Image rights in Italy have been afforded different levels of protection in different industries
Published article on WTR (October/November 2012)
It seems that things are fast going downhill for Italian football. Just three teams will play in the Champions League next year, Ibrahimovic has left Serie A and the national team is in turmoil, having lost 4-0 to Spain in the 2012 European Championship final. However, football is still a significant part of Italian life, representing an important business sector and giving rise to a number of interesting judicial developments – especially in the trademark arena.
The same cannot be said of Italy’s cultural heritage, which is often not afforded the proper degree of protection by the legal system.
This article examines a Court of Naples Special IP Section decision, issued on July 23 2009, relating to the world of football, while also looking at the protection afforded to the ‘image’ of cultural heritage as an object of trademark registration.
The Naples court issued an order in response to the unauthorised registration of a football player’s nickname. The court applied Article 8(3) of the Industrial Property Code, which states that: “If they enjoy a reputation, the following may be registered and used as trade marks only by the right holder, or with the consent of the right holder, or with the consent of those listed under Paragraph 1: names of persons, signs used in the artistic, literary, scientific, political or sports fields, names and abbreviations of non-profit events and of non-profit bodies and associations, as well as the characterising emblems of such entities.”
This article was recently amended under Legislative Decree 131/2010, which extended its scope of application to restrict not only registration, but also use.
In 2007 Napoli Football Club signed Argentine player Ivan Ezequiel Lavezzi (who now plays for French club Paris Saint Germain). Lavezzi was also known by his Spanish nickname, ‘el Pocho’. Soon after his arrival in Naples in December 2007, a Baribased clothing manufacturer began to use the trademark EL POCHO for clothing and filed to register EL POCHO 7 (a combination of Lavezzi’s nickname and team jersey number) as a trademark (BA2007C000978).
The Bari-based company’s activities immediately caught the attention of Napoli, which held all Lavezzi’s image, name, face, signature and voice rights as part of its contract with the player.
In March 2009 Napoli filed an application for EL POCHO LAVEZZI 7 (RM2009C001462), also in Class 25, and sought an interim injunction and seizure order (jointly with the player) against the ‘infringing’ company.
The court recognised – based on its own case law and the press dossier filed with the court – that Lavezzi was internationally known outside the world of sport at the time when the application for the EL POCHO 7 trademark had been filed. The defendant’s activities were viewed as parasitic copying, based on the appropriation of the player’s distinctive and individualising elements, such as his nickname and jersey number.
Article 8 of the Industrial Property Code restricts the right to register and (as of 2010) to use marks that incorporate the reputation of a well-known individual to the specific person that was instrumental in establishing that reputation.
This regulation protects the image of a well-known person, reputation of a related mark and its powers of suggestion. ‘Reputation’ is not that of a trademark in the normal sense, but must be linked directly to the image of the person who holds the rights to that mark. In addition, the reputation must be of a purely extra commercial nature, having been created in the artistic, literary, scientific, political or sporting/cultural arena.
The protection afforded exceeds the principle of trademark exclusivity and is not restricted to a single goods class. This form of protection is dependent on the commercial exploitation of a particular mark.
The jurisprudence is not unanimous on this point, and it has been claimed that the restriction does not apply to all goods classes, but merely to those in which use as a trademark might damage an individual’s image; the jurisprudence goes on to state that only extremely famous names enjoy absolute protection.
This is one of the few cases that has dealt with nicknames or pseudonyms. It is not clear whether the regulation that should have been applied in this case was Article 8(3) of the Industrial Property Code or Article 8(2), which states that: “Names of persons other than those who are applying for registration may be registered as trade marks, provided that their use cannot damage the reputation, credit or honour of those who have the right to bear such names. The Italian Trade Mark and Patent Office (UIPM) in any case has power of prior approval over all such registrations.”
The court opted for Article 8(3) (thus bypassing the need to prove damage to dignity or honour), giving a broad interpretation of the concept of a mark’s reputation.
In particular, the court ruled that: “It is sufficient that the name be known beyond a limited area, even within a sector, and above all that the name be subject to economic exploitation, if used (inter alia) as a distinctive sign. Under such circumstances, the right holder may prohibit third parties from registering the name as a trade mark even if it is not altogether famous.’
