman Sachs does where it operates in the world’s second-largest economy.

Shenzhen’s Goldman Sachs was exposed by a letter sent by a US casino workers union to Chinese anti-corruption officials asking them to investigate the firm, Bloomberg News reported. The Chinese firm’s English font was evocative of the US bank’s, Bloomberg reported, labelling the company a “pirate” version of Goldman Sachs. The news came after a 39-year-old man in eastern China was arrested for setting up a fake branch of China Construction Bank including card readers, teller counters and signs, according to state-run media. Duped “customers” handed over money to make supposed deposits into their accounts but were refused withdrawals, reports said.

Enforcement of intellectual property laws in China is lax and counterfeiting of brands and products is rife. Several foreign firms have been embroiled in court cases over imitators. Basketball star Michael Jordan in July lost a case against a Chinese sportswear company that used the Chinese version of his name. Apple paid $60m to settle a trademark dispute with a Chinese company that had applied to block the sale of iPad computer tablets in 2012.

US Trademarks after the end of the Cuban Boycott

This post faces the problems  by international brands, returning to countries after years of boycotts. Some of you may recall the trademarks problems faced by multinationals in South Africa in the Apartheid era, only to find that other were mischievously using their brands.  There are some parallels with the situation in Cuba today, though the politics are different -- and so too is the legal framework within which problems fall to be resolved.

The opening of commercial relations between Cuba and United States is tempting some individuals to jump at the chance to register US trade marks in order to force trade mark holders to negotiate their entrance into the Cuban market. This means the emergence of the Cuban “trade mark troll” and “trade mark hijacking”.

A group of people has started to file applications of US trademarks, including some very famous ones. One of these is a Cuban citizen, who has applied to register at least 65 well known US trade marks including CHASE and NFL; in most cases he has applied for logos or device trademarks.

Cuba is a member of the Paris Convention but it is difficult to prove that a mark is well-known in Cuba when products bearing US trade marks have not been present on the Cuban market for many years.

An interesting and important exception to the territoriality principle in Cuban law can be found in the little-known General Inter-American Convention for Trade Mark and Commercial Protection (Washington 1929). This convention remains valid and in force today in all original contracting countries. Unlike the Paris Convention priority right, it is neither limited in time nor applied as of right. It is unlike the Paris Convention’s “well-known marks” protection in that the senior user does not have to prove fame in the country in which it seeks protection, but merely that the junior user was aware of the senior user’s rights in a member country.

Does the Cuban Trade Mark Office have the legal and political ability to enforce the provisions of the Washington Convention? This is a big question.

Sound and colors Protected are now protected as Trademarks in Japan.

On April 1, 2015, the Trademark Act 2014 has been amended to broaden the scope of trademark protection in Japan to encompass the following:

– Trademarks consisting of sounds, colors, holograms, motion and position;

– Regional collective trademarks.

However, the registration of olfactory and taste marks remains unfeasible in Japan.

As concerns sound marks, registration was already acknowledged by the former Japanese law for simple or musical sounds. Henceforth, the protection will be extended to very brief sound clips, provided that the marks are represented by a sound spectrogram or a musical score. On the other hand, music titles or composers names cannot be protected as trademarks.

The Japanese Patent Office also makes it clear that to register one or more colors as a trademark, the application must include a drawing or a picture indicative of the color or colors. However, the application for such a trademark will not be accepted if letters or numbers can be identified on the drawing or the photo.

This type of new trademarks is problematic with regards to the function of the trademark: it may be difficult for consumers to recognize them as indicators of the origin of the products or services. In this respect, the issue at stake is the manner in which the Office will assess the distinctiveness of these trademarks. Trademark applications based on a single color, the color which enhances the design of the product or a natural sound will likely be examined carefully by the Japanese Trademark Office.

The new trademark system provides an opportunity for rights holders to rethink their strategies.

Is Freedom of Panorma Under Attack?

On 9 July 2015, the European Parliament will vote on whether to abolish our right to freely take and share photographs, videos and drawings of buildings and works of public art.

“Freedom of panorama”, which is the right to take and use photos of cultural works located in public spaces — buildings, sculptures and public art. The Copyright Directive allows member states to create such an exception within their copyright laws but does not require it, so different countries naturally have taken different positions.

The UK has an explicit right under section 62 of the Copyright, Designs and Patents Act 1988, originally dating back to the Copyright Act 1911. Ireland’s Copyright and Related Rights Act 2000 (s93) and Australia’s Copyright Act 1968 (s65) provide the same rights.

