A Spaghetti Western duel: the Court of Rome on scope of protection of fictional characters

The Court of Rome, through a recent judgment dated 16 April 2021 (the “Decision”) has dealt with two hot topics in the field of copyright: (1) the conditions for copyright protection of a fictional character; and (2) the lawfulness of references (the so-called “citazionismo”) to works covered by copyright. The decision is available here.

The background

The fictional characters examined by the Decision are the protagonists of the following (quite different) movies:

  • “A Fistful of Dollars” (1964), the first chapter of the so-called “Dollars Trilogy”, directed by Sergio Leone and well-known within the “Spaghetti Western” genre. The main character of the entire “Dollars Trilogy” is the “Man with No Name” played by a young Clint Eastwood. He is a lone, nameless gunman who breaks into a small border town, upsetting the balance of the warring factions within the community, inspired by a high ideal of justice. His features are a Mexican-style poncho, a wide-brimmed hat, sunburnt skin, unkempt beard, cigar in mouth, narrowed eyes and slightly hunched posture. Both for his looks and his psychological profile (marked by wit and cynicism) he is placed on a limbo between the hero and the anti-hero.
  • “Rango” (2011), a computer-animated Western comedy film directed by Gore Verbinski, starring a pet chameleon, dressed in a Hawaiian print shirt, aspiring to become an actor, of insecure temperament and nevertheless with a sincere sense of justice. Accidentally winded up in the lawless outpost in the Wild West populated by cunning and fickle creatures, Rango becomes the local sheriff and the situations he encounters forces him to become a real hero.

What is then the link between “A Fistful of Dollars” and “Rango”?

During a brief scene in “Rango” (from 1:21:08 to 1:22:45), our heroic chameleon meets while dreaming another fictional character, called “Spirit of the West”, appearing as an elderly Clint Eastwood, dressing as the “Man with No Name” from the Dollars Trilogy and playing the role of the spiritual guide of Rango.

This has led the producers of “A Fistful of Dollars” to bring an action before the Court of Rome against the Italian distributors of Rango, claiming that the character of the “Spirit of the West” infringed copyright in the “Man with No Name” and more specifically, copyright in the fictional character.

The reasoning

The Court of Rome dismissed the copyright infringement claims. It relied on several arguments, which are summarized below.

  1. The comparison between the works concerned

The Decision starts by considering the following elements:

  • the totally different context of the movies concerned: “A Fistful of Dollars” is a dramatic movie based on a growing narrative tension, while “Rango”, as it may be easily derived from the chameleonic feature of its main character, is “satirical and semi-serious […] seemingly intended mainly for children”;
  • according to the Court, the character of the “Spirit of the West” does not make reference to the “Man with No Name”, but rather to the actor Clint Eastwood, that is certainly better known. This would be confirmed, for instance, by the character’s strong resemblance to the actor, who is depicted much older than he was in “A Fistful of Dollars” and by the Oscar-like statuettes that are shown in the back of the golf cart he is driving.

Based on such arguments the Court already deems that, according to a “good-faith interpretation”, there is no plagiarism in the case at issue, also considering that the movie “Rango” is full of references to other famous movies such as “Poisonville”, “China Town” and “Star Wars”.  

In this regard, it is interesting to note that, notwithstanding the above-mentioned “good-faith interpretation” applied by the Court, the same disregarded that the defendants had tried to obtain from the claimants the previous authorization for the commercial use of the Dollars Trilogy within “Rango”.

  1. The use of the allegedly infringing work – the U.S. fair use doctrine

The conclusion already reached by the Court thanks to the arguments under point 1) above is further supported by the limited role that the “Spirit of the West” plays in the movie. Indeed, given such limited role, according to the Decision, the real intent of the director of “Rango” would be to pay a tribute to the actor Clint Eastwood and to Sergio Leone.

Here, what is interesting is the explicit reference by the Court to the U.S. fair use doctrine, previously discussed here in this blog. Even if the Court did not address this point in detail, it is worth recalling that the fair use doctrine is set forth by 17 U.S.C. § 107 as a specific defense for copyright infringement. It developed with the aim of protecting the “access concerns” based on the consideration that creative expression requires access to preexisting materials, which are endangered by a strong application of copyright.

Therefore, according to 17 U.S.C. § 107 “[…] the fair use of a copyrighted work […] for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, is not an infringement of copyright”.

The application of the fair use exception is based on the so-called “four factors test” (the “Test”), which considers the following features of the allegedly infringing use:

1) purpose and character of the use;

2) nature of the copyrighted work;

3) amount and substantiality of the portion used in relation to the copyrighted work as a whole;

4) effect of the use upon the potential market for the value of the copyrighted work.

Needless to say, Italian copyright law does not have such a wide and flexible tool. It rather operates on a limited list of exceptions to copyright exclusive rights (as set forth under Article 65 – 71-decies of Italian copyright law, i.e. Law No. 633/1941, which have implemented Article 5 of the EU Directive No. 29/2001).

  1. How is the fair use doctrine applied in the case at issue?

The Decision seems to implicitly refer to the above-mentioned factors no. 3 and 4 of the Test. Indeed, it is highlighted that the reference to the main character of the Dollars Trilogy is really brief (one minute and half), while plagiarism cannot be “commercially harmless”. 

Therefore, while rejecting the defendant’s arguments on the alleged parody of the Dollars Trilogy (considering that Rango has not a desecrating or in any case ‘reworking’ function with purposes different from those of the original work“), the Decision further stresses the lawfulness of the “de minimis” use carried out by “Rango”. Indeed, “a clear reference to a previous work, far from constituting an infringement of copyright, is admissible when it soberly evokes the previous work as a brief homage, a tribute to the actor or director, since it is the same author/director who ‘confesses’ his extraneousness to the previous authorial work“.

It is not typical for Italian Courts to make reference to foreign legal doctrines, but this is not certainly the first. By way of example, the following decisions recalled the fair use doctrine:

  • the decision issued on 12 December 2017 by the Court of Milan in the case De Bosio v. RCS on the unauthorized photographic reproduction of the staging of an opera (assuming it is protected by copyright). Such use is considered lawful in light of the limited quantity and importance of the part used, in relation of the work as a whole, and the effect of its use on the market;
  • the decision issued on 13 July 2011 by the Court of Milan in the case Foundation Alberto et Annette Giacometti v Fondazione Prada on the unauthorized use of a work of art (a statue) of the well-known artist Giacometti. Such use is considered “transformative”, since paying a tribute to the artist Giacometti through a further creative elaboration. Indeed, the intervention of the defendant compared to Giacometti’s works of art has been deemed as significant both from a material point of view (in terms of features, dimensions, materials and shapes) and a conceptual sense (according to the Court, “the use of Giacometti’s image of the woman also appears dramatically transformed, from the thinness and tragic expression of the post-war period, to the ecstatic expression of the thin woman, not due to the deprivations of the war, but due to the severe demands of fashion“).
  1. Last, but not least, is the “Man with No Name” eligible for copyright protection?

