Does a cover band's use of a singer's first name infringe trade mark rights in a celebrity's name?

Author: Michele Giannino (Desogus Law Office, Cagliari, Italy)

G.A. v D.A., Italian Court of Cassation, First Chamber, Judgment of 11 February 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv078, first published online: April 23, 2015

In Ciao Rino the Court of Cassation ruled that a cover band, named ‘Ciao Rino’ after the first name of a famous singer whose songs it performed, did not infringe the trade mark rights in the name of that singer: since the ‘Ciao Rino’ sign only included the first name of the artist, it fell outside the statutory trade mark protection for celebrities' names.

Legal context

Under the Italian legal system the legal basis for the trade mark protection of celebrities' names can be found in Article 8(3) of the Code of Intellectual Property (CIP). This provision lays down that the names of a person, if famous, may be registered as a trade mark or may be used by the person holding the right or with his or her consent. Further, under Article 8(3) CIP, a third party may lawfully use the name of a famous person as a distinctive sign only with the consent of the right holder.

Facts

Rino Gaetano

Rino Gaetano, an iconic Italian musician and singer-songwriter, died in a car crash in 1981 when he was at the peak of his artistic career. The plaintiff, GA, was Rino Gaetano's sister and heir. With fans still loving the works of Rino Gaetano even after his death, GA decided to create a cover band that would play only the songs of her brother. The band was named ‘Ciao Rino’ after the messages left by fans on the singer's grave. GA also acted as manager of the band; in 2001 she successfully filed an application to register ‘Ciao Rino’ as a trade mark. The defendant, DA, was the leading singer and frontman of the Ciao Rino band. After a while DA started to modify the lyrics of the songs by Rino Gaetano and, in 2002, DA left the Ciao Rino band to create his own cover band of the same singer while continuing to use the ‘Ciao Rino’ sign for the activities of his brand new act.

GA sued DA in the District Court of Rome. The plaintiff asked the court to establish that she was the owner of the ‘Ciao Rino’ trade mark and that DA infringed her trade mark rights. As heir to Rino Gaetano, she also claimed her right to oppose the changes made by DA to the works of her brother because such changes were detrimental to the honour and reputation of the deceased singer. DA replied that he had created the ‘Ciao Rino’ mark and also argued that he and his cover band had been using this sign for a period of three years before GA applied to register it as a trade mark. In the light of the above, DA pleaded that he had acquired prior rights in the ‘Ciao Rino’ mark.

The District Court of Rome accepted DA's prior rights claims and dismissed GA's trade mark infringement action. The District Court also rejected GA's claims for the violation of moral rights since she was found to have no standing to enforce those rights. All the findings of the District Court were upheld on appeal by the Court of Appeal of Rome. GA challenged the judgment of the appellate court before the Court of Cassation. In support, she pleaded that the lower courts erred in applying Article 8 CIP and in allowing the prior rights defence.

Analysis

From the outset the Court of Cassation (the Court) took the view that the appeal had to be struck out on procedural grounds. GA had claimed for the first time before the Court of Appeal of Rome that Article 8(3) CIP empowered her to prohibit DA from using the ‘Ciao Rino’ mark. By doing so, the plaintiff infringed Article 345 of the Italian Civil Procedure Code which disallows the submission of new facts and claims before appellate judges. Notwithstanding that, the Court considered the merits of the case, focusing in particular on whether GA could successfully invoke the protection in Article 8(3) CIP and concluding that GA's claims should be dismissed on the merits since the facts of the case did not meet the requirements for the application of Article 8(3) CIP.

First, the Court dealt with the question whether the first name ‘Rino’ included in the ‘Ciao Rino’ mark could be considered as a well-known name for the purpose of Article 8(3) CIP. No, said the Court, which assumed that name of Rino Gaetano was well known (this was a safe assumption, considering how popular his songs were and still are in Italy). However, the concept of ‘name’ in Article 8(3) CIP should be construed as embracing the first name and especially the last name of a well-known person. The Court stressed that it is the last name which constitutes the element that identifies and characterizes the famous name. Secondly, from the motions submitted by the plaintiff it emerged that GA effectively gave DA consent to use the ‘Ciao Rino’ mark. Accordingly, the Court ruled out the submission that DA had illegitimately used the mark in question without the consent of the owner. Thirdly, the Court focused on the issue of the prior rights. Though it acknowledged that it was uncontroversial that GA was the owner of the ‘Ciao Rino’ trade mark, the Court agreed with the lower courts that DA had gained prior rights in the litigated mark by using it before registration in a local ambit. DA thus had the right to continue using the ‘Ciao Rino’ mark locally in accordance with Article 12 CIP (which allows a third party that used a mark before it was registered by the right holder to use it within a local ambit).

