The latest ruling of the Court of Milan confirms that “free and creative choices of the author” make a photograph eligible for copyright protection, as it ruled against a fashion designer who used the photo as a decorative print on garments without seeking clearance from the rights holder.
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Artists and designers within the fashion system have long resorted to art and artistic masterpieces to inspire and embellish their creations. On such occasions, it can be said that different kinds of arts blend: yet these creative influences may sometimes interfere with copyright protection, as recently happened with a wildlife shot taken by a famous U.S. photographer.
On April 23, 2020, the Court of Milan delivered its decision within first instance ordinary proceedings on the claim brought by wildlife photographer Paul Cox against the fashion house Antonio Marras S.r.l., headed by the namesake designer, and Drexcode S.r.l., an e-commerce platform for luxury clothes that offered Marras collections[1].
Back in 2014, Marras used one of Cox’s most renowned shots, depicting a howling wolf during a snowfall (the “Photograph”), as a decorative print on clothing items in his 2014–2015 Fall/Winter collection, which drew inspiration from wolves. The designer admitted to simply finding and downloading the Photograph from Google and using it without investigating and clearing the relevant rights.
Thus, Cox sued Marras (and Drexcode as a distributor) for copyright infringement: the photographer alleged that the designer violated his economic and moral rights to the shot, which was also duly registered with the U.S. Copyright Office.
Cox argued his photograph was creative and original and, as such, worthy to be protected by Italian copyright law. In addition to its intrinsic artistic and creative value, he argued that the contested shot had been published in major magazines like National Geographic — a testament to the outstanding nature of this work.
The designer tried to resist such allegations by resorting to a number factual and legal arguments to back up its defense, as explained below.
First, Marras claimed that the image of the wolf he used was not the same as Cox’s shot. Furthermore, the designer alleged that he hung the Photograph on his mood board, but only as inspiration for the collection. As grounds for that argument, Marras submitted a partial reproduction of a dress bearing the contested print, which showed the wolf from a different angle. The Court dismissed the submission as misleading and deceptive, since looking at a full reproduction of the same dress (namely, both left and right sides, which bore perfectly mirror-image prints) it was crystal-clear that the image used on it was substantially identical to Cox’s. This way, Marras significantly increased the burden of defense on Cox and infringed the general principle of fair behavior in trials — punishable as such.
According to the Court, Cox’s authorship of the Photograph was equally demonstrated, as he submitted the certificate of protection granted by the U.S. Copyright Office and one of his photographic publications containing it.
Marras additionally opposed Cox’s claims arguing that the Photograph was not an “intellectual work” and, as such, not eligible for copyright protection, it being devoid of any artistic, creative, or in any case distinctive character. If the Photograph were to be protected, the applicable regime would be that of simple, non-creative photographs – in Italy, these are still eligible for protection, although to a different and lesser extent. In fact, under Article 87 ff. of law No. 633/1941 on copyright protection (the “Italian Copyright Law”) photographers are granted related-rights protection even on their non-creative shots. If accepted, this argument would have excluded infringement, as the 20-year term of protection for non-creative photographs had expired: Cox’s shot was been taken back in 1993, whereas the contested use only occurred in the ‘14-‘15 F/W collection by Marras.
Again, the Court sided with the photographer: it acknowledged that, being original and creative, his shot of the wolf deserved copyright protection pursuant to Article 2(1)(7) Italian Copyright Law. In this sense, the Photograph undeniably displayed the personal touch of the author and his choice and study of the subject. For these reasons, it could not be qualified as “a mere representation of reality, albeit one that is created through particularly refined or complex photographic techniques”[2]. The Court reached that conclusion by applying criteria and principles that are well-established in Italian case law[3]. As a common standard, Italian courts acknowledge photos as creative based on elements such as their original framing, the setting of the image, or the ability of the photographer to evoke emotions that transcend the common aspect of the surrounding reality. Furthermore, the so-called “personal touch” of the author has been identified in the composition of a photograph (e.g., choice and arrangement of the subjects, their location), as well as its lighting (e.g., selection and usage of lights, tones, and contrasts), irrespective of the quality of the shot.
According to the Court, Cox did apply his personal touch to the Photograph: the choice of subject — a wolf in its natural environment — was clearly the result of prior study and careful analysis. In fact, Cox “[…] caught the animal while it was intent on howling — a clear indication of precise creative will — choosing to represent it in the foreground, wisely blurring the surrounding environment, and thus enhancing the expression of the represented subject, while bringing out the snowflakes that fell copiously in the surrounding environment and evoking, in this way, specific emotions in the viewer that go beyond the mere graphic representation of the animal“[4].
Lastly, the Court fully dismissed Marras’ attempt to justify the unauthorized use of the Photograph merely based on the fact that it was freely and publicly available online — a circumstance that does not imply that it is also in the public domain, considering Google’s clear disclaimer that the images shown “may be subject to copyright”. To the contrary, the Court pointed out that this very argument proved the negligent element grounding Marras’ liability, the assessment of which should take into account the professional context in which the infringement occurred and therefore the higher degree of diligence required. A fashion business like the defendant’s, the Court added, could not be unaware of the clearance practices linked to the use of third-party content.
Turning to Drexcode, the Court found it jointly liable, as it failed to prove it had obtained adequate representations and warranties from Marras regarding the full ownership of the intellectual property rights in the collection and the individual garments before selling them through its online platform. However, since Drexcode acted as a mere distributor of the infringing goods, without contributing to either the creative or manufacturing process, the Court concluded it had the right to be held harmless and should be indemnified by Marras for the damages compensated for copyright infringement as well as for the litigation costs incurred.
Having found them jointly liable, the Court ordered Marras and Drexcode to pay economic damages as a result of copyright infringement in the amount of EUR 16,000 based on the criteria of what is known as the “price of consent” — as it appeared, based on the evidence produced, that this was the amount for which Cox was willing to settle the matter out of court. In addition, Cox was equitably awarded EUR 9,000 as non-economic damages for not having been credited as the author of the work printed on the Marras garments, for a total of EUR 25,000.
[1] Court of Milan, decision of April 23, 2020, No. 2539, accessible on DeJure database.
[2] Court of Milan, cited decision, p. 13 – translation from the Italian by the authors.
[3] Among others, Court of Turin, decision of May 25, 1996; Court of Appeals of Milan, decision of November 7, 2000; Court of Rome, September 12, 2019, No. 14758.
[4] Court of Milan, cited decision, p. 14 – translation by the authors.
