IP news from Michelangelo and Batman

Historic ruling in Italy: cultural heritage asset has image rights

The Court of Florence has for the first time recognised image rights to cultural heritage assets. The decision was handed down in a lawsuit brought by the Galleria dell'Accademia (the “Academy”) against the publisher of GQ magazine for the improper and unwarranted use of Michelangelo's David on one of its covers. This decision comes just a few weeks after an analogous case in the Court of Venice, where a German company was ordered to stop using the image of the Vitruvian Man for the merchandising of a puzzle.

The facts date back to 2020, when the Italian magazine GQ sent an email to the Director of the Academy requesting permission to use David's image for its next cover. Indeed, the Italian Cultural Heritage Code (CHC) foresees in its articles 107 and 108 that commercial uses of cultural heritage assets held by public Italian institutions are subject to prior authorisation from the institution holding the asset. These provisions derive from a constitutional mandate contained in Article 9.2 of the Italian Constitution: "The Republic shall safeguard the historical and artistic heritage of the Nation". It is to be noted that this rule applies irrespective of the copyright status of the asset – the sculpture of David has been in the public domain for centuries.

Here, therefore, authorisation had to be sought from the Academy, which displays the sculpture as part of its collection. The Director of the Academy authorised the use of David's image subject to two conditions: that the image of David would not be altered, and that the cover would be accompanied by an editorial article on the Academy’s and Michelangelo's work.

Despite the Academy’s express instructions, the defendant used the image of David's body for the cover of the July-August 2020 magazine, to which it superimposed the face of one of the models of the moment, Pietro Boselli. The image was created using lenticular paper technology, which allowed the body of the sculpture and the face of the model to merge perfectly, evoking confusion between the two. The cover was accompanied by the title "New Rinascimento".

The Academy sued the magazine's publisher for violation of articles 108 and 109 of the Italian CHC and article 9 of the Italian Constitution, requesting compensation of €80,000 for economic and moral damages. The case went to the Court of Florence, which recognised the existence of image rights analogous to that of natural persons with reference to cultural heritage.

Indeed, the Court stated that the existence in the legal system of image rights for cultural property safeguards the historical-artistic character of cultural heritage by prohibiting its reproduction without authorisation. It also recalled that this recognition follows the path traced by Italian case law, which has already recognised on previous occasions image rights to legal persons, and even to mere goods (Cass. Civ. N.18218/2009).

Regarding this case, the Court of Florence considered that the defendant's behaviour constituted a violation of the rules of the CHC contained in Articles 107 and 108 as well as of the constitutional principle enshrined in Article 9. It found that these rules were violated by reproducing the image of Michelangelo's David without consent, without paying any fee and in disregard of the conditions laid down by the Academy, which expressly prohibited the alteration of the image of David.

Consequently, the Court ordered the defendant to pay €20,000 for economic loss and €30,000 in respect of non-pecuniary damages. The Court concluded that the image of David had been seriously damaged by the magazine, which "indirectly and maliciously" compared the image of Michelangelo's David with that of a model, "thus humiliating the high symbolic and identity value of the work of art for advertising purposes”.

Italian courts have ruled along these lines in previous litigation, most famously in 2017, where the Court of Florence already prohibited the unauthorised commercial use of David's image. However, in the present case, the approach is somewhat different, as the unauthorised use does not consist of a mere reproduction of David's image but of a juxtaposition of its image through lenticular paper technology with the image of a model.

Following the decision of the Tribunal of Florence, the debate on the CHC has been reopened. Critics of the regime contained in the CHC agree that it represents an infinite extension of classical copyright prerogatives for works that have been in the public domain for centuries. Others defend that this protection responds to a collective interest, unlike copyright, whose nature of protection is individual and exclusive. What is certain is that the Italian Administration is competent to stop any lucrative use of works considered as Italian cultural heritage.

Just a few days ago, the Academy announced that it has taken legal action against the famous Parisian brand "Longchamp", which launched a limited-edition bag showing the intimate parts of Michelangelo's David to celebrate the reopening of its shop in Florence. Cecilie Hollberg, its director, has declared that "nobody has asked for authorisation" and that they are outside the law, and that the Academy will therefore proceed to sue together with the state's legal attorney.

Batman wins EU trade mark dispute

The evidence submitted to the General Court is not sufficient to show that the EU trademark represented by a bat in an oval frame was devoid of distinctive character at the time of its registration. The General Court has dismissed in its entirety the action brought by Luigi Aprile and Commerciale Italiana (“applicants”) seeking the invalidity of the EU trade mark registered by DC Comics. 

On 21 January 2019, Commerciale Italiana sought a declaration of invalidity of the EU trade mark registered by DC Comics for goods in classes 25 (hats and caps; shorts; jackets, etc.) and 28 (Masks; novelty buttons, novelties, and party hats) of the Nice Classification. On 21 May 2020, the Cancellation Division dismissed the invalidity application, so the applicant filed an appeal with the EUIPO against the Cancellation Division's decision. On 6 September 2021, the Second Board of Appeal of the EUIPO dismissed the appeal lodged by Commerciale Italiana. The applicants now asked the General Court to annul this decision.

The action alleges infringement of Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 on the European Union trade mark (“EUTMR”). The applicants submit that the mark at issue is, first, devoid of any distinctive character and, second, that it describes one of the characteristics of the goods in question.

Regarding the first argument, the applicants submit that the mark at issue is devoid of distinctive character in accordance with Article 7(1)(b) in that it is not perceived by the relevant public as an indication of the origin of the goods in question, but as a symbol referring to the character Batman.

The General Court points out that, for a trade mark to possess distinctive character within the meaning of Article 7(1)(b), it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking. In particular, the distinctive character of a trade mark must be assessed, on the one hand, by reference to the goods or services in respect of which registration of the mark is applied for and, on the other hand, by reference to the relevant public's perception of them. The Court states that the Board of Appeal correctly found that the relevant public associated the contested mark with the insignia of the Batman character, and that that insignia was always associated with DC Comics. It further argues that the existence of copyright protection of the Batman character does not preclude the sign from being simultaneously protected by trade mark law.

Regarding the second plea, the applicants submit that the contested mark describes one of the characteristics of the goods concerned and therefore that it is descriptive as per Article 7(1)(c) EUTMR. The Court points out that, for that to be the case, the sign must suggest a sufficiently direct and concrete link with the goods or services concerned to enable the relevant public to perceive immediately a description of those goods.

The General Court considers that it is not established that the relevant public perceives the contested mark as a reference to the fact that the goods in question contain a depiction of the Batman character including that mark. And it confirms that the Board of Appeal was right to find that the contested mark referred to the origin of the goods in question, since the relevant public associated that mark with DC Comics regarding all of those goods.

Thus, the General Court upholds the contested decision and recalls that, in the context of invalidity proceedings, given that the registered trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call into question the validity of that trade mark. In the present case, the General Court considers that it has not been established that the mark is devoid of distinctive character or that it describes one of the characteristics of the goods in question. It therefore dismisses the appeal in its entirety.