ITALY Law and Practice Contributed by: Maurizio Marullo, Giorgio Vagnoni and Francesco Amoresano, LAWP Studio legale e tributario
(see 5.3 Recognising Personality/Image Rights ), as well as under the Copyright Law, actions to safeguard those individual rights may be brought even if there is no actual intellectual property registration and irre - spective of the existence of any actual goodwill asso - ciated therewith. Pursuant to the above, athletes may take action to stop any abuse of their image, through one or more of the following remedies: • injunctive relief, whereby the court orders the immediate cessation of the unlawful exploitation of their image by third parties; • compensation of the damage pursuant to Article 2043 of the Civil Code (general tort liability); and • publication of the court’s decision to restore the party’s reputation. In the event that unlawful image exploitation affects multiple individuals, the legal framework allows col - lective enforcement; and, often, sports associations themselves offer protection tools available to their members. In football, for instance, the Italian Footballers’ Asso - ciation (AIC) has an active standing to act in defence of its members pursuant to Article 26 (5) of its Stat - ute, whereby the AIC is entitled to undertake all initia - tives and actions, including in court, necessary and appropriate for the protection of the rights to a por - trait, name and pseudonym of the associates. On this basis, the AIC may seek collective injunctive relief and claim damages in cases of widespread unauthorised exploitation, without requiring individual mandates. 5.5 Licensing Licensing is a contract by which the licensor grants the exploitation of its intellectual property (IP) to the licensee in return for a fixed fee and/or royalties. It represents one of the most common ways for sport - speople to commercially exploit their IP and image (eg, through merchandise bearing the licensor’s logo). Clubs have the widest powers to leverage their licens - ing agreements using the image of the team, whereas licensing to a third party the image rights of a single athlete will be subject to the latter’s consent; similarly,
whenever a club is willing to use and/or license the image of minor athletes, the consent of their parents/ guardians is also required. 5.6 Assignment of IP Rights IP rights, such as trade marks, are governed by the Italian Industrial Property Code, whereas copyrights are governed by Law No 633/1941. The transfer of rights is also subject to general con - tract law principles under the Civil Code. Assignments for the transfer of IP rights must pre - cisely indicate: • which work, patent or trade mark is assigned; • whether the transfer covers all rights or only certain economic rights (such as reproduction or distribu - tion); and • whether it extends to future versions, updates or translations. Transfer can be final or temporary, in the form of a licence agreement, which can be exclusive or shared with other parties. Trade mark licensing is the most common form of transfer for the commercialisation of IP in the sports sector. Assignments of registered IP rights (such as trade marks) must be recorded in the relevant public regis - ters (UIBM or EUIPO). While lack of record does not affect the validity of the assignment between the par - ties, it renders the transfer unenforceable against third parties, potentially undermining legal certainty. Limitations apply to the transfer of trade marks asso - ciated with football clubs, which typically bear strong connections with local municipalities and communi - ties and, on a practical standpoint, cannot be trans - ferred without the concurrent transfer of the sport title, to be approved by the sport federation. Other limitations apply to the transfer of individual rights, whereas image rights cannot be transferred; on the contrary, only economic rights pertaining to said image can be transferred allowing third parties to commercially use and exploit the image of the indi -
151 CHAMBERS.COM
Powered by FlippingBook