Interestingly, the Court leaves for last the question that should have been probably the first of its analysis: is the allegedly infringed fictional character eligible for copyright protection?

Based on Italian case law, a fictional character is protectable by copyright, even in an autonomous way with respect to the original work, provided that the work (i) is represented in a sufficiently creative manner, reflecting the author’s personality, and formalized in an original way; (ii) is the result of the author’s personal representation; (iii) can be recognized by the public even out of the context of the original work by virtue of its “semantic gap” (“scarto semantico“) compared to the previous archetypes. Therefore, the fictional character cannot be limited to presenting abstract or conceptual characteristics and to generically describing common elements or situations (that, as we know, shall remain in the public domain).

These features have been recognized by Italian courts with respect to a number of fictional characters, such as the following:

  • Gabibbo (Italian Supreme Court, judgements No. 14635/2018 and No. 503/2017);
  • Bing Bunny (Court of Rome, 10 July 2020);
  • Zorro (Italian Supreme Court, judgement No. 1599, 7 October 2016);
  • Polly il Pollo (Court of Milan, 20 March 2013);
  • Mirmo (Court of Milan, 17 March 2006);
  • Louie Mouse alias Topo Gigio (Court of Verona, 17 August 1993);
  • Betty Boop, now in the public domain (Court of Milan, 28 September 1992);
  • Mickey Mouse (Court of Milan, 28 June 1992);
  • Pink Panther alias Pantera Rosa (Court of Turin, 27 March 1990).

But, according to the Court, this is not the case for the “Man with No Name”. Indeed, the Decision concludes that this fictional character does not satisfy the requirements for copyright protection since it represents an archetype already known both in literature and movies. According to the Court, the “Man with No Name” would represent “the stereotype of the negative, ambiguous, double-dealing, foreign, outlaw hero” that “dates back to the beginnings of occidental literature with the Odyssey“. In other words, the “Man with No Name” does not appear to be the result of a creative and original idea, but rather the “personal and non-developmental reworking (but contextualized in the western world) by Sergio Leone of prototypes known to literary and cinematographic narration“.

Further, the Court argues that the character concerned has not even acquired “a penetration or permanence in the public, in film criticism or in subsequent works such as to qualify it as a creative work and identifiable as such“, as if the creative character of a work could have been acquired in a later stage (similarly to the “secondary meaning” that may be gained by originally weak trademarks) or should be coupled also with the work’s public recognition (as requested by the – now highly discussed –  “artistic value” for the copyright protection of industrial design: see here). In this regard, it is to be noted that copyright and trademarks’ protection of fictional characters may sometimes overlap and be used by the right-holders to extend (or at least try to extend) its protection after the copyright expiration. This issue has been dealt, by way of example, by the Court of Bari February 22, 2016, No. 953 (in connection with the fictional character of “Betty Boop”). For a discussion on the overlap between trademarks and copyright law, see also here.

In light of the above-described reasoning of the Decision, someone might wonder why not starting (and ending) the Decision by considering that the “Man with No Name” does not satisfy the requirements for copyright protection. Indeed, most of the arguments used by the Decision were not actually necessary to justify its conclusion, even if all of them are genuinely interesting from a legal standpoint.

Finally, it is interesting to underline that the same work “A Fistful of Dollars” was challenged for plagiarism of two previous movies (dating back to the ’60s) of the legendary Japanese director Akira Kurosawa. The matter was then settled between the parties, but it certainly show some circularity in this field.

Giulia Iozzia (guest on IPLens)

The Court of Milan on the impact of Cofemel on the copyright protection of industrial designs in Italy. A new CJEU referral on the horizon?

While Cofemel slowly marches toward its second birthday, its actual impact on Italian copyright law is still a mystery.

A preliminary disclaimer: in my view, the Cofemel decision is far from straightforward. The fact is, however, that the CJEU has been pretty clear-cut in stating that under EU law the existence of a “work” – as defined in the Court’s settled case law (see for reference Cofemel, at 29-34) – is the only requirement for copyright protection, works of industrial design included. And this principle, implicitly repeated in Brompton, implies that Member States would not be allowed to make the protection of such works conditional upon fulfilment of further requirements, in spite of Article 17 Design Directive and Article 96 Design Regulation.

Italy is (was?) one of the countries where these further requirements must (had to?) be met. Under Article 2.10 of Italian Copyright Law, in order to be protected, works of industrial design must have inherent “creative character and artistic value”. It is no surprise, then, that Italian scholars have been particularly prolific in speculating on the possible assassination of “artistic value” by the CJEU.

As influential as the scholars’ words may be, however, absent legislative intervention (which does not seem to be under discussion), the words that mainly count are those of the (Italian/EU) Courts. And these words are yet to be uttered.

In the Kiko decision (full text here), relating to the layout of the Kiko concept store, the Italian Court of Cassation explicitly quoted Cofemel. However, the Kiko case concerned a work qualified as architectural, protected under Article 2.5 of Italian Copyright Law regardless of its “artistic value”. Thus, the Court of Cassation did not really have to deal with the impact of Cofemel on “artistic value” under Article 2.10 of Italian Copyright Law. And it is worth noting that, if an indication explicitly relating to “artistic value” can be found in the decision, that indication would be the incidental statement whereby, in principle, the individual elements of the Kiko concept store can be protected as works of industrial design, “provided that they have an actual ‘artistic value’”. As if Cofemel did not exist.

A similar (non-) stance has been taken by two recent decisions issued by the Court of Milan with specific regard to works of industrial design.

In the Tecnica v. Chiara Ferragni decision (21 January 2021: here), concerning the famous Moon Boots, the Court of Milan granted copyright protection on the grounds that the Moon Boots had “artistic value”, taking it for granted that “artistic value” was still a requirement for the protection of works of industrial design (for our comments on another decision of the Court of Milan on the copyright protection of the Moon Boots, see here).

The same approach has recently been adopted by the Court of Milan with regard to a lamp designed by the Castiglioni brothers, Achille and Piergiacomo. In its 15 February 2021 decision (full text here), the Court acknowledged the “artistic value” of the lamp and granted the requested protection – again without questioning the possible impact of Cofemel on the case.

However, it was just a matter of time before the Cofemel decision and the “artistic value” requirement under Article 2.10 of Italian Copyright law would find themselves in the same court room.

In the still ongoing Buccellati case, the Court of Milan has been dealing with the alleged infringement of Buccellati’s copyright on several pieces of jewelry. The case began before Cofemel and, therefore, in a legal framework in which  there was no doubt as to  the relevance of “artistic value”. But then Cofemel arrived and a discussion arose between the parties on its impact.

