ITALY Law and Practice Contributed by: Maurizio Marullo, Giorgio Vagnoni and Francesco Amoresano, LAWP Studio legale e tributario
Existing trade marks owned by others, even if less well-known, can limit a club’s ability to expand its trade mark protection to new product categories. In a notable case, AC Milan submitted a request in 2017 for EU registration of its trade mark regarding, among others, office items; however, a German firm that held the word mark MILAN relating to office items filed an opposition to the EUIPO in order to avoid confusion among German consumers. The EUIPO and the EU Tribunal upheld the objection based on the likelihood of the two trade marks being confused. 5.2 Copyright/Database Rights Copyright is regulated by Law No 633/1941 (the “Cop - yright Law”), which safeguards works of creativity (including databases) across various mediums, includ - ing literature, music, figurative arts, architecture, thea - tre and cinematography. Through copyright, authors gain the exclusive right to use and publish their work, as well as the “moral rights” to claim authorship and act against misrepresentation or damage to their repu - tation. Copyright lasts for the author’s lifetime and up to 70 years after death, while moral rights are per - petual and transferable through inheritance. Copyright-holders are protected in several ways: gen - erally, the breacher is ordered to stop using the pro - tected work and compensate any harm caused to the copyright-holder. The breacher may also be ordered to destroy any infringing materials. Unlawful conduct under the Copyright Law is also punished through administrative and criminal sanc - tions (eg, imprisonment and fines). The Copyright Law is pivotal in the sports sector as it can offer protection to the image rights of athletes, including their faces, jersey numbers, likenesses and signature moves. A notable copyright case involved football team Inter Milan, whose official “stadium anthem” could no longer be played due to a dispute between the club and the copyright-holder of the song. 5.3 Recognising Personality/Image Rights Image rights are protected by the Italian Civil Code and the Copyright Law (see 5.2 Copyright/Database Rights ).
The Civil Code (Article 10) safeguards the image of an individual in the case of unlawful exhibition/pub - lication or damage to their reputation, and entitles the right-holders to apply for the termination of the abuse. Image rights are untransferable, indefeasible and inalienable. The Copyright Law (Article 96-97) establishes that an individual’s image can only be used or sold with their consent. The only exceptions occur when said repro - duction is: • justified by the notoriety or holding of public office of the person concerned; • justified by the necessity of justice, security, scien - tific, educational or cultural purposes; and • related to facts, events, ceremonies of public inter - est or held in public. During the 1980s, the FIGC, the Italian Footballers’ Union and leagues signed a covenant to regulate advertising activities of professional clubs and ath - letes, by which players were entitled “to use in any lawful and decent form their image, even for profit, to the extent it is not associated with the names, colours, jerseys, symbols or markings of the club they belong to or other clubs”. Similarly, clubs could allow their sponsors to use their players’ image for commercial purposes only in the case of “team pictures” in uni - form and to promote sponsorship agreements with the club. Currently, the Italian Footballers’ Union By-Laws (Arti - cle 26) grant to the Italian Footballers’ Union the use of players’ images and names related to professional activity, even for commercial purposes, and the pos - sibility to grant said rights to third parties (eg, vide - ogame producers). Sometimes, federations put limits on the commer - cial exploitation of athletes’ images (connected, for instance, to images in the context of a national team), especially when federations’ technical sponsors are competitors of athletes’ technical sponsors. 5.4 Protecting Personality/Image Rights Given that personality and image rights are directly protected under Article 10 of the Italian Civil Code
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