"500% Fiat": limitations to the protection of the advertising claim

The case originates from a claim proposed by Miglio Andrea against the well-known company FCA S.p.a., owner of famous brands such as "Jeep," "Fiat," and "Alfa Romeo", in order to recognise his rights of protection with regards to the advertising claim "500% Fiat". The plaintiff had registered this advertising slogan at the SIAE and, following the use of the same by the famous car manufacturer, had decided to take legal action before the Court of Florence in order to obtain compensation for damages resulting from the unlawful use of the slogan.

Although FCA did not consider the claim to be protectable because it lacked the required creativity, it called Leo Burnett, the company responsible for choosing the slogans used to promote Fiat vehicles, as a guarantor.

The Court of Florence rejected the plaintiff’s claims. The decision was confirmed on appeal, for two different reasons: firstly, the advertising slogan "500% Fiat" was not protectable because it was composed of the combination of a numerical percentage and the name of the car model and manufacturer, resulting in the inseparability of the claim from the trademark belonging to the defendant's group; secondly, the slogan did not have the creative character required under copyright law, as demonstrated by the previous use of similar claims such as "500% Joy" and "500% Unconventional."

Andrea Miglio appealled against the Court’s decision. The appellant, in particular, argued that the novelty introduced by Legislative Decree No. 95 of 2001, would have expunged the criterion of separability between artistic value and industrial character of the product from Article 2, No. 4, Copyright Law (l. 633/1941). The appellant rejected the assumption that the publication of previous slogans had excluded the creative character of "500% Fiat”: this would also be reflected in the fact that the respondents had used the slogan despite their knowledge of the precedents.

The Supreme Court rejected the proposed appeal and affirmed that the reform of 2001 eliminated the concept of divisibility only with reference to works applied to industry, with the consequent applicability of this principle to the proceedings in question. According to the Italian Supreme Court, the territorial court had correctly ruled that in this claim the notorious element (Fiat's well-known trademark) was inseparably linked to the other part of the claim (the evocative percentage), which moreover referred to a famous car model within the company's product range, namely the Fiat 500.