However, for the court in question, such restriction may not extend to all goods classes, although it did make reference to susceptibility to commercial exploitation.
The court rated the importance of football and Napoli FC in Neapolitan (and indeed Italian) society highly, stating that “the repute beyond its sector of the name and the nickname of the Serie A player is undeniable, regardless of its real prestige”. This is because the football club’s reputation would automatically impact on the player, “rendering the name and possible nickname commercially attractive”; therefore, in all probability, the court was correct in its assumptions.
In the case at hand, the judgment was a foregone conclusion, in part due to the close links between the football and clothing sectors – the latter being a natural merchandising channel for the former. It would have been interesting to see the court’s reasoning applied to other goods areas (eg, technical and mechanical goods classes).
The broad scope of protection afforded to football does not seem to be reflected in another sector for which Italy has also garnered worldwide fame: cultural heritage. The image of cultural heritage is afforded little protection in the trademark arena, confirming the principle that protection of image does not extend to legal persons.
The Industrial Property Code provides for strict protection of the image of natural persons: “Likenesses of persons may not be registered as trademarks without the consent of the subjects, and after their death without the consent of their spouses and children; in the absence of the latter, following their death, the consent of their parents or collateral ancestors, or in the absence or after death of the latter, any relations up to and including the ‘fourth degree’.”
This regulation – and the jurisprudence is unanimous in this regard – may not be applied to legal persons.
The most recent judgment in this area concerned Milan’s La Scala theatre (Court of Appeal, Milan July 30 1996). The image of the well-known opera house had featured on an alcoholic beverage without the consent of the relevant body. The body filed a claim with the Milan Court of Appeal which ruled out the application of the provision. It was stated that piggybacking on the theatre’s reputation by displaying its image would have given the drink an advantage – at the least deriving from the assumption that La Scala had consented to the use of its image, with a consequent derivative benefit from the opera house’s reputation.
However, Article 8(3) as interpreted in the Lavezzi case would have allowed for a broader application that would include cultural heritage marks as “signs used in the artistic field”. Indeed, the notion of marks used in the artistic, literary, scientific, political or sports fields has always been interpreted broadly, since the list provided by the Industrial Property Code is not exhaustive.
Furthermore, this provision is essential for the protection of marks that enjoy no other form of protection and the image of subjects deriving from these.
The code does, however, include other rules that could be seen as applying to the protection of cultural heritage images, specifically the following:
– Article 10(2) – “If the trade mark in question contains words, figures or signs with a political meaning or with a highly symbolic value, or containing heraldic elements, the Italian Trade Mark and Patent Office, prior to registration, shall send the sample of the trade mark and any other elements that might be of use to the public administration bodies in question, or the competent bodies, in order to hear their opinion, in accordance with the provisions of Paragraph 4.”
– Article 19(3) – “State, regional, provincial and municipal administrations may also obtain registration of trade marks, including trade marks having as their object distinctive graphic elements taken from the cultural, historic, architectural or environmental heritage of the relevant geographic area; in this latter case, the proceeds deriving from the commercial exploitation of the trade mark, including fees from licensing and merchandising activities, shall be used for financing of institutional activities or covering the existing debts of the body in question.”
In the first case, there was no genuine restriction on use, but the Trademark and Patent Office was given the task of participating in the process in order to sound out relevant public administration bodies in order to avoid the creation of a monopoly on an image of highly symbolic value. The problem in this case – but also in the case of any application of Article 8(3) – has to do with identifying the relevant public administration entity. For example, in the case of a trademark showing an image of the Coliseum, is the municipality of Rome, the Cultural Heritage Board or the relevant minister responsible? In practice, therefore, this provision is not applied due to this difficulty.
The second provision, which was introduced in 2010, does not contemplate a restriction of registration, but rather a ‘possibility’ offered to public administration bodies and, as such, can be viewed as a pointless legal exercise, or at least useful only in channelling proceeds from the trademark “for financing the institutional activities or covering the existing debts of the body in question” – a pressing question in these crisis-ridden times.
The Italian legal system thus seems to allow for the free use of images from national and international cultural heritage, with the only (possible) limitation that they be used without offending public order or decency.