Zorro parody for mineral water: the limits on using a figure protected by copyright


by Francesco Machina Grifeo

The Cassation, order n. 38165/2022, takes stock of the discipline that protects trademarks and copyrights

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Up to where the parody of a fictional character still protected by copyright to advertise a product commercial? The Court provides an answer to this question, while referring theordinance no. 38165 of the Cassation with regard to the use of the figure of Zorroas well as coming out of the pen of the American writer Johnston McCulley in 1919 (and therefore regardless of the possible “historicity” of the character), by a company producing mineral waters. The company that owned the copyrights of the incomparable swordsman (and which had also licensed its use to Cocacola), had asked for protection with respect to a television and radio campaign in which the avenger played by Max Tortora advertised the water Brio Blue.

The company had defended itself by claiming that the rights had now expired but the Cassation (already consulted for the first time) immediately clarified that under the Geneva Convention of 1952 the works of US citizens published in Italy enjoy the same protection provided by article 25 of our law n. 633 of 1941, i.e. until seventieth calendar year after death of the author.

Having cleared the field of this issue, the Court addresses the limits to the use of a character protected by copyright in a parody key. There First civil sectionaffirming some principles of law, first of all defined what is meant by parody: it is, the Court explains, “a humorous or teasing act which is characterized by evoking a work, or even a fictional character and it does not require its own original fontother than the presence of perceptible differences from the work or character being parodied”.

Therefore, the creative value “it is not affected the identity or near-identity of the forms of expression attributable, respectively, to the parody and the parodied work”. However, the parody “must respect a right balance between the rights of the subject entitled to exploit the work, or character, and the freedom of expression of the author of the parody itself; in this sense, the recovery of the protected contents can be justified within the limits inherent to the parodic purpose and provided that the parody is notdo not prejudice the interests of the owner of the work or of the original character, as happens when you enter into competition with the economic use of the same».

The legitimacy of the parody of the work or of the character created by others therefore finds its foundation in the use envisaged by article 70, paragraph 1, of law n. 633/1942 which allows the summary, quotation or reproduction of passages or parts of a work and their communication to the public, if carried out for the use of criticism or discussion, within justified limits from such purposes and provided that they do not constitute competition for the economic use of the work. Now, the decision continues, the right to criticize and discuss can be used in various ways, including the ironic registerused in satire, and the comic and burlesque one, used in parodywhere, through the use of grotesque provocation, the characterizing elements of a work are ridiculed: an activity that can lawfully be performed also with reference to a fictional character.

So he was wrong Court of Appeal to exclude the legitimacy of the advertising spot by noting that the same it did not integrate a «reworking of an original work having a recognizable creative contribution, aimed at promoting new ideas or new messages from the author to the public», but «a work which is objectively characterized by a obvious connection of the character Zorro, created by J. McCulley». In this way, the Court explains, the District Judge subordinated the free use to conditions other than those indicated above, valuing, moreover, an element ― that of linking to the original character, which is inherent in every representation parody about a fictional character.

It will therefore be the referring judge who will have to verify whether or not the commercial integrates a lawful parody of the character Zorro protected by copyright law.

However, the Section also accepted a ground of appeal of the Zorro Production censuring the decision of the Court of Appeal where it excluded the violation of the trademark right looking like the character it would not be connected to the product and would not be able to differentiate it: “Zorro does not appear to be drinking, in the commercial, the water marketed by … and the image of the same is not even affixed to the product packaging”. A wrong reasoning because, as claimed by the incidental appellant, “for the purposes of counterfeiting there was no need to make use of the sign to physically mark the product since it is sufficient that the trademark is used in a narrative type suitable for hooking up the merits of the trademark of others”.

Ultimately, the Court of Cassation concludes: «On the subject of trademarks (with regard to the regulations prior to the amendment of Article 20 of the Italian Criminal Code implemented with Article 9, paragraph 1, letter a), of Legislative Decree no. 15/2019) the exploitation of the trademark of others, if known, is to be considered prohibited where the use of the trademark without just cause, carried out in the economic activity, allows to draw unduly advantaged from the distinctive character or the reputation of the trademark or cause damage to them, noting that the trademark is not used to distinguish the products or services of the author of the use, as can happen in the case of the parodic representation of the trademark in question».

Zorro parody for mineral water: the limits on using a figure protected by copyright