Italian court confirms that unauthorized use of Audrey Hepburn's likeness infringes (post mortem) image rights

One of the T-shirts produced by the defendant

Italian image rights protection is notoriously quite strong and is also available post mortem. In the latter case, consent to the use of one's own likeness must be obtained, in the first place, from the person's spouse and children.

An estate that has been quite keen on enforcing post mortem image rights is that of actress Audrey Hepburn. Not all readers might be aware of the fact that the late icon had a close connection with Italy: in fact, her second husband was Italian psychiatrist Andrea Dotti. They had a soon together, Luca Andrea, who was born in 1970.

The IPKat has already reported on a case brought jointly by Luca Andrea Dotti and Audrey Hepburn's other son, Sean Hepburn Ferrer, and decided by the Court of First Instance of Milan in 2015 concerning unauthorized evocation (not even direct use) of the likeness of Audrey Hepburn in an advertisement. 

The Milan court held that even such use of someone's likeness might violate that person image rights, as per Article 10 of the Italian Civil Code and Article 96 of the Italian Copyright Act.

Now Luca Andrea Dotti and Sean Hepburn Ferrer have obtained another victory against the unauthorized use of their mother's likeness: this time from the Turin Court of First Instance (sentenza 940/2019, RG 12322/2017 - thanks to the MartiniManna team for commenting on this decision on their very useful blog).

Let's see what happened.

Background

In 2017, Audrey Hepburn's sons sued a company over the unauthorized commercial use of their mother's likeness on T-shirts, and sought damages for EUR 72,500. The T-shirts commercialized by the defendant company, in which Audrey Hepburn is represented with her middle finger up or covered in tattoos or with big chewing-gum bubbles, were very successful, and even the orders placed by the claimants were actioned late due to the need of re-stocking the items.

The cease-and-desist letters sent by Hepburn's sons were devoid of effect. Hence, the proceedings before the Turin court.

Among the arguments advanced by the defendant there was the one according to which no consent was required from Hepburn estate, in that Article 97(1) of the Italian Copyright Act provides that [the translation from Italian is mine]:

The consent of the person whose likeness is reproduced is not required when the reproduction of said likeness is justified by the notoriety of that person or their public role, by needs of justice or police, by scientific, educational or cultural objectives or when the reproduction is linked to facts, events, ceremonies that are of public interest or took place in public.

The defendant further argued that:

• Use of Audrey Hepburn's image on its T-shirts was not aimed at causing prejudice (which in any case should be assessed in light of the specific circumstances of the case at issue) or blurring the image of the actress, but rather celebrating female empowerment.  
• Use of Hepburn's likeness should not be intended as a slavish reproduction of her likeness, but rather as a "different and completely original work" (on the possibility of protecting something that is also potentially infringing, see this recent decision of the Italian Supreme Court). 

Unauthorized use of The IPKat's likeness
in Breakfast at Tiffany's

The decision

The Turin court found all arguments advanced by the defendant 'groundless'. 

With regard to Article 97 of the Copyright Act, the court recalled that the Italian Supreme Court has clarified how this provision, it being a derogation from the general rule of image rights protection, should be interpreted strictly. As a result,

the unauthorized use of someone's likeness is only lawful insofar as and to the extent that it fulfils public information needs, not also when it pursues other objectives (advertising, commercial, etc).

The court also found that the particular way in which Audrey Hepburn was represented on the T-shirts would also cause prejudice to her honour and reputation. As such, the claimants were entitled to repress said use in light of Article 97(2) of the Copyright Act.

As a result, the court found that Audrey Hepburn's image rights had been violated, and ordered the defendant to pay the claimants EUR 45,000 as economic damage, determined on the basis of the 'price of consent', that is the price of a hypothetical licence fee. 

Comment

The decision of the Turin court is not surprising, as it is in line with a consolidated string of cases concerning image rights protection.

Not only does this decision confirm that image rights protection can go quite far, but also stresses once again the gap in protection between continental European countries which, like Italy, have self-standing and consolidated image rights and countries, like the UK, where such protection is unavailable. Readers will remember that in Fenty v Arcadia both the High Court and the Court of Appeal noted how image rights as such do not exist in that country [see here].

With regard to Italian law, one might consider whether the limitation - confirmed by the Turin court - of the lawfulness of the unauthorized use of one's own image to public interest scenarios is fully compliant with Article 10 of the European Convention of Human Rights (ECHR). In its case law, in fact, the European Court of Human Rights has reiterated on multiple occasions that freedom of expression and information might also encompass commercial scenarios. However, that court has also confirmed that, while Article 10(2) ECHR leaves little room for restrictions on freedom of expression in political matters, Contracting States enjoy a wide margin of discretion when they regulate freedom of expression in the commercial field (see, eg, Ashby Donald, para 39).

In any event, the potential conflict between freedom of expression - whether commercial or artistic - and image rights has also emerged elsewhere, including in the US. Last year, The IPKat reported on the decision of Court of Appeal of the State of California - Second Appellate District, which found that “[T]he right of publicity cannot, consistent with First Amendment, be a right to control the celebrity’s image by censoring disagreeable portrayals.” (the case was initially brought by Olivia de Havilland, who famously starred alongside Vivien Leigh and Clark Gable in Gone with the Wind, against FX, the producers of TV miniseries Feud: Bette and Joan over a disagreeable portrayal of herself thorough the eponymous character as played by Catherine Zeta-Jones).

Image rights, honour and reputation, freedom of expression, misappropriation, free riding ... there is  a bit of everything in this area of IP law! 

[Originally published on The IPKat on 11 June 2019]