The source codes of a graphic work can be transferred only with an express agreement

The issue objected of the examination of the Italian Supreme Court of Cassation focuses on who is the owner of a work created on a commission basis.

Even though this is a well-known topic, it does not find in the case-law of merit a peaceful agreeable solution.

Before appealing to the Court of Cassation, the Court of Milan and the Court of Appeal of Milan had spoken differently on the same case.

In the opinion of the Court of Milan, the client owns the exclusive rights of economic use on the idea of the concept of the intellectual work. The territorial Court of Appeal instead thought differently because, in absence of a written agreement and on the basis of the founding principles of the copyright law, such rights belong to the author.

The Court of Appeal of Milan, in absence of a written agreement, adopts an approach favorable to the protection of the author of an intellectual work, considered as an immaterial good, complying to the ratio of the law of April 22nd 1941 n. 633 itself, conceived and in the years, always modified and integrated with the aim to protect the author of the intellectual work even in the context of the articulated situation of the work created on a commission basis.

In the case under exam, a graphic agency created some executive graphic works, related to images of packaging, package leaflets and advertising materials for a pharmaceutical company regarding medications which the same imported and marketed.

To produce such graphic files, submitted to the client ready and executive, the agency had created preparatory works, these too with electronic means, in source format, openable and modifiable.

Concluded their contractual relationship, the pharmaceutical company started a dispute against the graphic company to return the source files which the agency refused to give since it considered them its property and not object of the commission agreement.

With judgment of June 15th 2022 no. 19335, the Court of Cassation puts an end to the issue on who is the owner of the economic rights on the source files confirming the judgment of the Court of Appeal of Milan which recognized the ownership to the agency.

The Italian Supreme Court of Cassation asserted that, in absence of a contract, one should rely upon the principles that the law no. 633 of April 22nd 1941 put at protection of the author starting from the notion of intellectual work itself, which can be protected even if characterized only by a modest degree of creativity.

In the case under exam, the graphic works in the source files containing the instructions to create the material to submit to the client had creative content, even if modest, and they are the product of the independent choices made by the graphic agency which is the original holder.

After acknowledging the copyright on the source files, the Italian Supreme Court of Cassation did not consider them object of the agreement, because the agency is required to submit only the executive files and not also the source files which would represent, in the opinion of the Court, the “corpus mysticum” that always stay in the availability of the author, unless otherwise agreed.

The judgment of June 16th 2022 no. 19335 meets also to the most recent regulatory choices on the protection of the worker/inventor included in the Jobs Act which on the theme of “Original contributions and inventions of the employee” provides that “except for the case in which the inventive activity is provided as object of the employment contract and compensated for this purpose, the right of economic use related to the original contributions and inventions created in the fulfillment of the contract itself belongs to the self-employed worker, following the provisions referred to in Law no. 633 of April 22nd 1941 and of the Industrial Property Code, referred to in the Legislative Decree no. 3 0of February 10th 2005”.


Maria Luisa Milanesi