For comparison, the USA would be pale green on this map — the equivalent law, 17 USC 120(a), excludes pictorial representations of buildings from the architect’s copyright, but does not provide the same exception for public works of art.

In other countries — notably France, Italy and Greece — there is absolutely no such right. In theory, in Italy, for example, when publishing pictures of “cultural goods” (buildings, sculptures, paintings and so on) for commercial purposes one must obtain authorization from the Ministry of Arts and Cultural Heritage.

Recently, the Legal Affairs committee (JURI), has just adopted French centrist MEP Jean-Marie Cavada’s amendment to the report, removing Freedom of Panorama rights across the EU (and EFTA) member-states by adding the following text to the following paragraph to Julia Reda’s report to the Eu Parliament’s review of the Copyright Directive (2001/29/EC):

“Considers that the commercial use of photographs, video footage or other images of works which are permanently located in physical public places should always be subject to prior authorization from the authors or any proxy acting for them”.

A restriction to Freedom of Panorama to non-commercial use would therefore bring millions of Europeans into conflict with copyright law over their perfectly harmless, everyday online usage.

The restriction of Freedom of Panorama would also greatly complicate the business of journalists, professional photographers or documentary filmmakers, whose activities are clearly commercial, but who have for decades been able to rely upon the public space as a resource that can be used freely by anybody without having to negotiate a license first. If one goal of copyright law is to stimulate the creation of new art and information, this change would clearly be counter-productive. In contrast to some artists relying on the public space to create their works, the main source of income for architects certainly isn’t the sale of illustrations of the finished building.

It’s easy to see that the overall effect of a restriction of Freedom of Panorama for creators would be negative.

The Plain Packaging Saga

Two of the world’s biggest tobacco companies, namely Philip Morris International (PMI) and British American Tobacco (BAT), have recently filed lawsuits against the UK Government over its plan to introduce plain packaging for tobacco products. Both PMI and BAT argue that the measures deprive them of property in the form of trademarks, and are seeking compensation that could extend to billions of pounds if they succeed. 

“We respect the government’s authority to regulate in the public interest, but wiping out trademarks simply goes too far” said Marc Firestone, PMI’s senior vice president and general counsel. “Countries around the world have shown that effective tobacco control can co-exist with respect for consumer freedoms and private property.”

The measures, which are planned for a 2016 introduction, have been opposed by Big Tobacco companies from day one. The power of the tobacco industry to market their products has been slowly eroded, to varying extents, by legislation in countries around the world. In the UK, advertising was phased out between 2003 and 2005, and in 2012, tobacco products were banned from display in supermarkets and large shops.

In the claims filed to the High Court, PMI and BAT also claim the measures violate European intellectual property laws. The Department of Health responded  it would not let policy “be held to ransom by the tobacco industry”.

Lawyers for the Government are understood to be confident that all legal aspects of the new measures have been taken into account. But even if unsuccessful, tobacco companies may be hoping legal action will delay implementation or discourage other countries from taking similar action.

Indeed, as long as tobacco remains a legal product, then the owners of cigarette brands can make the argument that they shouldn’t be treated differently to other consumer products. 

Australia introduced a similar ban in 2012 with the aim of reducing smoking and is facing challenges at the World Trade Organization which say that the law creates illegal obstacles to commerce.

By Martina Clochiatti

The Court of Rome Rules on Copyrights Published on Facebook

The court of Rome reaffirms the application of the rules of copyright for the pictures posted on the social network by establishing that publication of photos on the Facebook page of the person who has taken them "does not involve the complete waiver of the relative copyright".

According to the Court, the freedom of use of the content posted by users by setting the 'Public' function does not cover the content that is published and which covered by intellectual property rights of users, for which the only license is the non-exclusive, transferable granted to Facebook". Under this principle the author of some photos published on Facebook was awarded damages against a newspaper that had published the same without permission.

The case stems from the publication of some photos on the personal page Facebook of a young photographer shot in nightclub in Rome. The photos then appeared, unknown to the author, in a national newspaper in support of a series of newspaper articles, related to the phenomenon of frequenting nightclubs by persons of young age and subsequently re-used by some programs television of national importance.