Interestingly, in an interlocutory decision of 19 April 2021 (full text here), the Court of Milan (Judge Rapporteur: Alima Zana) – after quoting Cofemel at §35, whereby any subject-matter constituting a “workmust, as such, qualify for copyright protection”– explicitly states that, in light of Cofemel, Member States might no longer be allowed to “filter”  access to copyright protection by adding stricter requirements, such as  “artistic value” under Article 2.10 of Italian Copyright Law.

Also taking into account the “concerns expressed by the Advocate General”, and “the significant repercussions … that the disapplication of the requirement of the ‘artistic value’” would entail, the Court stated that the issue should be referred “to the Court of Justice in order to allow express examination of the compatibility of the national provision with the EU system.

However, due to “reasons of procedural economy”, the Court has decided to submit a CJEU preliminary question only if, at the end of a Technical Expertise conducted on the products at issue, it is found that there may be infringement.

What the wording of the possible referral might be is an intriguing question. Indeed, the CJEU has already stated that – in light of the indications already contained in Cofemel – there is no need to answer the question as to whether the interpretation by the CJEU “of Article 2(a) of Directive 2001/29 precludes national legislation … which confers copyright protection on works of applied art, industrial designs and works of design if, in the light of a particularly rigorous assessment of their artistic character, and taking account [of] the dominant views in cultural and institutional circles, they qualify as an ‘artistic creation’ or ‘work of art’”.

Riccardo Perotti

Court of Milan, 19 April 2021 (Buccellati)

Court of Milan, 15 February 2021 (Castiglioni Brothers)

Court of Milan, 21 January 2021 (Moon Boot II)

Court of Cassation, 30 April 2020 (Kiko)

“To Sample, Or Not To Sample, That Is The Question”

On 16th September 2020 the United States District Court for the Central District of California had to decide if the use by an artist – known as Nicky Minaj – of the recording of lyrics and melodies of a musical work “Baby Can I Hold You” by the artist Tracy Chapman (hereinafter the “Work”) for artistic experimentation and for the purpose of securing a license from the copyright owner is fair use (full decision here). Nicky Minaj was aware that she needed to obtain a license to publish a remake of the Work as her remake incorporated many lyrics and vocal melodies from the Work. Minaj made several requests to Chapman to obtain a license, but Chapman denied each request. Minaj did not include her remake of Sorry in her album. She contacted DJ Aston George Taylor, professionally known as DJ Funk Master Flex, and asked if he would preview a record that was not on her album.

The Court recognized fair use based on the following assessments:

·       the purpose of Minaj’s new work was experimentation. Since Minaj “never intended to exploit the Work without a license” and excluded the new work from her album, Minaj’s use was not purely commercial. In addition, the Court noted that “artists usually experiment with works before seeking licenses, and rights holders usually ask to see a proposed work before approving a license” The Court expressed concern that “the eradication … [these] common practices would limit creativity and stifle innovation in the music industry“;

·       the nature of the copyrighted work, did not favor fair use because the composition is a musical work, which is “the type of work that is at the core of copyright’s protective purpose“;

·       the amount of the portion used in relation to the work as a whole, favored fair use. Although Minaj’s new work incorporated many of the composition’s lyrics and vocal melodies, the material used by Minaj “was no more than necessary to show Chapman how [Minaj] intended to use the composition in the new work“;

·       the effect of the use on the potential market or value of the copyrighted Work, favored fair use because “there is no evidence that the new work usurps any potential market for Chapman“.

Considering the factors together, the Court found that Minaj’s use was fair and granted partial summary judgment in favor of Minaj that her use did not infringe Chapman’s right to create derivative works. The Court determined that Chapman’s distribution claim has to be tried and resolved by a jury, but a settlement eliminates the need for a trial. Minaj has paid a significant sum (450.000,00 Us dollar) to settle and avoid the risk of trial. If on one hand, this case confirm that private sampling should be protected as fair use, on the other hand it sounds like a warning for artists on sampling matter. Obtaining a preliminary license – also in the land of fair use – is always the best practice, although creativity and experimentation needs – in the opinion of the writer – to be protected to empower the spread of different music genre and contribute on cultural renaissance, especially regarding hip hop music, that is historically based on sampling.

The decision offers an interesting comparison with the Pelham case (CJEU – C-476/17 Pelham GmbH and others) in order to analyze how the two different systems are evolving on sampling matter.  Actually, the agreement between these two decisions is only partial.

Indeed, in Pelham the CJEU recognized the admissibility of “unrecognizable sample“. According to the CJEU “where a user, in exercising the freedom of the arts, takes a sound sample from a phonogram in order to use it, in a modified form unrecognizable to the ear, in a new work, it must be held that such use does not constitute ‘reproduction’ within the meaning of Article 2(c) of Directive 2001/29.”

Furthermore, in Pelham CJEU argue that the reproduction of a sound sample, even if very short, constitutes a reproduction that falls within the exclusive rights granted to the producer of phonogram. Considering that the US Court stressed that “not only (…) the quantity of the materials used, but about their quality and importance, too” has to be considered, according to Campbell, 510 U.S. at 587, this is probably one of the main gaps between the two decisions.

Indeed, the logical-argumentative process of the US Judge moves from a deep context analysis that implies an interpretation of sampling based on the purpose and character of the uses, according to the common-law tradition of fair use adjudication that always preferes a case-by-case analysis rather than bright-line rules.

Instead, the CJEU chose a different approach, arguing that the “free use” is a derogation not provided by the Infosoc Directive, so any reproduction act is subject to the reproduction rights notion mentioned by art.2 of each Directive. This “static” approach also (and especially?) depends on the pending – and unsolved – harmonization process of the European system of exceptions and limitations provided by the Infosoc Directive.

The US Court, instead of being based on a parameter of appreciation such as the “recognizability of hearing”, comes to the balance through an analysis of context aimed at preserving the freedom of artists to experiment, demonstrating – even in the (apparent) identity of results – more courage, as opposed to the practical approach of the European Court of Justice. The CJEU has not – in the opinion of the writer – taken the opportunity to move more decisively towards a grater balance between exclusive rights and fundamental freedoms, which should be considered the freedom to experiment for artists.

Matteo Falcolini

Chapman v. Maraj No. 2:18-cv-09088-VAP-SS (C.D. Cal. Sept. 16, 2020)

What happens when copyright protection expires? Trade mark/copyright intersection and George Orwell’s ‘Animal farm’ and ‘1984’

The 1st of January of each calendar year marks not only the days full of new years’ hope, resolutions, and promises, but also the public domain day. 1 January 2021, a moment full of hope with the anti-COVID vaccine rolling out, is no different for copyright law purposes. On the 1st of January, many copyright protected works fell in the public domain.

This year marked the falling into the public domain of the works of George Orwell. Born in 1903, under the real name of Eric Arthur Blair, he has authored masterpieces such as ‘1984’ and ‘Animal Farm’, which in recent years have become extremely topical and relevant. In early 2017, the sales of ‘1984’ went so high up that the book became a bestseller once again. Some have suggested this is a direct response to the US Presidency at the time in the face of Donald Trump.

