To what extent is it permissible to parody a copyright protected fictional character for advertising purposes? A recent judgment by the Italian Supreme Court shed some light on the limits of parody under both copyright and trade mark law: although for copyright purposes a link to the character is essential to any parody and thus permissible, the parody should not interfere with the character’s economic use as a trade mark.

The Supreme Court’s decision in CO.GE.DI. International – Compagnia Generale Distribuzione s.p.a. v Zorro Productions Inc. (decision 38165/2022) hopefully provides some closure to the never ending judicial battle over the character of Zorro.

Background

In 2007, Zorro Productions — owner of the copyright and several trade marks in the unrivaled swordsman — claimed that its rights were infringed by a depiction of the character with respect to a TV and radio advertisement in which the ‘vigilante’, played by actor Max Tortora, advertised the bottled water brand Brio Blu.

On the first appeal, the Court of Appeal overturned the first instance decision of the Court of Rome, holding that the Zorro character had fallen into the public domain meaning that it was not protected by copyright.

In 2017, the Italian Supreme Court reversed the Court of Appeal’s judgment, noting that US works published in Italy enjoy the same copyright protection as in the United States, i.e., the 70-year post mortem auctoris term. The Supreme Court therefore sent the case back to the Court of Appeal for a new assessment.

In 2018, the Court of Appeal then ruled that Zorro is in fact a copyright protected fictional character and the parody in the advertisement amounted to copyright infringement. It did so for two reasons. First, it found that a parody requires a creative re-elaboration of an earlier work, and this re-elaboration was missing from the TV depiction. Second, it noted that Italy did not transpose into its legal system Article 5(3)(k) of the InfoSoc Directive which provides for caricature, parody or pastiche as an exception to copyright.

CO.GE.DI., the producers of the advertisement, therefore appealed, once again, to the Italian Supreme Court.

The decision

First and foremost, the Supreme Court found contrary to the Court of Appeal that a parody is not, and should not be, a ‘creative re-elaboration’ of an earlier work. A parody necessarily has a “parasitic character”, and therefore cannot be considered a mere “re-elaboration” but rather a new, original work. Legitimate parody does not exist in a relationship of “continuity” with the original work (as happens, for example, in the case of a linguistic translation), but implies a complete “conceptual overthrow” of the original work.

Second, the lawfulness of parodying a work or character created by others is based on the right of free use provided for by Article 70 par. 1 of the Italian Copyright Law (ICL). This article permits the summary, quotation or reproduction of excerpts or parts of a work and their communication to the public, if carried out for the use of criticism or discussion, within the limits justified by these purposes and provided that they do not constitute competition with the economic use of the work.

Italy specifically did not transpose Article 5(3)(k) of the InfoSoc Directive because the ICL already provides for what is covered by that provision: a parody, caricature, or pastiche is indeed part of the quotation exception.

The Supreme Court returned the case to the Court of Appeal, to rule on whether the TV depiction therefore constitutes a lawful parody of the Zorro character in accordance with Article 70 par. 1 of the ICL.

Moving on to the trade mark element of the case, the Supreme Court upheld Zorro Production’s claim. The Court of Appeal had previously found no infringement of Zorro Production’s trade mark by observing how the character in the advert was not connected to the product: “Zorro does not appear to drink, in the commercial, the water marketed by Brio Blu and the image of the same does not even appear to be affixed on the product packaging”. The Supreme Court disagreed, noting that the key issue when determining trade mark infringement is not whether a sign is used in the course of trade, but rather whether it is used as a trade mark, i.e., as an indicator of origin of goods or services.

In fact, the Supreme Court clarified that the exploitation of someone else’s trade mark, if that mark has a reputation, is prohibited where the use of the sign takes unfair advantage of the distinctive character or reputation of the trade mark, regardless of whether it is used to distinguish goods or services.

The parody of a trade mark “which derives its vitality from the [trade mark]’s notoriety creates a link…that often results in an undue exploitation on the part of the author of the parody, in the dilution of the sign, or both”. Exploitation of someone else’s trade mark is therefore prohibited when the use of the sign in the course of trade, without due cause, takes unfair advantage of or damages the trade mark’s reputation. It does not matter if the trade mark in question is not used to distinguish the goods or services promoted by the author, as may be the case in a parody representation.

This reasoning comes in the wake of now well-established CJEU jurisprudence: it is erroneous to think that a trade mark – especially a well-known one – is just an indicator of origin and that the only use which matters is that of a sign in this sense (see Judgment C-487/07, L’Oréal/Bellure).

The Court of Appeal will therefore have to make a new assessment to verify whether unlawful advantage or damage to the trade mark was caused by the TV depiction.

Comment

The Italian Supreme Court’s decision – which is likely to impact similar cases in other jurisdictions – demonstrates two key points:

1. Parody is different to creative elaboration because it does not exist in a relationship of continuity with the original work, but implies a conceptual reversal of it. To equate parody with creative elaboration would mean subjecting it to the author’s consent and thus endangering the survival of the genre itself. In many cases, it is not conceivable that the author of a work would appreciate and consent to its comic misrepresentation. Therefore, the Court of Appeal was wrong to censor the linking of the character in the commercial to Zorro, because this link is an essential element in any parody.
2. Parody is permissible only if there is a fair balance between the rights of those entitled to the exploitation of the character, and freedom of expression. Freedom of expression must not in any case prejudice the interests of the owner of the trade mark such that it interferes with its economic use. In this regard, the Supreme Court upheld Zorro Productions’ appeal, because in parody there is a risk of parasitic entanglement.