Swatch Can't Revive IP Row Over Panavision's 'Swatchball' Trademark

Film equipment company Panavision Europe Ltd. on Tuesday nixed a suit brought by Swiss watchmaker Swatch AG in European Union General Court alleging Panavision infringed its trademark with its "Swatchball" film editing product, with the court finding the companies' products are too different to constitute infringement. 
The three-judge panel in Luxembourg found that although both marks contain the word "Swatch," the watchmaker's argument that the relevant public is likely to link the marks falls flat because the products are dramatically different. Swatch was ordered to pay costs for the proceedings.
"The absence of similarity between the goods and services in question and the differences between their relevant publics ... are such that they are liable to exclude the existence of any link between the marks at issue," the ruling said. "[Swatch's] argument is inoperative inasmuch as the application for registration at issue explicitly excluded goods and services relating to timekeeping."

The decision also noted that the two companies target different consumers.

The ruling upholds a November 2013 ruling by the Office for Harmonization in the Internal Market's Board of Appeal.

Why Shutting down Pirate Sites is ineffective.

A few years ago Europe witnessed the largest piracy-related busts in history with the raid of the popular movie streaming portal Kino.to.
Police officers in Germany, Spain, France and the Netherlands raided several residential addresses, data centers and arrested more than a dozen individuals connected to the site.
The operation wiped out the largest unauthorized streaming portal in Europe and was praised as a massive success. However, new research from the European Commission’s Joint Research Centre shows that the effect on end users was short-lived and relatively limited.
In a working paper titled “Online Copyright Enforcement, Consumer Behavior, and Market Structure” researchers examined clickstream data for a set of 5,000 German Internet users to see how their legal and illegal consumption habits changed in response to the shutdown.
One of the main conclusions is that the kino.to raid led to a short-lived decrease in piracy, after which piracy levels returned to normal. At the same time, the researchers observed only a small increase in the use of legal services.
It appears that while users of kino.to decreased their levels of piracy consumption by 30% during the four weeks following the intervention, their consumption through licensed movie platforms increased by only 2.5%,” the paper reads.
Based on the above the researchers conclude that if the costs of the raids and prosecution are factored in, the shutdown probably had no positive effect.
One of the policy implications could be to advise against these type of large piracy raids, as they do very little to solve the problem at hand.
However, the researchers note that the results should be interpreted with caution. For example, it doesn’t include any data on offline sales. Similarly, back in 2011 there were relatively few legal options available, so the effects may be different now.
That said, the current findings shed an interesting light on the limited effectiveness of international law enforcement actions directed at piracy sites.

Round Two in the Sky against Skype Trademark Battles goes to Murdoch's men.

British broadcaster BSkyB has won round two in its trademark infringement battle with Skype.

The European Union General Court found on Tuesday that the two names are too similar and could cause confusion. In 2012 and 2013 the Office for Harmonisation in the Internal Market (OHIM) upheld Sky’s complaint, but Skype then appealed to the EU court.

In today’s decision the court said that there were a number of contributing factors to its decision - in particular, their “degree of visual, phonetic and conceptual similarity”. Skype has attempted to argue that the “pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’.”

Skype also copped it over its cloud-shaped logo which the court found would be reminiscent of the standalone word "sky".

The argument that the word "skype" is highly distinctive and had even entered the lexicon for identifying voice over IP services was dismissed by the court.

Skype has one last lifeline - it can appeal to the European Court of Justice, but only on points of law and within the next 2 months. Calls to Skype and parent company Microsoft for comment were not returned at time of publication.

Is Pinocchio a valid Trademark?

With its decision of 25 February 2015 the Second Board of Appeal of OHIM partially upholding an appeal, has in fact confirmed the registrability as a trade mark of the word "Pinocchio".

In 2009, Disney had obtained by the Office of the registration of the word term "Pinocchio" for goods and services included in several classes. 

In 2012, Yves Fostier owner of a Community trade mark application which contains, the word "Pinocchio", but in a figurative trademark, had filed an application at OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s Trademark established an unacceptable monopoly on matters of law which entered in popular folklore and tradition. In any case, Disney’s application lacked of distinctive character, because popular and because it fell into the public domain. 

In the first degree the Office had, however, rejected Mr. Fostier’s arguments, observing that, on the one hand, the mere fact that a sign constitute the title of a story does not exclude the ability of the same sign to function as a trademark, and, second, the plaintiff had failed to demonstrate that the term "Pinocchio" was not capable of distinguishing the goods and services for which the mark was registered, nor he had proved that the term had become customary in a European language.

Mr. Fostier appealed the decision. 

This time, the Second Board of Appeal noted that, if a title is so well known to the audience to the point that it perceives the mark corresponding to designate primarily a title of a story or a book, that brand may be lacking distinctiveness. This will be more likely if it can be shown that several versions of the story have been published or that there have been numerous television and film adaptations, that have reached a wide audience. Therefore, although in principle the titles or the names of fictional characters can be registered and function as indicators of origin, it must be asked whether a sign is capable of being distinctive for the specific products and services covered by the mark.