Practical significance

The Ciao Rino judgment confirms that Article 8(3) CIP can be successfully invoked only against third parties that use a mark which is comprised of the first name as well as the last name of a well-known person. The principle that the name of well-known person includes both first and last names was laid down by courts on the application of the provisions in trade mark legislation previously in force corresponding to the current Article 8(3) CIP (see, for example, District Court of Milan, judgment of 17 November 1958, Temi, 1959, p. 152). Ciao Rino is consistent with this case law. That said, it can be argued that the right holder can rely on Article 8(3) CIP to object to the third parties' use of marks comprising just the first name of a well-known person when that person became famous with the public with his first name and she was essentially identified with it. However, in Ciao Rino GA could not invoke this interpretation of Article 8(3) CIP, since Rino Gaetano became famous with his full name.

Italy: the exercise of the employer's statutory right of first refusal on the inventions of the employee

Author: Michele Giannino (Desogus Law Office, Italy)

PE v Snamprogetti Spa, Court of Cassation, First Chamber, No 19009, 10 September 2014

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpu236, first published online: January 24, 2015

The Italian Supreme Court held that an employer can exercise the right of first refusal that Article 64(3) of the Code of Intellectual Property confers on her with regard to employee inventions by way of a declaration, ruling out that the exercise of such right might be established only when the employer uses the invention.

Legal context

The Italian Code of Intellectual Property (CIP) divides inventions made by an employee during the term of employment into three categories, each being subject to a different regime depending on the allocation of the economic rights arising from the invention. Article 64(1) CIP refers to inventions made by an employee when the inventive activity constitutes the subject matter of the employment contract. Article 64(2) CIP deals with the inventions made by an employee in the performance or fulfilment of the employment contract when the inventive activity does not constitute the subject matter of the contract and the contract does not provide for any payment in favour of the employee for the invention. Articles 64(1) and 64(2) CIP award the employer the ownership of the inventions of the employee. The latter enjoys only the right to be recognized as the author of the invention. In addition, the employee is entitled to a fair compensation for inventions falling within Article 64(2) CIP.

Article 64(3) CIP applies to employee inventions which are outside the scope of Articles 64(1) and 64(2) CIP. This provision confers on the employer, against the payment of a price or a fee, the right to enter into an exclusive or non-exclusive licence agreement for the use of that invention or the right to have the patent granted to the employee assigned to her. In addition, the employer also has the right to buy the patents granted abroad for the employee's invention.

In PE v Snamprogetti the Court of Cassation was asked to clarify under which circumstances the employer can be found to have exercised these rights and, accordingly, the right of the employee to receive a price or fee arise. In other words, the question before the court was whether the employer must exercise these rights by way of an express declaration or whether their exercise might be inferred from the conduct of the employer in commencing use of the patented invention.

Facts

The plaintiff, PE, was an employee of the defendant, Snamprogetti (now Saipem) from 1959 until 1992. Under the terms of his employment contract PE was not obliged to carry out inventive activities. In 1992, PE was appointed director of the defendant's plant in Bratislava. While there, PE developed an idea that enhanced the reliability of the plant. PE applied for a patent for it, which was granted by the Italian Patent Office. When PE learned that Snamprogetti ordered from a third party a number of tools that apparently incorporated his patented invention, he sued Snamprogetti before the Court of First Instance of Milan. PE pleaded that, through its conduct, Snamprogetti exercised the right that Article 24 of Royal Decree No 1127/1939 (now incorporated with slight amendments into Article 64(3) CIP) conferred on employers with regard to employees' inventions. Accordingly, PE claimed that he had the right to receive payment of a price or a fee from his former employee. Snamprogetti, however, argued that PE's patent should be revoked for lack of novelty and that the invention was made by a team of its employees.

The Court of First Instance, and then the Court of Appeal of Milan, dismissed all PE's claims. In particular, the appellate court made it clear that the inventor employer is entitled to a price or fee only when the employer exercises the rights conferred by Article 24 of Royal Decree No 1127/1939. This was not the case with Snamprogetti, which had never expressed its intention to use or buy PE's patented invention. On the contrary, it manifested its lack of interest in it, as when it contested the validity of that patent on the ground of lack of novelty. PE then challenged the judgment of the Court of Appeal of Milan before the Court of Cassation.