Orwell passed away in 1950, which means that, following the life of the author plus seventy years rule as per Article 1 of the Term Directive, copyright in Orwell’s works expired on 1 January 2021. Despite this, in the last several years an interesting trend has prominently emerged. Once copyright in famous works, such as those at issue, has expired, the body managing the IPRs of the author has often sought to extend the IP protection in the titles by resorting to trade mark applications. At the EUIPO, this has been successful for ‘Le journal d’Anne Frank’ (31/08/2015, R 2401/2014-4, Le journal d’Anne Frank), but not for ‘The Jungle Book’ (18/03/2015, R 118/2014-1, THE JUNGLE BOOK) nor ‘Pinocchio’ (25/02/2015, R 1856/2013-2, PINOCCHIO).

This is the path that the ‘GEORGE ORWELL’, ‘ANIMAL FARM’ and ‘1984’ signs are now following. The question of their registrability as trade marks is currently pending before the EUIPO’s Grand Board of Appeal. This post will only focus on the literary work titles – ‘ANIMAL FARM’ and ‘1984’, as the trade mark protection of famous authors’ personal names is a minefield of its own, deserving a separate post.

The first instance refusal

In March 2018, the Estate of the Late Sonia Brownell Orwell sought to register ‘ANIMAL FARM’ and ‘1984’ as EU trade marks for various goods and services among which books, publications, digital media, recordings, games, board games, toys, as well as entertainment, cultural activities and educations services. The Estate of the Late Sonia Brownell Orwell manages the IPRs of George Orwell and is named after his second and late wife – Sonia Mary Brownwell.

The first instance refused the registration of the signs as each of these was considered a “famous title of an artistic work” and consequently “perceived by the public as such title and not as a mark indicating the origin of the goods and services at hand”. The grounds were Article 7(1)(b) and 7(2) EUTMR – lack of distinctive character.

The Boards of Appeal

The Estate was not satisfied with this result and filed an appeal. Having dealt with some preliminary issues relating to the potential link of ‘ANIMAL FARM’ to board games simulating a farm life, the Board turned to the thorny issue of registering titles of literary works as trade marks. The Board points out that while this is not the very first case of its kind, the practice in the Office and the Board of Appeal has been diverging. Some applications consisting of titles of books or of a well-known character are registered as marks since they may, even if they are well-known, still be perceived by the public also as an indicator of source for printed matter or education services. This was the case with ‘Le journal d’Anne Frank’. Other times, a famous title has been seen as information of the content or the subject matter of the goods and services being considered as non-distinctive and descriptive in the meaning of Article 7(1)(b) and (c) EUTMR. This was the case for ‘THE JUNGLE BOOK’, ‘PINOCCHIO’ and ‘WINNETOU’. The EUIPO guidelines on this matter are not entirely clear. With that mind, on 20 June 2020, the case has been referred to the Grand Board of Appeal at the EUIPO. Pursuant to Article 37(1) of Delegated Regulation 2017/1430, the Board can refer a case to the Grand Board if it observes that the Boards of Appeal have issued diverging decisions on a point of law which is liable to affect the outcome of the case. This seems to be precisely the situation here. The Grand Board has not yet taken its decision.

Comment

The EUIPO’s Grand Board is a bit like the CJEU’s Grand Chamber – cases with particular importance where no harmonised practice exists are referred to it (Article 60, Rules of Procedure, CJEU). The Grand Board has one specific feature which the other five ‘traditional’ Boards lack. Interested parties can submit written observations, the otherwise known ‘amicus curiae’ briefs (Article 23, Rules of Procedure of the EUIPO Boards of Appeal). In fact, in this specific instance, INTA has already expressed its position in support of the registration of the titles.

It must be observed here that when the trade marks were filed, back in March 2018, ‘Animal farm’ and ‘1984’ were still within copyright protection (but not for long). Indeed, the Estate underlines in one of its statements from July 2019 that “George Orwell’s work 1984 is still subject to copyright protection. The EUIPO Work Manual (ie, the EUIPO guidelines) specifically states that where copyright is still running there is a presumption of good faith and the mark should be registered”. While this is perfectly true, what is also important to mention here is that trade mark registration does not take place overnight, especially when it comes to controversial issues such as the question of registering book titles as trade marks.

The topic of extending the IP life of works in which copyright has expired has seen several other examples and often brings to the edge of their seat prominent IP professors, as well as trade mark examiners and Board members. Furthermore, several years ago, the EFTA court considered the registrability as trade marks of many visual works and sculptures of the Norwegian sculptor Gustav Vigeland (see the author’s photo below).

‘Angry Boy’ by Gustav Vigeland, Vigeland park, Oslo, photo by Alina Trapova

At stake here was a potential trade mark protection for an artistic work in which copyright had expired. One of these is the famous ‘Angry Boy’ sculpture shown here. The Municipality of the city of Oslo had sought trade mark registration of approximately 90 of Vigeland’s works. The applications were rejected. The grounds included not only the well-known descriptiveness and non-distinctiveness, but also an additional objection on the grounds of public policy and morality. Eventually, the case went all the way up to the EFTA court. The final decision concludes thatit may be contrary to public policy in certain circumstances, to proceed to register a trade mark in respect of a well-known copyright work of art, where the copyright protection in that work has expired or is about to expire. The status of that well known work of art including the cultural status in the perception of the general public for that work of art may be taken into account”. This approach does make good sense as it focuses on the specific peculiarities of copyright law (e.g., different to trade mark law, copyright protection cannot be renewed), but it also considers re-appropriation of cultural expression as aggressive techniques of artificially prolonging IP protection – something, Justice Scalia at US Supreme Court has labelled as “mutant copyright” in Dastar v. Twentieth Century Fox in 2003.

In the EU, the public policy/morality ground has been traditionally relied on to object to obscene expression. The focus has been on the whether the sign offends, thus tying morality to public policy (See also another Grand Board decision on public policy and morality: 30/01/2019, R958/2017-G, ‘BREXIT’). A notable example is the attempt to register the ‘Mona Lisa’ painting as a trade mark in Germany. The sign was eventually not registered, but not due to clash with public policy and potential artificial extension of copyright through the backdoor of trade marks, but because the sign lacked distinctiveness. Consequently, the EU understands the public policy and morality ground in a rather narrow and limited manner, namely linked only to offensive use.

