Spot with Zorro free, only if there is no undue advantage

Zorro’s parody is free because it is part of the free expression of thought. But freedom encounters a limit in the undue advantage drawn from the use, even in a “caricatural” way, of the black avenger. In fact, the OK from the American house Zorro Production is needed if the masked hero is used, even if in parody, in an advertising spot from which an illicit return is drawn, thanks to the distinctive character of the brand which is perhaps even prejudiced. Ok from the owner of the rights and payment of royalties are due, in this case, even if the brand is not used to distinguish the products of those who use it for commercial purposes.

The spot at the center of the controversy

The Court of Cassation returns to the judicial never ending story which, for 17 years, has seen the American company that owns the trademarks of the character created by the pen of the American Johnston McCulley – with a right to royalties valid up to 70 years after the death of the author – and Cogedi international, an applicant Roman company, accused of having commissioned a television and radio campaign in which the good Max Tortora, with cordobès sombrero and mask with Zorro’s z – to conceal the true identity of the mild and awkward Don Diego de la Vega, – he defined «Rocchetta Brio Blu» as unique and sparkling, like his friend who defended the people in Los Angeles from the bullying of the invaders during the Spanish domination. For the owners of the brand it was an illicit use, made in violation of copyright laws. For the Capitoline society the legitimate exercise of the right to stage a “pastiche” on a fictional character. The latter thesis, which the Cassation shares but with some distinctions, which lead the judges to cancel with postponement, and to also accept the appeal of Zorro Production on this point.

The limits of parody

The judges clarify that the parody does not fall into the category of creative elaborations, because it is not placed in a relationship of continuity with the original but integrates a real conceptual reversal of the creation to which it refers. To assimilate parody to creative elaboration would mean subjecting it to the consent of the author and therefore jeopardizing the survival of the genre itself. In fact, it is difficult to think that the author of a work appreciates his comic misrepresentation. The Court of Appeal was therefore wrong to censure the linking of the character of the spot to Zorro, because the link is an essential element in every parody. The latter is therefore lawful, but only if a fair balance is respected between the rights of those entitled to exploit the character and freedom of expression, which must in any case not prejudice the interests of the owner of the trademark or of the original character, in the case compete with economic use. And here the Supreme Court instead accepts the reason for the appeal of the US company, because in the parody there is a risk of parasitic coupling.

The risk of unfair advantage

The caricature of someone else’s trademark «which draws its vitality from its renown creates a bond with the message it carries: a bond that often translates into an advantage for the author of the parody, in the erosion of the value of the sign, or both phenomena. Exploitation of someone else’s trademark is therefore prohibited when the use of the sign in economic activity, without a just reason, allows you to take an undue advantage from the reputation of the brand or damage it. And it doesn’t matter if the trademark in question is not used to distinguish the products or services promoted by the author, as can happen in parodic representation. The sentence is therefore annulled with postponement. And the Court of Appeal will have to verify whether the commercial resulted in an illegal advantage or damage to the brand. There will still be other episodes of the judicial controversy which has the hero most loved by children as the protagonist and beyond. A character, with a name that means Fox in Spanish who, since the 1900s, has become a symbol of the fight against injustice. With a sword tip signature that marks the end of any arrogance.

Spot with Zorro free, only if there is no undue advantage