According to the Second Board of Appeal Pinocchio belong to this special category of signs lacking distinctive character in relation to certain goods and services in Classes 9 (in particular film, video games, films, audio and video), 16 (children's books , books of drawings, cartoons), 28 (toys and the like), 41 (amusement parks and the like, theater productions, live performances) as consumers could be be led to believe that these goods and services are connected with the history and the character of Pinocchio.

Tsclex Lawyers to attend INTA 2015

Tsclex  will be attending the largest trademark conference of the year, with an eye towards solidifying ties with current clients and building new relationships with trademark attorneys from around the world.
 It is more important than ever for our lawyers to interact with their foreign counterparts to share common experiences and best practices to ensure that trademark rights continue to be strengthened in Italy.
Tsclex will be represented at this conference by Partner Gianpaolo Todisco and associate Martina Clochiatti. From May 2-6, 2015 the International Trademark Association (INTA) will hold its 137th Annual Meeting in San Diego, California, USA.

Headquartered in New York City, INTA was founded in 1878 and now has more than 6,000 members from more than 190 countries, and is recognized as the world’s leading international organization dedicated to the development and improvement of intellectual property.

To schedule a meeting with either Gianpaolo Todisco or Martina Clochiatti, please contact us at info@tsclex.com.
 

The Italian Supreme Court Rules on the "Alessi" Brand.

A few days ago, the Supreme Court ruled on the risk of confusion between a famous CTM trade mark  (Alessi) with the trademark "Exclusive Giacinto Alessi srl" which correspond to the name of the founder (Mr. Giacinto Alessi).

In the first two degrees, the courts had excluded any risk of confusion between “Alessi” and “Exclusive Giacinto Alessi” judging that the use of the latter was therefore legitimate.

The decision of the Supreme Court was however different according to the principles of limitation of the use of a surname which corresponds to a trademark.

The Supreme Court stated that "once a sign identical to the name of a person was validly registered as a trademark, the person who legitimately carries that name cannot adopt it (as a trademark) in sectors identical or similar to the previous trademark. The right to a name is, therefore, a clearly compressed in the economic and commercial sectors due to the prior registration of the name as a valid trademark.

The Court also argued that "Alessi"  is a  trademark  which has no links with the products / services offered and therefore stronger than the trademark “Exclusive Giacinto Alessi” which contains a descriptive term (the word exclusive).

Italian Radio Station Sentenced to Pay Overdue Neighboring rights

The Court of Milan, with ruling notified on August 2, 2015 sentenced that the nation wide known station radio RTL is obliged to pay to SCF, the Italian consortium of  record producers a sum equal to 2% of the gross receipts.

The judges of the court of Milan have ruled in the context of disputes brought by SCF in 2009 against the major Italian national radio networks. This past April SCF has reached an agreement with other broadcasters involved and judgment continued only against RTL that has not adhered to these arrangements.

The Court, after repeating the substantive and procedural legitimacy of SCF, sentenced  that in the absence of other agreements between the parties, the extent of the compensation for the direct disk or similar device due to the manufacturer in accordance with art. 73 L.A. is equal to 2% of the proceeds.

Copyright enforcement for graffiti?

If it sounds novel to apply copyright to graffiti art, that’s because it is: lawyers who work in this area say it’s not clear anyone has ever tried this in court. Copyright law could be extend to art that's on public walls? It very well may. Anasagasti, a rising star in Miami’s art scene, was the first graffiti artist to seek protection for his work: he hired a lawyer and filed a copyright infringement accusing American Eagle of stealing his work and looking for monetary damages.

Later, a large number of other artists filed suits against various corporations for copyright infringement. One was against the Italian fashion designer Roberto Cavalli for creating clothing, bags, and shoes that supposedly misappropriated a San Francisco street mural as its background print. All the artists claim their artwork was created legally and registered for copyright. Actually in the United States the requirements to obtain copyright for visual art are very low, there are only two requirements for an artwork to be eligible for copyright: it must be secured in a fixed medium and it must be original.
The lawsuits affirm that corporations have gone beyond any exception, putting the street art to use for their own commercial purposes. As Anasagasti’s suit argues, “In today’s fashion industry, affiliation with artists bearing such ‘street credibility’ is highly required by retail brands for the cultural reputation and access to the profitable youth demographic that it offers.”