Overlap of IPRs happens all the time: a patent turns into a copyright claim (C-310/17 – Levola Hengelo and C-833/18 – Brompton Bicycle), whereas design and copyright may be able to co-habit in the same item (C-683/17 – Cofemel). All would agree that an unequivocal law prohibiting overlaps of IPRs is not desirable from a policy perspective. Yet, you may feel somehow cheated when your favourite novel is finally in the public domain due to copyright expiring (which, by the way, already lasts the life of the author plus seventy years), but protection has been “revived” through a trade mark. Trade marks initially last for 10 years, but they can be renewed and thus protection lasts potentially forever (what a revival!). Therefore, there may be some very strong policy reasons against this specific type of IP overlap and extension of IPRs. Like the European Copyright Society has said in relation to Vigeland, “the registration of signs of cultural significance for products or services that are directly related to the cultural domain may seriously impede the free use of works which ought to be in the public domain. For example, the registration of the title of a book for the class of products including books, theatre plays and films, would render meaningless the freedom to use public domain works in new forms of exploitation”. To that end, Martin Senftleben’s new book turns to this tragic clash between culture and commerce. He vocally criticises the “corrosive effect of indefinitely renewable trademark rights” with regard to cultural creativity.

As for ‘Animal farm’ and ‘1984’, the EUIPO’s first instance did not go down the public policy grounds road. This is unfortunate as lack of distinctiveness for well-known titles such as ‘Animal Farm’ and ‘1984’ is difficult to articulate as the Board of Appeal itself underlines – the Office’s guidelines are confusing (some titles have been protected and others not). Besides, lack of inherent distinctiveness can be saved by virtue of acquired distinctiveness (something the Estate of the Late Sonia Brownell Orwell has explicitly mentioned they will be able to prove, should they need to). Considering that the rightholder here would be the Estate of the Orwell family, proving acquired distinctiveness of the titles for the requested goods and services would not be particularly difficult. On that note, a rejection on the ground of public policy/morality can never be remedied through acquired distinctiveness. Thus, it would perhaps have been more suitable to rely on public policy and establish that artificially extending the IP life of these cultural works is not desirable.

Well, the jury is out. One thing is for sure – the discussion at the Grand Board will be heated.

Alina Trapova

“It’s not the gay coat that makes the gentleman”: The Court of Florence rules once again on promotional materials portraying the David by Michelangelo (all dressed up, this time) and misses a chance to “unveil” the meaning of cultural heritage reproduction

Affectionate readers of this blog will already be familiar with the Italian rules on the reproduction of cultural heritage as well as with two 2017 Court decisions that dealt with unauthorized reproductions of, respectively, the Teatro Massimo of Palermo and the David by Michelangelo (see here) (for an earlier dispute over a controversial picture of the David “bearing arms”, see here).

Among the many Italian public entities having the right to authorise the reproduction of their cultural heritage assets, those having rights on the David by Michelangelo in particular seem to be the most aware of their prerogatives, as in early 2019 the Court of Florence was called to rule on yet another case involving this Renaissance masterpiece (the full decision is available here).

The facts of the case are rather simple: Brioni, a prestigious Italian menswear couture brand, launched an advertising campaign (consisting of a video and some pictures) centred on a full-scale marble replica of the David by Michelangelo wearing a tailor made suit from Brioni’s couturiers.

The replica had been manufactured by an Italian sculpture workshop in 2002 and then used for a couple of other projects before being lent for free to Brioni for their campaign in 2018.

The Italian Ministry of Cultural Heritage and Activities started urgency proceedings before the Court of Florence against both Brioni and the workshop asking, inter alia, for an interim injunction against the use of the David’s image for profit purposes.

Upon commencement of the proceedings, the advertising campaign was immediately withdrawn, and the sculpture workshop undertook not to further use the replica for future events without the Ministry authorization.

The Court to Florence therefore rejected the petition for interim relief on grounds of lack of urgency. That said, in a meaningful obiter dictum, the Court briefly touched upon some of the substantive issues that were at stake.

According to the Court, among these issues were in particular (i) “the exact scope of the concept of “reproduction” [and] of its object pursuant to Articles 106-108 of the Code of Cultural Heritage”; and (ii) whether the contested use of the David constituted a “creative re-elaboration” pursuant to Art. 4 of the Italian Copyright Law – rather than a reproduction. The Court of Florence did not provide an answer to those questions; but the very fact that the Court felt the need to mention them, made it clear that the answer would have been far from obvious.

The first of these issues appears to be of capital importance and is arguably linked to the second one.

The scarce case-law that dealt with cases of reproduction of Italian cultural heritage seems to have taken it for granted that the notion of reproduction pursuant to Art. 107 of the Code of Cultural Heritage could be borrowed from copyright law.

This was in fact confirmed in 2013 by the Court of Cassation, which in a case involving the sale of replicas of the fossilized skull of a Neanderthal (the Altamura Man – see picture below), ruled that, in principle, “it is indeed possible to refer to the provision of copyright law that defines the concept of reproduction”, i.e. Art. 13 of the Italian Copyright Law according to which “the exclusive right of reproduction concerns the multiplication of copies of the work in all or in part, either direct or indirect, temporary or permanent, by any means or in any form, such as copying by hand, printing, lithography, engraving, photography, phonography, cinematography, and any other process of reproduction” (Italian Court of Cassation, decision no. 9757/2013).

Eventually, however, the Court of Cassation concluded that no reproduction had taken place in that case, because the replica had been created without reproducing the actual shape of the skull (which was for the most part embedded in a cave and therefore not even visible), but with “an hypothetical reconstruction, based on a series of scientific findings and reconstructive hypotheses, of what could be the entire cranial structure”. According to the Court of Cassation, this resulted in “a new work which, as such, is the subject of autonomous protection under copyright law”.

It seems possible to read the Court of Cassation decision as follows: where a given cultural heritage asset is not literally copied but independently recreated in the context of a new creative work, this does not constitute a reproduction pursuant to the Code of Cultural Heritage.

Indeed, it has been noted that “the copies obtained by a specific (moulded) impression of the original piece are reproductions, and the ones obtained by a free sculpting or shaping operation (creation) represent different actions. In the latter case, the work is certainly closer to an independent artistic action than to a copying act. Digital models share the same difference: any digital 3D model may be the result of the reproduction of an existing object (through laser scanners or the process of photogrammetry), or the result of a modelling (creation from scratch) operation (see here).

In this perspective, in the 2019 Court of Florence case, Brioni had defended itself by claiming that the advertising campaign did not reproduce the original David by Michelangelo, “but rather a different asset, created by a sculpture workshop, in combination with a tailor’s work”.

Plainly transposing copyright law notions into cultural heritage law could have spiralling consequences. Especially if one considers that the Code of Cultural Heritage also provides for criminal penalties against “anyone who, in order to profit from it, […] reproduces a work of painting, sculpture or graphics, or an object of antiquity or of historical or archaeological interest” (Art. 178).

Should Matt Groening be jailed for up to 4 years? (Matt Groening being the creator of the animated TV series “The Simpsons” where the following image comes from).

Probably not. In fact, in regard of this criminal provision, the Court of Cassation has been more categorical: “reproduction shall mean copying the work in such a way that the copy can be confused with the original” (Court of Cassation, decision no. 29/1996).

