Copyrights on derivative works according to the Italian Court of Cassation: the “Gabibbo” and its progenitor from Kentucky

The “Gabibbo”, a character made popular in Italy by the TV show “Striscia la notizia”, ​​is at the centre of a long-lasting copyright dispute that has made its way up to the Court of Cassation (the Italian Court of last instance) for which there is no end in sight. By order no. 14635/2018, the Court of Cassation has, in fact, reversed a 2014 Milan’s Court of Appeal decision and referred the matter back to the same Court for a new ruling.

The dispute started in 2009, when the US citizen Ralph Carey, creator of the University of Kentucky’s “Big Red” mascot (see photo below), filed a civil lawsuit against RTI (an Italian broadcasting company), Antonio Ricci (author of the aforementioned TV show) and others, for the infringement of his moral rights in “Big Red” and the resulting damages arising from the use of “Gabibbo”.

In 2012, the District Court of Milan made a decision substantially upholding the plaintiff’s claims by finding that the Gabibbo constituted a case of so-called “developing plagiarism” and awarding the plaintiff 200,000 Euros in damages.

Two years later, the Court of Appeal of Milan entirely overturned the first instance decision, ruling that the Italian character had a “degree of creative originality such as to make it a different work”.

In its 2018 decision, the Court of Cassation has turned the table yet again.

First of all, the Court of Cassation has reviewed the Court of Appeal’s finding that there was no ground for a claim of “mere” plagiarism, and found it to be correct.

The Milan Court of Appeal had concluded that the Gabibbo was a form of expression of the same basic idea at the roots of Big Red – that of “an animated, dynamic humanoid puppet with a remarkable vis comica” – which however was characterised by markedly different features, such as a shorter stature, a stockier aspect, disproportionate and shoeless feet, a total lack of athleticism, the presence of clothing, the use of a Genovese dialect and the surreal role of a satirical reporter.

Although this line of reasoning seems to be tainted by criteria which would be more appropriate in a design litigation (a claim that was made by the appellant, but rejected by the Cassation), the Cassation found that the reasoning was formally faultless and, as such, could not be reversed (the Court of Cassation is barred from reviewing the merits of the case).

On the other hand, the Supreme Court has found the Court of Appeal’s ruling flawed in having uncritically ruled out a case of so-called “developing plagiarism”. The term, coined by case law, indicates a derivative work that meets the creativity requirements for autonomous copyright protection, but infringes, at the same time, the underlying work’s author’s moral rights and copyrights. The appeal decision had apparently dismissed the case of developing plagiarism as a necessary consequence of the recognition of creative originality to the later work; this, however, was a defective reasoning, because developing plagiarism is not ruled out by the alleged originality of the derivative work, if the the original work’s author did not authorise the creation of the derivative work in the first place (Articles 4 and 18 of La no. 633/1941, the Italian “Copyright Act”).

The appeal decision has thus been overturned and the case referred back to (a different panel of) the Milan’s Court of Appeal. By order of the Court of Cassation, the Court of Appeal will now have to reconsider the matter taking expressly into account the possibility of developing plagiarism, i.e. that of the creation of a work that, “though not slavishly imitative or reproductive of the original, in light of the substantially transforming nature of the activity performed on the latter”, results in the creation of an infringing derivative work under Articles 4 and 18 of the Copyright Act.