Italy — The protection of creativity in advertising

According to Italian Copyright Law and to different European countries legislations, advertising creations and campaigns are not protected by copyright.

Articles 1 and 2 of the Italian Copyright Law list many copyrighted works but do not include advertising claims and creations, even through a broad legal interpretation.

The Italian Advertising Self-Regulatory Code (Codice di Autodisciplina della Comunicazione Commerciale, hereinafter the “Code”) and the Italian Self-Regulatory Jury (hereinafter, the “Jury”) should overcome such legal gap.

Article 13 of the Code provides the following:

“Art. 13 – Imitation, Confusion and Exploitation

Marketing communication should not copy or slavishly imitate that of others even if it concerns non-competitive products, especially if there is the risk of generating confusion with the marketing communication of others.

Moreover, any exploitation of the name, trademark, notoriety and corporate image of other marketers should be avoided, if it is intended to generate an undue advantage.”

According to the Jury case law, which often applied art. 13 of the Code, it is clear that there are two requirements for and advertising in order to obtain a legal protection: novelty and originality.

It is new an idea which has never been used or it is not in the consumers’ memory.

It is original an idea which consists in a significant creative effort.

Advertising campaigns that use stereotypes are not original, thus they are not protected by law: e.g. the idea consisting in a side-by-side comparison of two dishes in order to show a detergent effectiveness.

Another principle consists in the balance between originality and protection against imitation: the more an advertising is original (id est, it is not descriptive of the advertised product), the more it is protected against similar advertisings.

Art. 13 of the Code protects both the “heart” (the idea) of an advertising campaign and the form: so, if an advertising has a different heart and an identical claim or form compared to a previous one, it infringes art. 13 of the Code.

The Jury case law stated over the years a fundamental principle: when there is an identical copy of an idea or a claim of a third party (particularly if by a competitor), the originality degree required by the first advertising in order to obtain a legal protection is almost null.

Even simple and ordinary ideas can be protected under art. 13 of the Code if they are slavishly imitated, particularly by a competitor which sells product of the same category.

The Jury, in its decision n. 5/2018, seems to have changed its orientation on the matter, especially concerning the requirements of novelty and relevant imitation.

The decision concerned two competitors in the fruit and vegetable sectors: La Linea Verde (owner of the trademark “Dimmidisì” (say yes to me) and manufacturer of product labelled by such mark) and Del Monte.

La Linea Verde started to use the claim “Tutti dicono di sì” (all say yes) at the beginning of 2017 in various online and paper campaigns and in a trade fair.

After a few months (October 2017) Del Monte started to use the claim “Tutti dicono sì” (all say yes – with a slightly different wording) in its advertising campaigns.

Thus, La Linea Verde sent to Del Monte a cease and desist letter and later filed a complaint before the Jury claiming the infringement of art. 13 of the Code.

In the decision, the Jury:

1. after stating that the claims “Tutti dicono di sì” e “Tutti dicono sì” are identical, both by the form (the word “di” is not relevant) and by the content, because both the claims suggest adhesion to the products by the consumer;
2. after stating that La Linea Verde has a prior use of the claim and stating that the publishing of the claim on the web and on a trade fair, even if not reported on an advertising search engine (like Easy Way), are appropriate in order to prove the prior use of a claim;

• after stating that the claim has never been used in that market and in different markets in the past decade;

the Jury eventually stated that Del Monte slogan has to be considered “a logical development of an advertising idea that Del Monte, undeniably, has been proposed for a long time”, referring to the ’80s and ’90s popular advertising “L’uomo Del Monte ha detto sì” and to the less popular “Sì al meglio, sì a Del Monte”.

The Jury stated that, even if there is a formal overlapping between the claims, the advertisings have their own aspects and they cannot be overlapped in the consumer’s perception (and, in my opinion, this is contradictory, because the Jury previously recognized in the same decision that the claims had the same meaning: suggesting the adhesion to the products by the consumer).

It seems this is a change of course by the Jury concerning claim imitation and likelihood of confusion (art. 13). The Jury stated that it is possible to use two identical (form and content) claims, both original, because there is “a logical development” between an expression (“Tutti dicono sì”) and a communicative path (“to say yes” by Del Monte).

It is a change of course that, in the future, may create some problems to creative directors and lawyers: it will not be sufficient to monitor if a claim has been already used by third parties, but it will be necessary to check if an advertising is “a logical development” of a different communication by a third party. This would result in a subjective judgment which affects the fundamental legal certainty principle.

The author of this post is Elena Carpani.