Analysis

PE pleaded that Article 24 of Royal Decree No 1127/1939 and Article 64(3) CIP must be read as not requiring any particular form for the employer to exercise the rights conferred by them. As a result, so ran PE's argument, the right of the employee to a price or fee also arises when the employer tacitly exercises her rights by simply making use of employee's invention.

The court rejected PE's arguments, opting for a more restrictive construction of Article 64(3) CIP. Before dealing with the question how employers can exercise the rights in Article 64(3) CIP, the court focused on the legal nature and subject matter of such rights. It did not qualify them as a pre-emption right, but rather as a right of first refusal that empowers the employer, upon the condition that the employee decides to patent the invention, to buy the patent or take a licence to use that invention, regardless of the consent of the employee.

The court then looked at the provisions governing the exercise of the employer's right of first refusal. Under Article 64(4), the employer must exercise the right within a three-month deadline, starting from the receipt of the notice of filing of the patent application, and by way of a declaration addressed to the employee. The declaration must indicate the patent the employer intends to use or buy and the price or fees offered by the employer to the inventor. The employee must then agree on the proposed price or fees for the assignment or the licence. If no agreement is reached, the price or fee must be determined by arbitrators on the basis of Articles 64(4) and 64(5) CIP.

Considering the wording of Article 64(3)–(5), the court concluded that the employer may not tacitly exercise the right of first refusal on the inventions of employees; instead, a declaration from the employer to that effect is required. In PE v Snamprogetti, on the contrary, no such declaration made by the employer could be found. Indeed, the court held that Saipem expressed an intention not to buy or use the patent, as evidenced, among other things, by the fact that the employer contested the validity of the patent granted to PE before the lower courts. Finally, the Court of Cassation ruled that the Court of Appeal of Milan had correctly applied Article 64(3) CIP and rejected PE's appeal.

Practical significance

The most important ruling in this case is that, in order for the employer to exercise the rights in Article 64(3) CIP, an express declaration addressed to the employee is necessary. Accordingly, the right of the employee to be paid a price or a fee does not arise unless the employer makes a requisite declaration, even if the employer had effectively used the invention of the employee. Importantly, as hinted by the court, the employer's use of the invention might trigger tort liability. It follows therefore that the employee can sue the employer and seek compensation for the damages suffered due to the unlawful use of the invention. Incidentally, the action in tort filed by PE against the employer was rejected by the lower courts because the plaintiff brought the action after the expiry of the deadline set out in the statute of limitations for initiating litigation.

Unincorporated sport associations can seek trade mark protection for the names of non-professional football clubs

Author: Michele Giannino (Desogus Law Office, Italy)

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu021, first published online: March 14, 2014

Associazione Sportiva Entella Chiavari 1914 v Virtus Entella, Court of First Instance of Genoa, Sezione specializzata in materia di Imprese, Order of 21 October 2013

In an interim decision an Italian court ruled that an unincorporated sport association is allowed to seek trade mark protection for the name and crest of a non-professional football team, provided that the place name included in the claimed marks is not a mere geographical indication.

Legal context

By Article 19 of the Italian Intellectual Property Code, any person can obtain the registration of a trade mark that he uses or intends to use for the supplying of goods and services of his enterprise. It is commonly believed that Article 19 allows a person, who does not have the qualification of enterprise according to the definition in Article 2082 of the Italian Civil Code, to register a trade mark. It is, however, not settled whether a person who carries out an economic activity falling outside the concept of enterprise in Article 2082 can invoke trade mark protection for the signs he uses for this activity.

Facts

Entella, an Italian football club founded in 1914, played mainly in semi-professional leagues until 2002 when its then owner, Associazione Calcio Entella Chiavari Srl (AC Entella), became insolvent and went into administration. The club soon became active again and registered with the Italian Football Association (FIGC). Renamed Associazione Calcio Dilettantisca Entella, the team now plays third tier league. The current owner of the team is a private company, Virtus Entella Srl (Virtus Entella), which recently filed a trade mark application for the word ENTELLA and the white and blue crest of the team.