Mr. Groening can breathe a sigh of relief, this time (criminally speaking, at least).

Another related issue, which to our knowledge has not been expressly tackled by case-law yet, is whether the Code of Cultural Heritage provides for an exclusive negative right, allowing rightsholders to prevent any third party from reproducing its subject matter (again, just like copyright law) or merely for a right to a compensation in case a reproduction takes place (as maintained by POJAGHI, Beni culturali e diritto d’autore, Dir. aut., 1/2014, 153).

Policy considerations could suggest the latter. In the vast majority of cases, cultural heritage assets are part of the public domain (at least in a copyright perspective). Why leave it to the unquestionable discretion of various public entities to authorise their reproductions? Shouldn’t rightsholders at least prove some kind or reputational damage to stop the unauthorised use of a given reproduction?

It has also been argued that, the Code of Cultural Heritage being a text of public law, the only possible consequences in case of a violation of its provisions would be administrative sanctions – not injunctions or other remedies typical of intellectual property law (see here).

In the past, the Court of Florence seems to have – perhaps too hastily – borrowed from the copyright/IP regime of remedies. Specifically, it did not hesitate to issue a (pan-European) interim injunction against the unauthorised photographic reproduction of the David by Michelangelo in the promotional materials of a travel agency. This was done on the grounds that “the indiscriminate use of the image of cultural assets is liable to diminish their attractiveness” (which is particularly counterintuitive, considering that the travel agency was using the materials to promote guided visits to the actual David). Furthermore, it also issued additional – and rather afflicting – orders of withdrawal of all the promotional materials from the market, destruction of those materials, destruction of all instruments used to produce or market those materials, publication of the decision on several national newspapers and magazines, as well as online, and – for every single order – very high penalties in case of non-compliance (see the 2017 decision mentioned at the beginning of this post).

The Court of Milan, on the other hand, has proven to be more cautious. In a 2015 case involving the unauthorized photographic reproduction in e-books of a number of drawings from the Fondo Peterzano (which is part of the Italian cultural heritage), it ruled that “in the absence of any appreciable prejudice deriving from the publication of the reproductions, […] the request for an injunction from further commercialisation must be rejected” (see here).

All in all, the interpretation of the Italian rules on the reproduction of cultural heritage is not 100% clear yet, but the increasing awareness of the subject by public entities will most likely lead to other disputes in the near future, which could shed more light on this topic.

Emanuele Fava – Nicoletta Serao

Court of Florence, 2 January 2019, MIBAC vs. Brioni S.p.a., case Docket No. 15147/2018

The shape of the worldwide famous Vespa obtains protection in Italy under copyright law

Piaggio, the Italian company producer of the world wide famous Vespa scooter, was recently sued by the Chinese company Zhejiang Zhongneng Industry Group (“ZZIG”) in a quite complex case.

ZZIG offered for sale three scooters named “Revival”, protected by a Community design registration no. 001783655-0002, “Cityzen” and “Ves”, the shape of which was not covered by any registered IP right in Italy or in the European Union.

Capture ZZIG

As to Piaggio, the company owns the Italian 3D trademark no.1556520 claiming priority of the Community trademark no. 011686482, filed on 7 August 2013 and registered on 29 August 2013.

Capture Vespa

When Piaggio obtained the seizure of the three above motorbike models in the context of a Fair held in Milan, the Chinese company started an ordinary proceeding on the merits before the Court of Turin against Piaggio, seeking the declaration of non-infringement of Piaggio Vespa 3D trademark by its “Revival”, “Cityzen” and “Ves” scooters. Besides, it asked a declaration of invalidity of Piaggio’s Vespa trademark, based on the fact that it was anticipated by their design and thus not novel. Also, it held that the 3D trademark was void, as it does not respect the absolute ground for refusal established by the law.

Piaggio resisted and asked the Court of Turin to reject the above claims, declare that the Vespa shape is protected under copyright law, trademark law and unfair competition law and that those rights were infringed by ZIGG three models of scooters. As a matter of fact, Vespa was offered for sale by Piaggio since 1945.

First of all, the Court of Turin declared that the Vespa trademark does not lack of novelty, as it reflects a model of Vespa marketed since 2005, before the commercialization of ZZIG first scooter, i.e. “Cityzen”. Moreover, the Court of Turin excluded the existence of any absolute ground for refusal, stating that its shape was not technical nor standard and not even substantial as the reason why consumers chose the Vespa were not merely aesthetical. Based on these findings, the Court finally affirmed that only the “Ves” scooter constitute an infringement of Piaggio trademark.

This  said, the Court of Turin further held that the Vespa shape is eligible for protection under copyright law, as it is since long time worldwide recognized as an icon of Italian design and style, shown in advertising and movies, presented plenty of times at museum and exhibitions and part of many books, articles, magazines and publications. All considered, safe and sound evidence show that the shape of Vespa is unequivocally believed to be an artistic piece of designs by the main communities of experts worldwide. Nevertheless, the Court held that, again, only Ves scooter infringed Piaggio rights vested on its scooter as it presents features similar to the ones protected both under the Vespa trademark and copyright.

The decision (full text here) is indeed interesting as it critically examines the similarities and differences between the “original” good and the ones that are claimed to be infringing products and, while asserting the eligibility for protection of the Vespa shape both under trademark and copyright law, it excludes infringement for two products through a detailed and careful examination. This narrow approach is indeed interesting because it affirms the principle that the infringement of designs protected under copyright law shall be evaluated with an analytical examination similar to those applied in cases of trademark infringement.

A doubt might remain about the overlapping of trademark and copyright protection. Since the former never expires as long as the product is on the market (plus the subsequent five years, according to Italian law), one might ask what advantage for the right holder might subsist by ‘adding’ a protection limited in time, such as copyright’s. The answer might be: the dual protection functions as a ‘parachute’ for the case that one of the two, in a subsequent Judgement (Appeal or High Court: Cassazione in Italy) should be successfully challenged by a competitor.

Maria Luigia Franceschelli

Court of Turin, case No. 13811/2014, 6 April 2017, Zhejiang Zhongneng Industry Group, Taizhou Zhongneng Import And Export Co. vs Piaggio & c. S.p.a..

Design’s artistic value: no univocal definition according to the Italian Supreme Court

With the decision at stake (dated November 13, 2015, full decision here) on the possible copyright protection of an out-door seat, the Supreme Court interestingly expressed a subtle (but crucial) critic on the current approach adopted by some Italian decisions that seem to ‘generously’ recognize the existence of artistic value for design objects, leaning on apparently weak – or lonely – evidence. This appears to be, for example, the case of the recent decision of the Supreme Court affirming that Moon Boots were artistic, as allegedly proved by the fact that the boots were exposed in an exhibition of industrial design works at the Louvre Museum (see full decision here).

