Posted by Laura Ercoli on Thursday June 23rd, 2016

Milan court rules on copyrights in video advertisements in BMW case

A client cannot delete the author’s name from a commissioned commercial video without the author’s consent, if the video has a certain length: the transfer of economic rights and of the right to alter the video does not affect the author’s right to affirm paternity of the work.

The Specialised Section in Intellectual Property of the District Court of Milan (hereinafter, the court) has recently ruled in a dispute concerning copyrights in a number of commercial videos commissioned by BMW Italia S.p.A. (hereinafter BMW).

The company that produced the videos, S. Diego Communication (hereinafter SDC) and the author of the videos Mr Lamberto Bottaro claimed that BMW had infringed copyright law by altering the videos and publishing them on the internet without the complainants’ authorisation, and had deleted the name of the author from some of the videos. Both complainants claimed damage payment.

The ruling

In judgement n. 7020 of 7 June 2016 (in Italian) the court found preliminarily that BMW had commissioned SDC to make the videos, that the agreement fell under the contract category of contract work, and that therefore the contractor had acquired the right to the economic exploitation of the intellectual property rights in the commissioned work.

SDC and Mr Bottaro claimed that they had not transferred to BMW all economic exploitation rights, and in particular they had not transferred the right to publish the videos on the internet.

To this regard, the court found that in the absence of a specific general provision of law on creative works made to commission, the contractor acquires the economic rights falling within the limits of the object and the purpose of the contract.

Since the agreement had been made orally, the court examined the invoices concerning the videos, which clearly referred to the transfer of internet rights and to the circulation of the videos on the internet, or to the transfer of all rights with no limitations. Moreover, the invoices proved that the producer had given some of the videos to journalists to be circulated on the internet with no limitations of use.

Therefore the court held that BMW had acquired the right to the full economic exploitation of the videos, including on the internet.

Regarding the altering of the videos, the court held that BMW had rightfully altered them since Italian copyright law allows the holder of the right to use the work to re-elaborate the work for the purpose of making it available to users on different media, upon condition that the alterations do not prejudice the author’s honour and reputation.

Lastly, concerning the right to paternity of the work, the ruling points out that the transfer of economic exploitation rights does not affect the author’s right to claim authorship. BMW had argued that the deletion of the author’s name is allowed for commercials under a market practice of not mentioning the author because of the very short duration of the videos and of their advertising purpose. BMW had made reference to an Italian Supreme Court decision, which the court deemed not relevant because the ruling concerned 20-second commercial videos, whereas the videos at issue were 7 to 10 minutes long.

Moreover, the videos at issue had been consigned by the author with his name appearing in them, and BMW had distributed some of them with the name included. The court found that such a circumstance denied the existence of a market practice of deleting the author’s name.

The court held that BMW had infringed solely Mr. Bottaro’s moral copyright, rejected the complainants’ other claims and sentenced BMW to pay Mr Bottaro 75,000 euros of damages.

23 June 2016

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