The IP Court of Milan and the copyright on BMW advertisements

(An Italian version is also published on Diritto 24 – Il Sole 24 Ore)

On 7 June, the IP Court of Milan issued sentence no. 5647/16 on the copyright of some video advertisements for BMW cars. The dispute was initiated by the company producing the videos and the author of the same, claiming that the videos they made ​​for BMW were then cut, edited and distributed via the internet without their authorisation and without mentioning their names, and claimed damages. BMW on its part essentially asserted its right to use the videos in question.

In the judgment under review, the judges first of all pointed out that it was not disputed that the videos had been commissioned by BMW, and stated that agreement with the latter must be considered a kind of contracting agreement, in which “the client acquires the IP rights related to the intellectual work commissioned“. In this context, however, the plaintiff alleged that they had not transferred all exploitation rights to the client, in particular the right to publish on the internet. On that point, said the judges, “in the absence of general legal provisions on original works created on commission, it has to be verified whether the exploitation rights were transferred in their entirety to the client“; and for the purposes of such verification it was necessary to look at the object and purpose of the agreement: the client in fact acquires the rights included within their limits, while the author of the work remains the owner of the other rights not transferred to the client.

“In the present case”, stated the judges, “in the absence of documentary evidence of the agreements, as the parties have concluded them orally, in order to investigate the will of the parties, the invoices and estimates issued by the producer are relevant. The copious documentation denies that the parties had excluded the transfer of the exploitation rights for the dissemination via the internet, deposing, conversely, also in favour of the transfer of this right. Indeed, the invoices issued by the producer, which are unilateral statements having the value of a confession, expressly refer to the transfer of internet rights and the dissemination of the videos over the internet, or to the transfer of all rights without any restriction and, also, to their delivery by their author to reporters for their diffusion via the internet or without any usage limit. (…) To these circumstances, in itself decisive, is to be added the promotional and advertising nature of videos, intended for various communication channels, as is clear from the delivery to journalists, press offices, communication offices and so on. (…) In addition, the failure to complain until 2012 by the producer, despite the fact that some of the works were actually commissioned in 2006 and 2007 and have been disseminated via the internet for many years, confirms that will according to the principles of good faith”.

In light of the foregoing, the judgment rejected the plaintiffs’ claims for compensation of damages for the use of the videos on the internet.

The Judges instead declared the infringement of the moral rights of the author of the videos for not being mentioned in the videos released by BMW. According to the latter that omission was justified in light of the common practice not to mention the author in advertisements, in view of the short duration of the same and of their advertising function, as stated by the Supreme Court in judgment no. 4723/2006. In the case at issue here, however, the judges pointed out the significant differences with respect to the dispute decided by the Supreme Court: in particular, the length of the videos, of 7-10 minutes instead of 20 seconds, plus the fact that the videos had been delivered by the author with its name included – all circumstances that excluded the applicability of that practice.
With regard to the ascertained violation of the author’s moral rights, BMW was then ordered to compensate the relevant damages (established as one third of the price of the videos, by way of equity), and enjoined from publishing the videos in full without mentioning the author.

The ruling finally stated that each party should bear its legal costs, because each party had partially succeeded, and BMW had made a fair settlement proposal that the counterparties had not accepted, thus causing further legal fees that were otherwise avoidable.