IN THE CASE OF MORAL RIGHTS INFRINGEMENT, IS THE AUTHOR ENTITLED TO ONE-THIRD OF THE PIE?
In the recent judgement no. 7020/2016, the Court of Milan has expressed its view on the criteria to establish the authorship over an intellectual work, the transfer of its economic rights and the quantification of the non-material damage related to the infringement of its moral rights. The underlying event was the collaboration between the company San Diego and Mr. Bottaro, on one side, and BMW Italia Spa, on the other side: the first one realized a series of videos to promote/advertise BMW’s vehicles. In June, 2012, the plaintiffs found out that the concerned videos were shortened, modified and broadcasted without both prior authorization of San Diego, and without the mentioning of the names of the author and producer. Consequently, San Diego and Mr. Bottaro started legal action against BMW, claiming copyright infringement and demanding compensation for the related damages.
The Court of Milan qualified the agreements between BMW and the plaintiffs as a service agreement. As a result, BMW acquired the right to the economic exploitation of the intellectual work commissioned to the contractors.
Moreover, Article 45 of the Italian Copyright Law–for cinematographic works–states that the producer of a work is generally entitled to its economic exploitation. In order to understand the extension of the right acquired, the Court stated that the agreement between the parties might have a crucial role. In the case of verbal agreement, as the case at hand, the details on the invoices acquire significance. Therefore, the express reference on the invoice made to the assignment of Internet rights, and to the reproduction of the videos on the Internet, as well as to their unlimited web broadcasting, made the concrete extent of the mentioned economic exploitation very clear. Moreover, the length of the videos (7-10 minutes on average) also suggested that they were addressed to an advertisement market connected to the web, which is different from and additional to the television one. The latter, in fact, typically broadcasts advertising videos of a duration that ranges from 20 to 30 seconds.
Having established the extension of copyright ownership on the video, and therefore the right of the producer to also intervene and possibly create derivative works, the Court of Milan touched upon a very interesting point that is rarely considered in case law, i.e. the issue of moral rights and their economic value.
As it is well known, moral rights are inalienable, indefeasible and connected to the author’s personality. Therefore–as provided by Articles 6 and 22 of the Italian Copyright Law–this right is granted by law exclusively to the author(s) of a work and no legal entity can be assigned such rights. Moral rights and economic rights are essentially two independent categories of rights.
According to the Court of Milan, the lack of a mention of the author’s name in the video represents an infringement of the author’s moral rights. Indeed, the advertising videos at stake have a long duration (7-10 minutes on average) and the defendant did not prove the existence of a customary rule depriving the author of his moral right to be mentioned as the author of the work.
The fact that the name of the author was missing, caused non-material damage to Mr. Bottaro that the Court of Milan went on to quantify based on criteria that, for sure, will represent a benchmark in future case law on these issues. Indeed, the quantification of compensation for damages due as a result of the infringement of moral rights must take into account the value of the copyrighted work made for hire; then, based on such a parameter, the damage shall be equal to one-third of the value of the assigned copyrighted work. Consequently, the defendant was ordered to pay one-third of the value that was paid for the production of each video. The order to pay was accompanied by an injunction order preventing any further broadcasting of the videos at stake without a mention of the author’s name.
From now on, the above judgment must be borne in mind, for example, during negotiations of agreements related to the production of advertising campaigns, also covering the web, as well as, at a later stage, when the content of the copyrighted work is broadcasted on the web. In case of infringement of moral rights, the author might be entitled to a considerable slice of the pie.