A more severe approach seems to be adopted by the decision in comment, concerning the design of a line of outdoor seats called “Libre”, created by the plaintiff and claimed to be eligible for protection under copyright law. The Court of first instance and the Court of Appeal of Venice excluded the existence of an artistic value and thus excluded any copyright infringement by a line of similar outdoors seat created by a competitor. So, the plaintiff asked the Supreme Court to interpret such notion.

Capture Libre

The Italian Supreme Court, after having made a useful recognition of the current trends adopted by Italian Courts in the interpretation of such requirement, affirmed that the concept of artistic value cannot be confined in one, unique and exhaustive definition. The cases being too various, it is more useful defining a number of parameters that Judges can apply on a case-by-case basis, considering in depth the concrete facts occurred. Those parameters, continues the Court, have both subjective and objective aspects.

As to the former, they consist in the capability of the object to stir aesthetic emotions, in the greater creativity or originality of the shape – compared the others normally found in similar products on the market – transcending the practical functionality of the good: aesthetic have its own independent and distinct relevance. These emotions, admits the Supreme Court, are inevitably subject to the personal experience, culture, feeling and taste of the individual doing the evaluation. The result of the assessment on the existence of artistic value may thus change depending on who looks at the piece of design. So, it is necessary to indicate more objective parameters.

It is therefore to be considered the recognition that the piece of design has received within the cultural and institutional circles with respect to its artistic and aesthetic features. This witnesses that the aesthetic appearance is considered capable of giving to the object a value and a meaning independent from its strict functionality. In concrete, this is shown by the presence of the object at museum or exhibitions, mentions in specialized newspapers and journals (not having a commercial scope), the critics, awards, prices and similar. On top of that, crucial appears the circumstance that the object has gained an autonomous value on the market of pieces of art, parallel to the commercial one or, more commonly, that it has reached a high economic value showing that the public appreciates and recognizes (and is ready to pay) its artistic merits. All the above elements are inevitably influenced by time: if a product is new it would have had no time to receive such prices, honors and awards from third parties. Even this parameter shall thus not be considered as absolute, but still connected to a case by case analysis.

With the above, wide and flexible interpretation of the concept of artistic value, the Supreme Court appears to distance itself from a jurisprudence that focused the existence of  even just one of the above circumstances.  In particular, it seems to downplay the current trend, more and more popular in the merit Courts,  whereby the presence of the piece of design in museums and exhibitions constitutes per se a sufficient evidence of the artistic merits of an object. The decision in comment seems to ask the lower Courts to be more selective and in ascertaining the existence of an artistic merit in the design object. And to do this on a case-by-case analysis, excluding any “a priori” single-criterion-based assessment.

By this decision the Supreme Court gives objectively rules in favor of small or new designers and firms, whose products could achieve protection on the basis of a concrete analysis of the single object’s potentialities, independently from its long-lasting presence on the market, huge marketing efforts, or the capability to  exhibit  the object in a museum. The current approach, criticized by the Supreme Court, seems indeed to privilege ( moreover, in an era of crisis) companies that are already solidly established and powerful on the market. This decision is good news for competition.

Maria Luigia Franceschelli

Italian Supreme Court, case No. 23292/2015, 13 November 2015, Metalco S.p.A. vs City Design S.r.l. and City Design S.p.A..

Industrial Design works: exhibition in museums as proof of special artistic merit?

A recent decision issued by the Tribunal of Milan (full-text in Italian available here), Specialized IP Section, has acknowledged special artistic merit, hence copyright protection (under Art. 2.10  of Italian Copyright Act implementing Art 17 of EU Directive 71/98) to after-sky boots, branded Moon Boots (as designed after the US astronauts’ boots ), a popular model marketed (also) in Italy since more than 40 years.

nasa
Aldrin’s boot and footprint in lunar soil – credit: Nasa

(As known, in some countries like Germany and Italy, copyright protection of industrial design products requires a plus of artistic merit than the mere ‘individual character’ requested by the general copyright paradigm).

 

The trump card for this recognition was the Louvre Museum’s choice of Moon Boots as one of the 100 most representative industrial design works of the XX century. The readers will think, and with reason, that this position is not novel, either in Italy or in other countries (Germany,i.a.). And with reason: as a matter of fact, Milan’s Tribunal just follows the blueprint of Flos.

So, it is not for its peculiarities that we are recalling the Moon Boots decision. Rather, it is an occasion for some critical comments on the general position – general:  aside from the specific case – espoused by the Milan Court.

First: is the selection/exposition by even prestigious museums a per se decisive argument for assessing special artistic value? More precisely: is it so without inquiring whether the exhibition was the Museum’s choice an autonomous initiative, or was it sponsored by the producers of the industrial design products? We all know how quite often, nowadays, public and private museums and art galleries, as well as the press, generalist and specialized, specialized struggle for balancing their budgets. And how a skillfully set up ‘environment’ can frame prestige and ‘cultural’ aura for the presentation of even everyday household appliances. And we know, of course, how  intense is the ‘race’ by industrial design producers to obtain that prestigious upgrading, which translates in a potentially over 100 years rent-seeking position.

So, at least Courts should adopt the testsponsored or autonomous’?

One might add that an even more significant test could be adopted. By checking whether this or that industrial product, of which the producer/plaintiff claims special artistic value, has ever been auctioned at art sales by famed houses as Christie’s, Sotheby’s and the like. Or, just by checking with same houses if they are prepared to auction such products as after-sky boots… (I am personally interested to this, I must confess: in my garage I have a couple of forgotten old used boots that I was going to throw away…).

Let’s now give a broader glance at the issue. First of all, its ‘competitive cost’. Is it reasonable, and consistent with the principle of freedom of competition, that utilitarian products sold since many years, even after the expiry of the 25 years design registration, and whose basic model has been currently adopted, after such expiry, by many competitors (usually SMEs ) — is it reasonable, then, that a sudden ‘copyright baptism’ makes them again object of exclusive rights? — possibly, repeat, for  more than a century ahead! I do not think so: however, the question of an ‘easy’ building of such rent/seeking positions is not worth neglecting. Also for an additional reason. Under Berne Conventions’ rule on derivative works (Art.2.3) the rightholders on the original design retain the faculty to inhibit the production and marketing of competing products bearing variants.

At least — at the very least— a more balanced regime should establish a suitable term for competitors, who entered the market after the expiry of the registration, to continue production and sales as not to waste the investments poured therefor. On the determination of such ‘transition’ period, it is well known, lobbies of big international furniture producers are actively at work, e.g. now in UK after the disgraceful repeal (itself lobby-driven), of Sec. 52 of Design Act by the Enterprise Act of 2013 .

Finally: let alone SMEs, do Courts worry about the cost for consumers, i.e. effect on price, of such… baptism? Not that I know.

