Another shot for Rango (but, incidentally, the “fair use” defence in Italy has been shot too): Rome Appeal Court confirms there is no misappropriation nor infringement of the “Man With No Name” character

This blog has already covered the decision of the Rome Court of First Instance concerning a copyright infringement claim concerning a fictional character. The action had been brought by the producers of the movie “For a fistful of dollars” against the producers of the award-winner cartoon movie “Rango”, claiming unlawful use of the “The Man With No Name” character. As the authors of that post correctly summed up at that time, the core of the matter was that:

 

in a pivotal scene, Rango [a pet chameleon who accidentally becomes a local sheriff at a Wild West outpost] meets the “Spirit of the West” a metacinema character appearing as an elderly Clint Eastwood, smoking a cigar and dressing as the Man with No Name from the Dollars Trilogy, who encourages the chameleon to dig deep to find what he is looking for, because “No man can walk out of his own story”.

 

Watch the scene here and the great collage from that post’s authors below.

The Rome Court of First Instance, which also considered (and applied) the US doctrine of fair use, eventually dismissed the action. An appeal to the Court of Appeal of Rome followed.

 

The appeal was decided on 31 August 2022. In a nutshell, the Court of Appeal upheld the decision at first instance, though with some important differences. Overall, the judgment is worth bringing to the IPKat readership for at least two main reasons: 1) it is a an interesting decision on copyright protection of fictional characters (for a recent UK decision, see here) and 2) it shows that sometimes Italian Courts can be…faster than a bullet, since it took less than 1 year from the filing of the appeal to publishing the decision!

 

Background

 

The producers of “For a fistful of dollars” submitted to the Court three specific claims concerning the issue of fictional character:

 

A) [Misinterpretation and misapplication of Article 1 of the Italian Copyright Act] The appellants claimed that the first instance court had failed to evaluate the minimum requirements for the protectability of a film character as an autonomous work of art, somehow positioning the threshold too high and wrongly excluding “The Man With No Name” from such protection.

(B) [Misapplication of the rules in force on copyright infringement (Articles 12, 18 and 156 of the Italian Copyright Act)]. The appellant claimed the lower court had failed to evaluate the evidentiary findings at hand, in particular with regard to the plagiaristic reproduction of the character 'The main with no name' in the film "Rango'.

C) [Misapplication of the rules in force on copyright infringement (Articles 12, 18 and 156 Italian Copyright Act)]. The first instance judgment was also incorrect in considering 'fair use' applicable. Fair use is not a valid defence under Italian/EU law.

 

The judgment

 

The Court of Appeal’s decision is somehow more straightforward than the first instance decision, particularly in that it abandons the reference to the concept of fair use to exclude copyright infringement.

 

The Court substantially denied that the character from "The Man With No Name" could be protectable (and this could have been enough to reject the claim) as it lacks what the first instance decision had called a "semantic gap", i.e. the immediate recognisability of the character by the audience, regardless of the context in which it is placed. In any case, the Court of Appeal also specified that the cameo of a character that recalls above all the actor Clint Eastwood, for a very short time, cannot be considered as an infringement of any copyright existing in the character played by that actor.

 

But what should perhaps be of most interest to readers of this blog is the fact, as stated, that the appellate judges openly disagreed with the first instance decision with reference to the possible application of the fair use doctrine under Italian law. The Court reasoned as follows (the translation from Italian is mine):

 

the First Instance Court justified its ruling by which it radically excluded any possible plagiaristic intent on the part of the production company, on the basis of the absence of a massive use of references to Sergio Leone's works and since no infringement could be glimpsed in a cameo lasting one and a half minutes. The Court did not base its decision on an Anglo-Saxon institution such as the so-called "fair use", but rather on an overall assessment of the conduct of the producer of the film "Rango", who would certainly have used the figure of the actor and his character for a longer period of time, with greater nuances and in a different context, if he had ever wanted to plagiarise Ubnidis' work. The reference to the aforesaid legal concept of “fair use”, used in common law jurisdictions, origin was just redundant, the Court having more correctly mentioned the reliable jurisprudence of the Court of Milan (Decision No. 12451/2017) according to which "in order to verify whether the reproduction or quotation of a work is lawful, it is necessary to assess in particular the quantity and importance of the part used, in relation to the protected work as a whole, as well as the effect of its use on the market".

 

Comment

 

This decision from the Rome Court of Appeal provides two interesting teachings.

 

First, not all the characters in movies can claim copyright protection [on this I’d like to remark an aspect that was not very much considered in the first decision (albeit the circumstance was mentioned in the facts of the case) and that it was completely disregarded and not even cited in this appellate decision: before releasing the movie, the producers of Rango had tried to contact the producers of “The Man With No Name” to get a license on the character…].

 

Secondly, the ‘fair use’ defence cannot be considered by Italian courts as directly applicable. It may in fact be necessary to borrow some concepts from it but still stick to the Italian (and European) closed catalogue of available exceptions.

(image credit: Cory Doctorow from Flickr)