The donation of works of art does not include the transfer of the copyright assigned to them. The Court of Cagliari rules on Maria Lai’s works

In a recent order commented upon here, the IP Court of Cagliari ruled in a copyright dispute between Mrs. Maria Sofia Pisu, granddaughter of the late artist Maria Lai, and Fondazione Stazione dell’Arte, a foundation established by Maria Lai herself to contribute to the dissemination and knowledge of her works.

Claiming to be the exclusive owner of the exploitation rights on Maria Lai’s works of art by virtue of a 2011 will that had identified her as the artist’s sole heir, Mrs. Pisu brought an action under Article 156 of the Italian Copyright Law (LDA) to enjoin Fondazione Stazione dell’Arte from publishing, distributing and marketing a number of volumes containing images of Maria Lai’s works of art. The plaintiff, in fact, contested that these activities – relating to works of art that had been gifted to the foundation by the artist herself – had never been authorised and, therefore, infringed the exploitation rights on the works themselves, that the plaintiff held in her capacity as the heir.

On the other hand, the foundation argued that activities such as the creation of books, catalogues, studies, movies and audio-visual works, as well as the organisation of conferences and exhibitions relating to the artist’s works, were necessary to pursue the foundation’s institutional purposes, which required the exploitation of the rights of publication (Article 12 LDA), reproduction (Article 13 LDA), communication (Article 16 LDA) and distribution (Article 17 LDA). In other words, according to the defendant, by establishing the foundation and gifting her works to it, Maria Lai had implicitly transferred the exploitation rights on such works, without which all the above listed activities would not have been possible.

The IP Court of Cagliari, however, found that Mrs. Pisu was unquestionably the owner of the exploitation rights on the disputed works by virtue of the 2011 will and recalled that Article 109 LDA provides that “the transfer of one or more copies of a work does not imply, unless otherwise agreed, the transfer of the exploitation rights assigned to them”. Therefore, the transfer of the exploitation rights cannot be inferred from the systematic interpretation of an assignment agreement that did not expressly rule on the transfer of such rights; otherwise, such interpretation would result in a substantial abrogation of Article 109. In fact, in the present case the artist had never explicitly regulated the transfer of the copyright on the gifted works, neither in the foundation’s deed of incorporation nor in its statute. Furthermore, the fact that Maria Lai had established the foundation with the aim of disseminating and promoting her works and had donated them to the entity was perfectly consistent with the fact that the artist had reserved for herself (and her heirs) the copyright on such works.

The Court thus clarified that the donation of works of art does not imply the automatic transfer of the exploitation rights assigned to them. On the merits, however, the Judge found that such rights had been infringed only for three of the contested volumes, for which the Foundation had been the actual promoter of the publication, thus enjoining the foundation from further marketing, distributing or disseminating the same, while in the other cases there was no evidence of any involvement of the defendant.