The Court of Rome, by decision issued on May 17th 2024, marked a significant precedent on copyright, in particular for what pertains to the protection of the title of a literary work. The case concerned two works, both titled “La Scordanza” published within 9 years from each other and the focus was the distinctive eligibility of the title of a work, protected by art. 100 of the Italian Copyright Law (l.d.a 633/1941).
The case: a dispute on the title
The dispute involved the author of a novel published in 2008 who, in 2017, sued the author and the publishing company responsible for the publication of a book with the same title.
The author stated that the title “La Scordanza”, originally used for his novel, was the product of a creative and distinctive process, as taken from old dialects of the South of Italy and used to represent the central theme of the plot: the oblivion of an emotional trauma, specifically the premature death of the main character’s daughter. The use of the same title without the explicit consent from the writer caused confusion between the two works, damaging the success of the first novel and infringing the copyright of the author on the use of the same title.
The defendant contested the claim of the counterparty, stating that the term “scordanza” was not his exclusive use, as it belonged to the dialect and folk culture of some Italian regions, and that the contents of the two works were sufficiently different as to avoid any risk of confusion among readers.
The Court rejected these arguments, considering that, even though the term did already exist and was not invented by the author, its use as a literary title gave a specific distinctive capacity to the work, regardless of an evaluation on the features of creativity and novelty which are constitutive elements of copyright on a work of ingenuity ex. Art. 1 and 2 of the Italian Copyright Law.
The decision of the Court: the title as a distinctive sign
The judgment clarified that the protection of a title is not based on the requirements of originality, creativity and novelty of the disputed title, but on the capacity to identify clearly the work to which it is associated.
In this case, the Court considered that the term “La Scordanza”, even if used in other linguistic circumstances, has limited diffusion in the modern language ad also in the literary one, as well as a meaning strictly connected to the plot of the novel, thus ending up gaining the features of a “strong” distinctive sign. Therefore, that title is worthy of protection in light of the distinctive function that it expresses on the work, as the “identifying effectiveness” is the sole reason of the juridical protection accorded to literary titles.
Moreover, according to the decision, the use of the same title for the two books had created a real risk of confusion among readers, and an advantage for the author of the second book, which could have benefitted from the acknowledgement achieved by the first novel, already broadly appreciated by the critic.
The implication of the decision
The court decided that the use made by the defendant of the title “La Scordanza” infringed art. 100 of the Italian Copyright Law. Therefore, it ordered the withdrawal from the market of the book published in 2017 and the court granted the author, as compensation, a lump sum (2,500€) equal to the so-called “consent price”, that is the amount that the defendant would have paid the author in order to lawfully use that title.
However, the Court rejected the other plaintiff’s request of compensation for moral damages, as it did not consider the use of title made by the defendant to be denigratory or damaging for the reputation of the author or their work.
Protection of the title of a literary work : criteria of protection and non-expiration for non-use
A crucial aspect of the decision is the confirmation of the principle according to which the protection of the title does not depend necessarily on the originality or notoriety of the work itself, but on its capacity to distinguish clearly a work from the others and to avoid confusion in the public ex. Art. 100 of the Italian Copyright Law.
Thus, the title of a novel carries out a function similar to the one of a trademark: it protects the identity of the work and hinders any misuse. On the other hand, the Court clarified that, differently from trademarks or newspapers titles, literary works are not affected by the possibility of expiration for its lack of use by the author.
In such way, a more stable and long-lasting protection for novels titles is guaranteed, which can be re-published even many years later by the legitimate authors without fear of losing the identity and integrity of their works.
Teresa Franza