How much is that street credibility worth? Both lawsuits spread some light on how could this value be measured. In Anasagasti vs. American Eagle as well as in the San Francisco artists suing Roberto Cavalli the value has been determined on sales data, including its software that tracks exactly how many customers viewed the ads and subsequently made purchases.
It’s not clear why the defendants wouldn’t have reached out to ask the artists for permission to use their work. They must have just thought that urban artists aren’t organized and aren’t going to think about copyright protection.

Nothing could be more antithetical from the “street culture” than luxury and glamour.

Seeking copyright protection may sound like the latest evolution of street art away from its outsider origins, but street artists have always pretended greater control over their work. Street artists don’t earn easily with their works, if corporations take advantages of their works, they deserve to be paid. If somebody's going to profit from this art, copyright may be just the instrument for ensuring that somebody is the artists themselves.

By Francesca Filipo

How are Moral Rights treated under Italian Copyright Law?

As other civil law countries, Italian Law recognizes moral rights under the current copyright legislation.

Moral rights are rights of creators of copyrighted works generally recognized in civil law jurisdictions and, to a lesser extent, in some common law jurisdictions. They include the right of attribution, the right to have a work published anonymously or pseudonymously, and the right to the integrity of the work. The preserving of the integrity of the work bars the work from alteration, distortion, or mutilation.

All these rights can be retained by the copyright holder regardless of the status of the economic rights.

In Italy, it is not possible for authors to assign or even waive their moral rights. This is following a tradition in European copyright itself, which is not regarded as an item of property which can be sold, but only licensed.

The purpose of the law is to protect the moral personality of the author as manifested in his work, provided it falls within what may be the subject of protection.

Italian Law places no time limit for claiming Moral rights; at the author's death the moral right may be claimed by his spouse and children and, in their absence, by parents and other ascendants. Each one of these can act without the consent of the other.

Moral right are inalienable and cannot be traded in any form.

What is the Artist's Resale Right?

The artist's resale right an “inalienable” right granted, in some jurisdictions,  to artists or their heirs to receive a compensation on the resale of their works of art. This right is often known by its French name droit de suite.

The directive 2001/84/EC of the European Parliament creates a right under European Union law for artists to receive royalties on their works when these are resold.  Member States may set a minimum sale price below which the artist's resale right will not apply: this threshold may not be more than 3,000 euros or 10,000 euros where the seller acquired the work of art directly from the artist less than three years before the resale.

The Artist’s Resale Right applies to the sale of artworks in the European Economic Area (EEA).  Artists who are nationals of these countries are therefore generally eligible to receive resale royalties.

Eleven European Union countries currently recognize “droit de suite” in their legislation. United Kingdom, Ireland, Austria and the Netherlands being still an exception. Of the eleven countries which recognize this right, only eight actually do collect the royalty.

The law applies to all “works of graphic and plastic arts”. Works of art must be original and the criteria for the original status of engravings, prints and lithographs are defined in agreements between the authors’ societies and auctioneers.

In Italy this right is granted to artists and their heirs for seventy years after his death on the occasion of transactions of works of art or manuscripts in which intervenes a professional art market. In particular, are subject to “droit de suite” all acts of resale, if they involve vendors, buyers or intermediaries represented by art market professionals, such as salesrooms, art galleries and art dealers in general, with the exception of sales between private individuals. The sales must be reported, by the professional acted as the seller or buyer broker, by declaration to the SIAE, within the period of ninety days from the sale. , the submission of the sale proceeds and compensation for all subsequent sales, are entirely charged to the seller.

The organization in charge of collecting the right below on behalf of all the artists is the SIAE, which currently governs the rights of authors affiliated companies, in which the royalty is already in force.

The compensation is calculated on the sale price, net of tax, on a percentage basis differentiated in relation to the different echelons, are calculated as follows:

•4% for the portion of the sale price up to  50,000.00 euros; (*)

•3% for the portion of the sale price of between 50,000.01 and 200,000.00 euros;

•1% for the portion of the sale price of between 200,000.01 and 350,000.00 euros;

•0.5% for the portion of the sale price of between 350.000,01 and 500,000.00 euros;

•0.25% for the portion of the sale price exceeding 500,000.00 euros.

The total amount of compensation cannot be still greater than 12,500.00 euros.

The SIAE, appointed in Italy to collect payments on the resale right for the artists, published in the Official Gazette a large list of authors whose works have been the subject of a sale which led to the maturation of the resale right, for which, however, has not yet been claimed that right. The gap between the real amount of droit de suite percentage on the sales and the amounts duly paid to the artists and their heirs shows how difficult is to effectively implement this European principle. 

By Francesca Filipo