THE COURT OF BARI HOLDS THAT THE TRADE MARK CANNOT SUBSTITUTE AND “PERPETUATE” COPYRIGHT ON AN IMAGINARY CHARACTER

02/03/2016

The Court of Bari holds that the trade mark cannot substitute and “perpetuate” copyright on an imaginary character: LGV Avvocati successfully assists Avela Inc. in litigation involving the Betty Boop character

With judgment n. 953/2016 the Court of Bari (Specialized Division in Intellectual property) held in favor of Avela Inc. – assisted by Ms. Simona Lavagnini and Mr. Luigi Goglia, partners of LGV Avvocati – rejecting the claim of infringement of the Betty Boop marks advanced by Hearst Holding Inc., an important publishing company.


 

Avela is a United States company that, in particular, deals with the production, distribution and licensing of works such as paintings and cinematographic posters related to films and/or animated cartoons. Within this context, Avela had re-elaborated posters of the Betty Boop character, which had fallen in the public domain, and licensed images for the purpose of using them as decorations on clothing items. The very same character – and more precisely the name Betty Boop and a particular representation of the female image partially overlapping a heart drawing – had also been the object of several trade mark registrations (both national and European) by the multinational publishing company Hearst Holding Inc. Thus, Hearst took action against Avela’s licensees for infringement of its trademarks, who in turn caused the licensees to take action against Avela.
The Court of Bari affirmed – for the first time in the case law – an important principle of industrial and intellectual property law, according to which the rights of a trademark owner cannot extend to the character as such, but only to its specific graphical representation. Therefore, anyone who does not hold a copyright over the character cannot substitute that right and attempt to “perpetuate” it via trademark registration. The trademark – so long as it is valid – solely provides for protection against a risk of confusion as to the origin of the products, and falls exclusively on the specific image constituting the object of registration. Otherwise the trademark owner may have a wider form of protection (also not subject to temporal limitations) in contrast to that accorded to the author of the work by copyright law.


 

THE “PIRATE” WHO DOES NOT RESPECT THE TRANSACTION MAY BE SENTENCED FOR INFRINGEMENT OF RIGHTS OVER SOFTWARE

12/02/2016

The “pirate” who does not respect the transaction may be sentenced for infringement of rights over software: LGV Avvocati successfully assists an international IT giant


 

Ms. Simona Lavagnini, partner of LGV Avvocati, has obtained an important judgment in favor of a software multinational corporation. A company from Catania, Sicily, operating in the provision of assistance and trading of IT products, has been condemned by the court for the infringement of copyright over computer programs.
In 2006, in the course of an anti-piracy campaign conducted on a national scale with respect to IT vendors, the software multinational carried out a civil search on the Sicilian company, finding unlawful programs. At the outcome of the procedure, the parties reached a settlement agreement, without going to trial. The Sicilian company did not, however, comply with its own undertakings, and indeed claimed the invalidity of the transaction on the basis of groundless requests, moral damages and willful misconduct. The multinational commenced proceedings requesting the rejection of the opposing claims and the termination of the settlement agreement, and consequently the ascertainment of the original unlawful act (resulting from the civil search), as well as damages, an injunction supported by penalty clause and publication of the decision.
With recent decision n. 1456 of February 3, 2016, the Court of Milan decided in favour of the IT giant, finding a lack of evidence supporting the invalidity request, and acknowledging the serious breach of contract – concerning in particular the omitted payment of the sum agreed in the settlement as damages – committed by the Sicilian company. Consequently, this was followed by a declaration of termination and a revival of all the obligations, including those related to payment of damages, deriving from the unlawful act committed by the Sicilian company.