Published article on World Trademark Review (n.15 September/October 2008)
Image rights are derived from personal rights. Under Italian law, the right to exploit, promote, show and publish an individual’s image, with or without his or her consent, is governed by Article 10 of the Civil Code and Articles 96 and 97 of the Copyright Law (633/1941).
Article 10 of the Civil Code provides that an individual whose image (or that of a close relative) has been published, thereby causing damage to his or her goodwill and reputation, may:
• request that the infringer cease and desist using the image; and
• seek monetary damages to the extent that such publication was not authorized by law.
Under Article 96 of the Copyright Law, it is prohibited to show, reproduce or profit from the reproduction of an individual’s image without his or her consent. Consent may be given and subsequently withdrawn. Under Article 97 of the Copyright Law, consent is not required where use of an image is:
• justified by the notoriety or the function of the person represented; or
• necessary for public, scientific, educational or cultural purposes.
In addition, no consent is required where an image is reproduced in special circumstances, such as public ceremonies or events. In such cases, use of the image without consent is justified by the public interest in the diffusion of information or the promulgation of images.
Permitted use of other people’s images Article 97 provides an exemption from the requirement to obtain consent. However, use of an individual’s image without his or her consent must serve a legitimate interest.
For example, use of such an image for advertising purposes does not constitute a valid justification, as the aim is purely commercial. Moreover, the public interest in the promulgation of the image must outweigh the individual’s interest in profiting therefrom.
Private and public interests must thus be balanced in order to prevent the exploitation of images for commercial purposes only. The balancing of interests will also help uncover situations where Article 97 is used to justify the improper use of an image.
Importance of consent
Consent of the individual whose image is being used must always be obtained (except in the above-mentioned circumstances), especially where the image is exploited for commercial urposes.
Consent need not be given in a particular form and may arise from unambiguous behaviour. However, defining the scope of such consent is imperative. The consent to use an individual’s image must specify the timeframe, place, extent and form in which the image will be used. The scope of implicit consent is defined by the interpretation of the individual’s behaviour. Consent to use photographic representations does not imply consent to use such images in advertisements, as such use would infringe the individual’s image rights.
Rights in one’s name
Advertisements often use the image and name of famous persons. In accordance with Articles 6 and 9 of the Civil Code, consent to use an individual’s name must be obtained where such use is likely to cause prejudice to the individual, or where he or she has suffered damage. The difference between the enforcement of the image rights and enforcement of the right to one’s name is that, in the latter case, the individual must prove that he or she has suffered prejudice. However, the exploitation of a celebrity’s name for commercial purposes almost invariably causes prejudice to the person.
Cost of consent
The illegal and unauthorized publication of an individual’s image is actionable. The individual may seek monetary damages for the dilution of his or her image rights, among other causes of action. The individual may claim that, as a consequence of the infringement, it will be more difficult to make a profit from his or her image, especially when dealing with the infringer’s competitors. Therefore, the notoriety of the individual plays an important role in obtaining monetary damages for the unauthorized exploitation of an image. The individual must prove that he or she would have been able to make a profit from his or her image, as such cause of action is based on lost profits (cost of obtaining consent and cost of using the image).
This does not imply that an individual who is not famous cannot plead such a cause of action. However, the amount of monetary damages awarded will be proportional to the notoriety of the person.
Consequences of abuse
In case of illegal exploitation of an individual’s image, two types of liability arise:
• extra-contractual liability (where the individual’s image has been used without contractual agreement); and
• contractual liability (where the image has been used outside of the scope of the contractual agreement).
In addition, penal liability will arise where the exploitation of an individual’s image causes damage to his or her reputation. Penal liability may also arise where consent has been given.
Two provisions of the Penal Code apply in such cases:
• Article 594, which concerns the protection of a person’s honour; and • Article 595, which concerns defamation and the protection of a person’s reputation.
In addition to monetary damages, the following remedies are available under the law:
• preliminary and permanent injunctive relief;
• destruction and confiscation of infringing goods; and
• publication of the decisions of the criminal courts.
Protection of non-conventional images
Personal images are not always represented in the form of a portrait, photograph or video. There are alternative ways of representing a person. For instance, on April 18 1984 the Court of Rome held that the use of certain features and elements that are suggestive of a famous person may infringe his or her right of image. In the case at hand, the court found that the use in advertising of some objects typically associated with a famous Italian singer (eg, a specific pair of glasses and a hat) constituted infringement.
Use of the image of a counterpart who resembles a famous person has been deemed to infringe the image rights of that person. For such an action to succeed, the counterpart’s image must be represented in such a way that the public is misled into believing that the counterpart is the famous person (Court of Rome, July 6 1987).
Personal images of non-famous individuals
The protection of image rights also applies to non-famous individuals. For example, in one case, the image of a fan of a famous football team was used in a television show (Court of Cassation, March 15 1996, Case 1763); in another case, the image of a worker was used by his company to advertise its business (Court of Monza, June 20 1999).
Photomontage and archive images
On several occasions, the courts have ruled that the use of archive material infringed the image rights of certain actors where the images had been modified for advertising purposes (eg, to give the impression that the actor was holding an alcoholic drink in his hand).
According to Italian practice, any contract relating to the use of personal images must specify the extent of the use and may include special clauses granting:
• exclusive rights in terms of the channel of information; or
• consent to use the image for commercial purposes.
In the case of sponsorship contracts with sports teams, consent to use the team’s photographic or video representation is subject to each player’s consent.