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