Italian Supreme Court holds that an unauthorized derivative work may be both infringing and protectable
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| Big Red |
Can copyright vest in mascots and characters? This, in a nutshell, is the question that the Italian Supreme Court had to address in Ralph v Mediaset and Others, decision 14635/2018 [Katpat to Valentina Borgese for the heads up and the text of the decision].
The Italian court answered in the affirmative, and provided some helpful guidance on copyright subsistence, derivative works, and infringement.
What happened?
In 1979 Ralph Carey created what would
become the mascot of the Western Kentucky University (WKU) basketball team, a red
character named Big Red. In 2009 he brought proceedings before the Milan Court
of First Instance against broadcasters RTI and Mediaset and the creator of
well-known TV programme Striscia La Notizia, claiming that the likeness of
mascot/TV character Gabibbo (‘operating’ since 1990) would
infringe copyright in Big Red.
The Milan court sided with Carey: in
2012 it held that Gabibbo infringed copyright in Big Red. It also awarded damages
for EUR 200,000.
Further to an appeal to the Milan Court of
Appeal, however, Gabibbo was found non-infringing. The appellate court held
that Gabibbo [the
translation from Italian is mine] “displays an amount of originality
that is such as to make it [or, rather, him] a different work”. Nonetheless,
it acknowledged that Big Red, a “goofy humanoid”, would be eligible for
copyright protection. The court did not address the issue of the Gabibbo being a derivative work and what is known in Italian copyright law as 'plagio evolutivo'.
Carey thus appealed this new decision to
the Italian Supreme Court, claiming that the appellate court – in holding the
Gabibbo non-infringing – had erred in its interpretation and application
of relevant provisions in the Italian Copyright Act.
Copyright
protection of the “goofy humanoid”
With regard to copyright protection of Big
Red, the Supreme Court noted that this would be deserving of protection as
pantomimic work in relation to: its comical character, appearance, and sparkling
personality.
 |
| Gabibbo |
The
characteristics of Gabibbo
However, the idea of creating a humanoid
mascot with a humorous temper could be expressed in several different ways.
At
this point the Supreme Court (oddly) referred to the concept of individual character in
design law, as interpreted by the Court of Justice of the European Union (CJEU) in
PepsiCo and Easy Sanitary Solutions, to hold that the overall impression
produced by Gabibbo is different from Big Red.
In particular, unlike Big Red,
Gabibbo is: shorter, fatter, does not wear shoes, is not athletic, has a smooth
skin, and sports different accessories (a bow tie, cuffs, and some sort of
apron-shirt). In addition, Gabibbo is characterized by a loud voice, and speaks
in a dialect that is typical of the city of Genoa, while Big Red is mute. Also Gabibbo is a reporter, while Big Red is just a mascot that invites fans to cheer for and
support the team.
A
derivative work and, thus, an infringement?
The Supreme Court held that the Court of
Appeal had erred in its interpretation of the law (with particular regard to ‘plagio evolutivo’ under Articles 4 and 18 of the Italian Copyright
Act), by excluding that an original work derived from an existing work could
not be protectable and infringing at the same time. The making of derivative
works falls under the control of the owner of the copyright in the first work:
it is not sufficient that the latter work is original to exclude
infringement of copyright in the first work. This means that even if a work has been derived (copied) from an earlier work and displays an original character of its own, it may be nonetheless an infringement of copyright in said earlier work.
And, noted the Court, the creator of Striscia La Notizia was
well-aware of Big Red’s existence: in a number of interviews he even admitted
that Gabibbo had been derived from Big Red.
The Supreme Court, therefore, sent the
case back to the Milan Court of Appeal (though in a different composition), to
undertake a new assessment on the merits of the case, and determine whether
Gabibbo is an infringement of copyright in Big Red.
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| Big Red Kat |
Comment
Italy, like most EU Member States, does
have an open-ended list of protectable works: this means that – unlike
countries like the UK, Ireland and Austria – the law does not require
to determine what category a certain work belongs to for copyright protection to
subsist.
As readers will know, for unconventional
works life has not always been easier in jurisdictions with closed lists of
protectable categories: in the UK, for instance, copyright protection has been
denied to the assembly of a scene (Creation Records) and the Stormtrooper
Helmet from the Star Wars films (Lucasfilm, in which the Supreme Court rather oddly also required an artistic intention on the side of the author for a work to be considered artistic). In addition, for a long time uncertainties
have subsisted in relation to copyright protection of TV formats [see here].
The Big Red/Gabibbo dispute is a helpful
reminder that a work may be indeed eligible for self-standing copyright
protection, while being also an infringement of someone else’s copyright. If the
latter work reproduces protectable elements of the former work, then – as per
the CJEU Infopaq decision – this might be sufficient
for an issue of potential infringement to arise … even if you’re a goofy
humanoid!
Italian Supreme Court holds that an unauthorized derivative work may be both infringing and protectable
Reviewed by Eleonora Rosati
on
Thursday, October 18, 2018
Rating:
Reviewed by Eleonora Rosati
on
Thursday, October 18, 2018
Rating:
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Thank you, Eleonora, for describing this case and your analysis of it.
ReplyDeleteHowever I would take issue with your obiter dictum concerning the UK Supreme Court’s judgment in Luscasfilm. You say “… the Supreme Court rather oddly also required an artistic intention on the side of the author for a work to be considered artistic”. In my view this mischaracterises the judgment. The copyright issue (as opposed to the justicability issue) was not concerned with whether the stormtrooper helmet was a work of artistic craftsmanship, where arguably the intention of the artist might play a part. That aspect was not appealed. Lucasfilm’s case was that the helmet was a sculpture.
Although they covered the historical development of the distinction in English law between artistic works and designs, and the place of sculptures on the boundary between the two, in truth the UKSC effectively approved the trial judge’s and Court of Appeal’s findings that the helmet was not a sculpture by virtue of it being a functional item, similar to a real helmet. Lucasfilm had tried to argue that since the stormtrooper helmets were intended to convey a message about the characters who wore them, their purpose was symbolic and therefore not functional. In rejecting this argument the UKSC most certainly did not do so, either wholly or in part, on the grounds that the reason for creating helmets lacked artistic intention. Rather they took the view that stretching the ordinary meaning of sculpture to include otherwise utilitarian objects was a step to be avoided on public policy grounds.