Ip and Art: an International Perspective

• Jurisdiction: United States,Federal
• Citation: Vol. 45 No. 3
• Publication year: 2020
• Author: Cristina Manasse
• topic: Intellectual Property,Copyright law

IP and Art: An International Perspective

Cristina Manasse

Manasse Studio Legale, Milan

James C. Roberts III

Global Capital Law Group PC

WHO'S AFRAID OF THE BIG BAD WOLF? AN ITALIAN COURT ISN'T

An interesting decision from a specialized division of the Court of Milan was published in April 2020 that turns on an image of a wolf.¹ The court had to determine whether the photographic reproduction on clothes in a fashion line was what we call here a "simple" or an "artistic photograph" and therefore whether actionable infringement occurred.

To American readers this distinction might seem odd, but it is crucial in Italy to determine the extent of legal protection. In this particular case, the distinction would determine the type and therefore extent of copyright protection.² The end result might be that it is another case strengthening the protection of photographs.

What Happened?

At its simplest, the case centers on whether or not the use of a photograph on haute couture pieces without the authorization of the "author" infringed that author's rights. During the 2014 Milan Fashion Week (Italian justice sometimes moves at a slow pace), fashion designer Antonio Marras showcased his new collection in a show with the theme of "The Wolf and the Moon." Marras used a photograph from a famed nature photographer, Daniel J. Cox, whose career spans more than forty years. Readers of National Geographic have seen his images on many covers of that magazine. Cox also authored a book dedicated to wolves, Wolf: Legend, Enemy, Icon.³ The image in question was in that book and in the magazine for photographers using Nikon cameras, Learn & Explore.

Cox Tries to Negotiate Then Sues

According to Cox, Marras never obtained Cox's consent to use the image. For several years Cox tried to settle the matter amicably, but with no success. So, in 2018 he sued Marras' fashion house, seeking a declaration that the image was a creative work, injunctive relief to ban the brand from continued use, monetary damages and acknowledgment that his moral rights were violated. Cox sought €188,000 plus €20,000 for the infringement of his moral rights. In addition, Cox joined Marras' distributor as a defendant.

Marras Counters

Marras countered with numerous defenses. For example, he claimed that his fashion house used a different image. Marras also used the familiar—but usually incorrect—argument that there could be no protection because the image was found on the web and with no authorship attribution. Interestingly, Marras also declared that the image was not even used "as it was only inserted in the moodboard of the collection⁴ and not actually on any of the pieces in the show. (Fashion houses use a "moodboard" as a source of inspiration for the creation of the collection.)

Marras core argument was that Cox's wolf photograph, no matter how famous, would not qualify for copyright protection as a "creative" work, as it had no artistic, creative or distinctive character. Marras needed to win this argument because the twenty-year period of protection for "simple" images had already expired, as the image was created in 1993 and Marras used it in 2014. Were Marras to win on this argument, Cox would get nothing.

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As for the co-defendant, the distributor, he claimed that he was involved with only four pieces, which were not even sold, and so there could be no liability.

In Brief, Applicable Italian Law

For some time now, Italian law has recognized that "photographic works"—i.e., those with distinctive creative elements—enjoy copyright protection. They are treated like the other artworks, which would provide full protection for up to seventy years after the death of the author. During this period the rightsholder would possess both moral and "economic" rights that he or she could protect, meaning that any use by others requires consent of the author (or the rightsholder if it has been assigned).

Unlike the US rights regime extant today, not all photographs are considered equal and therefore do not enjoy complete protection. Italian law defines three categories of photographs:

• "Photographic works," which have a creative "element" and enjoy the strongest protection under the Italian Copyright Law;⁵
• "Simple photographs," which according to art. 87-92 of the Italian Copyright Law are protected for a twenty year term (from the date of the reproduction) and are images of "people or aspects, element or facts of natural and social life, obtained by photographic or equivalent process;"⁶
• "Photographic reproductions" (i.e., "documental" photos) which are mainly reproductions of documents, material items, technical drawings; they are protected under general principles of law rather than the Copyright Law.

The distinctions among the categories are not always clear. Therefore, the Italian courts make their determinations on "case-by-case" basis.

And the Milan Court Decides: Applying The "Creativity" Trend In EU Law

To get to the central question of infringing use, the panel of...