Gustavo Ghidini

 

Court of Milan, IP Section, decision of 7 July 2016, No. 8628/2016

The pictures of notorious people may be used on commercial websites without their consent (or, at least, this is what the court of Bologna said)

In 1992, for the first time in more than 141 years of America’s Cup, an Italian boat was able to dispute the famous sailing race, so becoming famous all over the world as the first boat from a non-English speaking team to fight for the victory. Not only the most passionate sailors know that the boat was “Il Moro di Venezia”, Paul Cayard its skipper and that the sailing team was leaded by Raul Gardini.

This story was re-evoked in a proceeding for violation of image and personality rights started by Paul Cayard and the heirs of Raul Gardini before the Court of Bologna (full text here) to stop the unauthorized use of pictures, names and logos of Il Moro di Venezia and its protagonists on a commercial website (and related promotional Facebook pages) managed by a brand called “Il Moro di Venezia” that was unrelated to the sailing team of the famous boat.

According to the Court, however, the personality rights of an individual, that include the ways in which such individual is presented to the public, shall reflect the social perception that common people have of his/her personality and is not violated insofar as there is no misinterpretation of his/her intellectual ideological, ethic and professional heritage, as it emerges from his/her personal story as known.

Moreover, with particular reference to the names and images of Il Moro di Venezia and its team that were used on the website, the Court affirmed that the plaintiff had no right to stop their use on the basis that the contested elements were not used as trademarks and the link created with them on the resistants’ web pages was not abusive or detrimental of other rights.

The Court seems to recall the case law affirming that, besides misrepresentation, there is a further case when there could be violation of personality rights. Reference is made to the cases where the image and name of an individual are used in advertising in association with a brand, in so far as their use suggests a patronage to the brand which, instead, is lacking. A parallelism with trademark law could be found in the provisions inhibiting to deceive the public about the qualities of a sign and to create in the consumers’ mind an association between a notorious trademark and a product, thus taking an unfair advantage of said trademark.

This further case was, however, excluded by the Court of Bologna. It thus seems, by reading this decision, that anyone can make use of the names and images of third parties, also on a website aimed at promoting their commercial activity, when such person is depicted as the society expects him/her to be, suggesting a support of the related brand. This, even if a link between such person and the activity is created in the public in absence of any will from the depicted one or, as it was in the present case, with his/her express disapproval.

Many decision, on the contrary, affirmed that any individual has the right to control the uses of his/her name, image and any other aspect of his identity, even if the same were made available to the public with their previous consent, because the interested party could not approve their further use and, in particular, a commercial connection suggesting that he/she is connected to a brand (see Supreme Court decision of 6 December 2013, no. 27381; Court of Milan, decision of 21 May 2002 and Court of Rome, decision of 15 September 2007).

It’s a bit scary thinking about the consequence of the decision of the Court of Bologna that seems to be very permissive as to the possible uses of names and pictures of a person. It would be reasonable, we believe, extending the concept of distortive use as including the use on a commercial website that has not been approved by the person in question or, even worst, is expressively discouraged.

Court of Bologna, decision No. 2637/2015, 9 September 2015, Ivan Gardini, Eleonora Gardini, Maria Speranza Gardini and Paul Pierre Cayard v. Punta della Maestra S.r.l., Overseas Property LLC, Yacht Club Il Moro di Venezia and Rama S.n.c.

The Court of Rome reintroduces the notion of “active hosting provider”: new uncertainties on the ISP liability rules

By a decision published on 27 April 2016, the Court of Rome held TMFT Enterprises LLC- Break Media (“Break Media“) liable for copyright infringement for the unauthorized streaming of audiovisual content owned by Reti Televisive Italiane S.p.A. (“RTI“).

Break Media argued that it was a passive hosting provider because it merely stored information at the request of a recipient of its service. Pursuant to Article 14 of the E-Commerce Directive 2000/31/CE, as implemented in Italy by Legislative Decree 70/2003, hosting providers are not liable for stored information if they are unaware of its illegal nature. Moreover they are not required to remove illegal content unless ordered to do so by the competent public authorities.

Further, the provider outlined that the notice sent by RTI was generic, failing to report the location (URL) where the infringing content were placed. Therefore, it imposed no legal obligation to inform the competent authorities under Article 17 of the Directive and no liability for contributory copyright infringement could be found.

In addressing the hosting provider’s arguments, the Court of Rome found the website owner to be liable.

In line with the previous Italian case law (cf. Court of Rome, October 20 2011, VVBcom.Limited and Choopa LLC; Court of Milan May 19 2011, RTI v Yahoo! Italia and Court of Milano, January 20 2011, RTI v ItaliaOnline Srl) the Court of Rome applied the distinction between active and passive hosting providers, based on the analysis of the activities performed by the entity in question.

The decision held that if a hosting provider is directly involved in the website’s operations by allowing users to upload videos and other content, it is deemed to manage the information and content that its users provide. In this case, the ISP would be regarded as an active hosting provider, subject to a duty to remove illicit content if so requested by the rights’ holder.

On the contrary, if a hosting provider merely provides storage and connectivity to specific websites, and plays no active role in managing information online, it should be regarded as a passive hosting provider, which is not jointly liable with website owner for copyright infringement unless it fails to comply with a removal order issued by the competent administrative or judicial authorities or is aware of the illicit nature of the content on the hosted website and fail to alert the competent authorities.

According to the Court, Break Media was an “active hosting” of media content. Indeed, the activity of Break Media was not limited to the activation of technical procedures for enabling the content to be loaded to the platform (“passive hosting”), but provided a complex service of advertising exploitation of the content.

As a result, the liability exemptions established by Article 14 of the E-Commerce Directive were not applicable.

Although RTI’s notice demanding the removal of the infringing materials from the platform did not identify the specific location of the content to be removed, the defendant was effectively aware of the infringing nature of the content. This knolwedge was deemed enough in order to affirm the provider’s liability.

Based on the above, the Court condemned the provider to pay damages for € 115,000, approximately corresponding to € 1.300 for each minute of unauthorized publication.

Reintroducing principles affirmed by the aforementioned case law, the current decision distanced from the decision of the European Court of Justice on the SABAM case (24 November 2011 in Case C‑70/10, Scarlet Extended SA v. SABAM et al.) according to which national authorities are prohibited from adopting measures which would require an ISP to carry out general monitoring of the information that it transmits on its network.

Based on the SABAM jurisprudence, the Court of Appeal of Milan, January 7 2015, overturning the Court of Milan first instance decision in the case RTI v. Yahoo! Italia, took the view that the distinction between ‘active’ and ‘passive’ hosting providers should be regarded as misleading, being envisaged in neither the E-Commerce Directive nor in the Italian implementing Legislative Decree 70/2003. Consequently the fact that an ISP provides for services to organize contents published by its users should not change its role.

The issue provides matter of clarification for the Supreme Court.

For further comments look at the interesting analysis carried out by Maria Letizia Bixio on dimt.it

Jacopo Ciani

Court of Rome, 27 April 2016, Reti Televisive Italiane S.p.A. v. TMFT Enterprises LLC- Break Media