The Supreme Court of Cassation of Italy, with order no. 38165 of the 30th December 2022 spoke out once again on the legitimacy of the commercial of the mineral water Brio Blu where appears a caricature of the famous literary character. The judicial news is already familiar with the episode, as it was object of three judgments of merit and of one of legitimacy, in addition to the order under exam, to which the Court of Appeals of Rome will add another judgement.
The judicial process
In 2007 the American company Zorro Productions Inc. undertook the first judgment because of the publication of the commercial using the Zorro character to advertise Brio Blu water. The company stated to be the exclusive owner of the Zorro trademarks and of the right of intellectual property on the literary character Zorro, created in 1919 by writer Johnston McCulley (deceased in 1958), arguing therefore that the commercial infringed its own copyright.
At the conclusion of this first judgement, the Court of Rome accepted the argumentations of Zorro Productions Inc. but the decision was overturned in 2012, when the Court of Appeal of Rome annulled the first decision stating that the literary character Zorro was public domain. In light of this conclusion, the Court of Appeal considered any other evaluation towards the alleged infringement of the Zorro trademarks unnecessary.
With sentence no. 32 of the 3rd January 2017 the Supreme Court of Cassation annulled however the sentence of the Court of Appeal, founding that, according to the Geneva Convention on 1952, works of American citizens published in Italy benefit from the Italian protection provided by the law n. 633 of 1941, and that is until the 70th calendar year from the death of the author. The same Court of legitimacy then recognized as grounded the motive of appeal with which the omitted ruling on the questions aimed at ascertaining the infringement of the trademarks referred to the Zorro character.
Thus, the judgement was then summarized before the Court of Appeal of Rome which, in 2018, accepted the reasons of Zorro Productions Inc., stating that the sole use of the fictional character can constitute a copyright infringement in presence of a servile imitation and that such imitation cannot be considered licit only because the commercial consists in a simple parody of the character of Zorro. With reference to the trademarks, the Court of Appeal has then excluded the infringement, considering that the reference to the Zorro character resulted operated in narrative context, without “any distinctive intent” coming to the limelight. Nor did it find an unfair competition hypothesis “as it could not be found in the commercial, in reason of its content and the used expression, an appropriation of the valorization activity of the character made over time by Zorro Productions, nor an inexcusable conduct aimed at damaging the latter”.
The losing party decided to appeal against this judgment by saying that the parodic use of the Zorro character is different from a reworked version of the work and that, in virtue of the parody, the use of this character cannot be considered a copyright infringement.
The principles stated by the Supreme Court of Cassation
The Court of Cassation, to whom the question was addressed a second time, stated again that the conclusions of the Court of Appeal should be disregarded. After recalling that a fictional character benefits from an autonomous and independent protection from the one accorded to the work, the Court stated the following principles of law regarding the parodic purposes of the reproductions of fictional characters:
“On the theme of copyright, parody constitutes a humoristic or mocking act which is characterized to evoke a work, or also a fictional character and does not require an original character, different from the presence of perceivable differences from the work or the character being parodied. (…) parody must respect a fair balance between the rights of the subject having title to the exploitation of the work, or the character, and the freedom of expression of the author of the parody itself; to this effect, the use of protected content can be justified within the limits connected to the parodistic purposes and provided that the parody does not prejudice the interests of the owner of the work or of the original character, as it happens when it enters in competition with the economic use of the same”.
For what pertains to the use of the Zorro trademarks, the Court ruled that:
“On the subject of trademarks, considering the discipline preceding the modification of art. 20 c.p.i acted by art. 9(1)(a) of the Legislative Decree no. 15/2019, the exploitation of the trademark of others, if well-known, must be considered prohibited when the use of the sign without fair motive, carried out in the economic activity, allows to gain an indebt advantage from the distinctive character or from the fame of the trademark or it prejudice the same, even though that the trademark is not being used to distinguish products or services of the author of the use, as it can happen in case of parodistic representation of the trademark at issue”.
Conclusions
Now it is the turn of the referring Judge to verify whether the Brio Blu commercial, in light of such criteria, is a legitimate parody of the Zorro character. For now, after almost 16 years, the report is of 3 favorable judgments for the American company and two for the legitimacy of the commercial.
There is nothing left to do but to wait for the judgment of the Court of Appeal of Rome.
Ilaria Feriti