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)

“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)

US 2nd Circuit holds that Google Books does not infringe copyright

Nearly two years after the US District Court for the Southern District of New York decision on the Google Books Library Project, the US Court of Appeals for the 2nd Circuit confirmed that the scanning activities of Google within its Library Project are to be considered a fair google-books-featured1-500x236use of copyright works under §107 of the US Copyright Act (full text here). The Litigation was brought against Google by the Association of American Publishers (AAP) and the Authors’ Guild, on behalf of authors whose books Google had digitized without permission, claiming that Google’s digital copying ofentire books, allowing users through the snippet function to read portions, would infringe author’s copyrights, providing consumers with a substitute for the original works.

In 2012, the AAP and Google concluded a settlement agreement, but this did not arrest the ongoing litigation between the Authors’ Guild and Google.

Judge Pierre N. Leval held among other things that Google’s making of a digital copy to provide a search function is a “highly transformative use”, with the meaning set forth in Campbell v. Acuff-Rose Music, Inc. (510 U.S. 569, U.S. 1994) to “add something new, with a further purpose or different character, altering the first with new expression, meaning, or message”.

In particular, the court said that Google’s book search function was transformative because it “augments public knowledge by making available information about the plaintiffs’ books without providing the public with a substantial substitute for matter protected by the plaintiffs’ copyright interests in the original works or derivatives of them”. Even if the snippet reveals some copyright–protected authorial expressions, the brevity and the cumbersome, disjointed and incomplete nature of the snippets just helps users to evaluate whether books falls within the scope of their interest, but does not allow to make them a competing substitute for the original.
A unanimous three-judge panel rejected the Author’s Guild’s argument that Google’s distribution of the digital copies to libraries exposed the books to risks of loss. On the contrary, the court said that Google Books did not have a strong effect on the potential market for the books and that any losses would eventually address interests unrelated to copyright.
If the decision will be upheld by the Supreme Court, it will predictably become a landmark ruling in copyright law. Its long term effects could be relevant. In addition to the public benefits of Google Books, which expands access to books and allows scholars to analyse huge amount of data, the decision might open the door for creating similar types of digitization projects involving copyrighted works. In this regard, it will be interesting to carefully follow if and how the decision will travel outside the United States, especially in those legal systems which does not have a fair use clause.

Predictably, in any case, the decision will not meet with unanimous praise. The decision proposes an extensive application of the transformative use doctrine, which could be interpreted as a lack of consistency concerning how the degree of transformativeness is to be assessed. This point could be matter for further guidance by the Supreme Court.

In the meantime, while Google heaved a sigh of relief, the next candidate is already on the horizon. It is the online trading platform Amazon, subject to both antitrust investigations and further calls for regulation. But this is another story…

Jacopo Ciani