Last month, the Milan Court of First Instance issued a decision (sentenza 2539/2020, available on darts-ip and already commented here) concerning the alleged infringement, by fashion house Antonio Marras, of copyright (both economic and moral rights) in the photograph below, which the latter had used without the photographer’s authorization in its Fall/Winter 2014-15 fashion collection and campaign:
|The claimant's work (L) and an item from the Antonio Marras Fall/Winter 2014-15 collection|
The court sided with the claimant, having established that his photograph – which has been also registered with the US Copyright Office - would qualify for protection under the ‘ordinary’ copyright regime.
Under Italian law, in fact, photographs may be protected in two ways: on the one hand, there is the ordinary copyright regime, which is available to photographs that display a ‘creative character’ under Articles 1 and 2 No 7 of the Italian Copyright Act; on the other hand, simple photographs (fotografie semplici) are eligible for a 20-year term of protection, in accordance with what is allowed under Article 6 of the Term Directive and the regime in Articles 87-92 of the Italian Copyright Act.
The defendant’s arguments
Defendant Antonio Marras had submitted that the claimant’s photograph would not qualify for copyright protection, it being devoid of “any particular artistic, creative or in any case distinctive [sic] character”. It had also noted that, whilst the photograph had been taken from the internet, it was not eventually used in the campaign. Rather, it was included in the collection’s moodboard as a source of inspiration for the designer.
Additionally, if such photograph was to be protected, the applicable regime would be that of simple photographs rather than copyright. If accepted, this would have meant that no infringement could subsist, since the photograph had been taken in 1993 and the campaign was the one for the 2014-15 season.
The Court rejected the defendant’s arguments. First, it found that the claimant's photograph had been actually used (see above). Secondly, it established that the claimant’s photograph would qualify for the ordinary copyright regime.
The Court recalled that, whilst copyright protection is available subject to the photograph at issue displaying the personal touch of the author and their choice and study of the portrayed subject, protection under the simple photographs regime is for photographs that are “a mere representation of reality, albeit that is through particularly refined or complex photographic techniques”.
Focusing on the copyright regime, the Court referred to the decision of the Court of Justice of the European Union (CJEU) in Painer, C-145/10, which held that “an intellectual creation is an author’s own if it reflects the author’s personality. That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices” (at -).
According to the Milan court, the author’s personality is visible when the choices made are “supported by a clear artistic ability that goes beyond a simple photographic reporting”. However, ‘artistic ability’ is irrespective of the quality of the shot.
Applying these principles to the case at hand, the Court found that the claimant had carefully chosen:
- the subject of his photograph (the wolf in its natural environment);
- the precise moment he wanted to capture (the howling wolf);
- the angle and technique of the photograph, as well as the lighting and the frame, so to evoke precise emotions in the viewer that would go beyond the reality represented in the photograph.
The Court could have stopped here (the Painer CJEU decision only requires consideration of what free and creative choices have been made so that the personal touch of the author is visible in the creative result), but instead – to strengthen its conclusion – deemed it necessary to note:
- the US copyright registration;
- the inclusion of the photograph in a published book;
- the creative quality similar to that of photographs published on magazines like National Geographic and Nikon Learn&Explore;
- the appreciation by commercial operators;
- that the claimant's work is one of the first images returned by Google upon searching “howling wolf” or “lupo ululante”.
The Court also recalled that the mere fact that a photograph is publicly available does not mean that it is also in the public domain (😅). It pointed out that, moreover, a fashion business like the defendant could not be unaware of this.
|The iconic Falcone and Borsellino photograph|
was found to be ineligible for copyright protection
The outcome of this case is not surprising or, rather, should not be surprising.
However, it may not be a given that a photograph, even a well-known one, is deemed eligible for copyright protection rather than for the simple photographs regime.
Readers may indeed remember that, not too long ago, the Rome Court of First Instance ruled that an iconic photograph of judges Falcone and Borsellino (left) would not qualify for copyright protection, on consideration that the photographer had merely happened to be in the right place at the right time [Katpost here].
But are the choices made by the photographer of that historical shot very much or - rather - any different from those made by the claimant in the Marras case? Probably not.
[Originally published on The IPKat on 19 May 2020]