The applicant, Associazione Sportiva Entella Chiavari 1914 (AS Entella), was an unincorporated sport association registered with the FIGC since 1977. In 2003, it changed its name from AS Entella to AC Entella to which it added the year ‘1914’. From then on, it used the name Entella for its football team, now playing in the lowest tier of the amateur league. In 2013, to celebrate the 100th anniversary of the foundation of the Entella football team, Virtus Entella organized many events and activities, including the sale of new kits with the name of former Entella players and celebratory shirts with the names of all the managers of the club.

Believing it enjoyed a trade mark right on the name of the Entella football club and that the activities of Virtus Entella mentioned above amounted to an unauthorized use of such mark, in August 2013 AS Entella commenced proceedings against Virtus Entella. AS Entella sought a judicial declaration establishing that it was the proprietor of an unregistered trade mark on the name of the football team as well as on the crest of the club. It also applied for an interim injunction to prohibit the defendant from using the claimed marks. In its defence, Virtus Entella contended that the applicant did not have the qualification of enterprise and, accordingly, under Italian law, was not allowed to enjoy trade mark rights.

Analysis

In the ensuing preliminary proceedings, in order to decide to award the interim relief sought by AC Entella, the Court of Genoa first had to consider whether the applicant was entitled to invoke trade mark protection for the litigated signs. The court took the view that the trade mark provisions applied only to entities that fell within the definition of ‘enterprise’ in Article 2082 of the Italian Civil Code.

Did an unincorporated sport association, such as Entella AS, constitute an ‘enterprise’? The court referred to case law on the interpretation of Article 2082 under which an entity is considered to be an enterprise when, thanks to stable organization, it consistently offers goods and services to the market and is able to cover its costs using the revenues generated by the sales. AS Entella contended that it met those criteria, and it argued that, despite its being an unincorporated association according to the law, it had to balance the costs incurred in the management of its football team with the revenues generated by it. The court substantially agreed with the applicant's submission that it qualified as an enterprise, though it hinted that the different legal forms of the parties might be of relevance when adjudicating the trade mark infringement claim on the merits.

In support of the finding that Entella AS was an enterprise, the court pointed to the regime for football clubs in force before the enactment of Act 91 of 1981 which considerably amended it. Under the previous regime, even the top-tier professional football clubs were organized as unincorporated sport associations. Notwithstanding this, it was universally agreed that those football clubs were indeed enterprises.

The next issue addressed by the court was whether the name of a football team which also included a geographical name could be protected as a trade mark. First, the court made it clear that trade mark protection also applies to the names of football clubs. Football clubs supply a service in the form of sport shows, such as football matches. The names of football clubs thus carry out the distinctive function of trade marks, enabling fans and consumers to identify the provider of those services. The possibility of registering the names of football clubs as trade marks is also confirmed by Article 8 of the Intellectual Property Code. This provision lays downs that it is possible to register as a trade mark a sign, if it is well known and is used in the field of sports, and in particular, the names or abbreviations of events or entities and associations not having economic purposes.

Finally, the court dealt with the question whether the geographic names of Entella and Chiavari contained in the disputed signs prevented them from being protected as trade marks. In short, the court ruled that the trade mark provision applied to the litigated signs, provided that the claimed trade mark was not a mere geographical indication.

The court then reached the conclusion that the applicant, since it had the qualification of an enterprise, could in theory invoke the trade mark protection for the name of the Entella football team and its crest; eventually, however, the court dismissed the claims of AC Entella. Indeed, the contention of the applicant that it enjoyed trade mark rights on the name and crest of the football team was at odds with the submissions made by the receiver for the AC Entella administration and FIGC. The receiver stated that such rights had not been assigned, whereas FIGC reported that the applicant only filed a ‘change of denomination’ request. The proceedings will now go on to adjudicate on the merits the claims of AS Entella, focusing on the conflict between the unregistered mark claimed by the applicant and the mark lately applied for by Virtus Entella.

Practical significance

In Entella, the court said that unincorporated sport associations may also fall within the definition of enterprise under Article 2082 of the Italian Civil Code. If it is the case, they can invoke the trade mark protection for the names and of emblems of their football teams. If the interim decision is upheld in the final judgment, Entella may have important implications for semi-professional and amateur football teams. The case makes it clear that also smaller football clubs can rely on the tools in the trade mark provisions to control the use and exploitation of their IP assets. In other words, the decision may strengthen their ability to monetize such assets through sponsorship and merchandising and, accordingly, to generate more revenue to fund their teams.