Parody under copyright and trade mark law: key guidance from Zorro .. and the Italian Supreme Court

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From IPKat:

Last week, the Italian Supreme Court issued an important – if not truly seminal – judgment on the interplay between IP and freedom of expression (decision 38165/2022, CO.GE.DI. International – Compagnia Generale Distribuzione s.p.a. v Zorro Productions Inc.).

. . . .

Back in 2007, US company Zorro Productions sued CO.GE.DI. over a TV and radio advertisement which the latter had commissioned on behalf of bottled water brand Brio Blu. Said advertisement featured actor Max Tortora dressed up as popular character Zorro.

Zorro Productions claimed that it owned copyright and several trade marks over the character of Zorro and that the advertisement inter alia infringed its rights under both regimes.

Further to a victory for Zorro Productions at first instance, the Court of Appeal of Rome sided with CO.GE.DI., holding that the character of Zorro had fallen in the public domain.

In 2017, the Italian Supreme Court rendered a first judgment, holding that Zorro would be still protected by copyright, as the 70-year post mortem auctoris term available under Italian law should also apply to foreign (in this case: American) authors. The Supreme Court thus sent the case back to the Court of Appeal for a new assessment.

In 2018, the Court of Appeal ruled that Zorro is a protected fictional character and its alleged parody in the advertisement would be prohibited given that:

  • Italy did not expressly transpose Article 5(3)(k) when it implemented the InfoSoc Directive into its legal system; and
  • A parody requires in any case a creative re-elaboration of an earlier work.

In all this, the Court of Appeal held that no trade mark infringement had occurred, since the reference to Zorro had been done without any “distinctive intent” (intento distintivo), that is: the use of the sign had not been undertaken as a trade mark.

At this point, a further appeal to the Italian Supreme Court could not but follow.

Parody under copyright

Insofar as the copyright status of Zorro is concerned, the Supreme Court noted that – under Italian law – the very protectability of characters under copyright is a settled (pacifica) issue: both courts and scholars agree that protection is available irrespective of the copyright status of the works in which they appear.

Turning to parody, the reasoning of the Supreme Court is enlightening and can be summarized as follows:

  • A parody does not need to be a creative re-elaboration of an existing work since – by its very nature – it implies an “unavoidable parasitic character” (ineliminabile carattere di parassitismo). A parody is a work that is autonomous from the earlier one because it is characterized by a different spirit, something that the court referred to as a “conceptual overthrow” (rovesciamento concettuale).
  • It follows that a parody is not a derivative work like, e.g., a translation: holding otherwise is not only wrong as per the above, but is also contrary to freedom of expression and freedom of artistic expression, as enshrined in – respectively – Articles 21 and 33 of the Italian Constitution.
  • It is true that Italy did not specifically transpose Article 5(3)(k) of the InfoSoc Directive, but the reason of all that is that the Italian legal system already allowed what is covered by that provision.
  • More specifically, a parody is a type of quotation for purposes of criticism or review, in accordance with Article 70(1) of the Italian Copyright Act. The right to criticize and review can be exercised in different ways, including by means of a parody.
  • Article 5(3)(k) of the InfoSoc Directive is consistent with this interpretation, and the CJEU Deckmyn decision [Katposts here] demonstrates that. The fair balance mandate that the CJEU refers to is the “limitation which the parodic exploitation of a third-party work or character is subject to” (limite cui soggiace lo sfruttamento parodistico dell’opera o del personaggio altrui), also considering that the CJEU has repeatedly held that the protection of IP under Article 17(2) of the EU Charter is not absolute.
  • The three-step test is part of the fair balance mandate: the circumstance that a parody is made for profit does not rule out the very applicability of Article 70(1): what matters is not that circumstance, but rather whether the alleged parody unduly conflicts with the normal exploitation of the earlier work.

In light of all that precedes, the Supreme Court concluded that the Court of Appeal had erred in its assessment of parody under copyright, by envisaging requirements that are not to be found in the law. Hence, a new assessment will need to be conducted to determine if the advertisement at issue would satisfy the conditions above.

Link to the rest at IPKat and thanks to C. for the tip.

There are lots of links in the OP if you are interested in a deeper dive.

PG and Mrs. PG truly love Italy and have enjoyed more than one trip there. The landscapes, the ancient buildings, the art, the people – the PG’s are Italophiles through and through despite neither of them having having inherited a drop of Italian blood from any of their ancestors.

That said, the OP confirms for PG that he never wants to practice Italian law or be a party in an Italian lawsuit.