Copyright Directive: Italy’s Transposition is Not So Creative and Original

Italian transposition of the Copyright Directive (as defined below) introduces some interesting additions within the free uses regulation, but it might not represent the relevant breakthrough for the press industry that its minor players, as well as the EU legislator, wished for.

BACKGROUND

On 26 March 2019, the European Parliament approved EU Directive 2019/790 of the European Parliament and of the Council of 17 April 2019, on copyright and related rights in the Digital Single Market (the Copyright Directive), which member states were expected to transpose by June 2021 at the latest. Whilst some member states complied with the deadline, Italy only issued its transposition through Legislative Decree 177/2021 on 12 December 2021 (the Legislative Decree) and amended the existing Law No. 633/1941 on copyright and related rights (the Italian Copyright Law).

In the last two years, large literature has been produced especially in relation to the analysis of the now well-known Articles 15 and 17 of the Copyright Directive. These provisions govern protection of press publications concerning online uses (Article 15 Copyright Directive), and use of protected content by online content-sharing service providers (Article 17 Copyright Directive), repectively. The latter provision requires member states to provide that online content-sharing service providers perform an act of communication to the public or an act of making available to the public when they give the public access to copyright-protected works or other protected subject matter uploaded by their users, therefore basically establishing an obligation for online content-sharing platforms to obtain an authorization from the right-holders in order to let their users share content. Having said this, it is not difficult to understand why considerations on such provision have been extensive.

In this contribution, we will be mainly focusing on the Italian transposition of Article 15 Copyright Directive and its peculiarities.

THE ITALIAN TRANSPORTATION CHOICES

As a preliminary remark, Italy transposed Article 15 Copyright Directive through Article 1, paragraphs 1-16, of the Legislative Decree and by introducing Article 43-bis to the Italian Copyright Law. Such provision, par. 1, provides publishers of press publications with the exclusive rights of reproduction and of communication to the public in connection with the online use of their publications of a journalistic nature by information society service providers, including companies of media monitoring and press releases. This implies that, from now on, under Italian law, any information society service provider —and in particular media monitoring companies and press releases, also called “news aggregators”—will need to obtain a proper authorization from press publishers in order to legitimately make any online use of a press publication unless such use falls within the scope of specific copyright exceptions set out below.

While Article 43-bis, par. 1, consists of a quite literal transposition of Article 15 Copyright Directive, the Legislative Decree establishes a couple of peculiarities, and:

1. provides a definition of the notably controversial expression “very short extracts” used in the Copyright Directive;
   • Article 43-bis establishes that “very short extract” of journalistic content means “any portion of such publication which does not dispense with the need to consult the journalistic article in its entirety”. In such respect, it has to be noted that through the Opinion No. AS1788 (the “Opinion”), issued before the entry into force of the Legislative Decree, the Italian Antitrust Authority (“AGCM”) has criticized the above definition for being too vague and suggested more objective parameters such as, for instance, the number of characters used in the article;
2. introduces the principle according to which press publishers shall receive a “fair compensation” for the online use of their journalistic contents;
   • It is worth noting that the fair compensation principle implies that publishers and service providers will need to engage in a negotiation concerning the use of the contents and its remuneration. In the determination of such fair compensation, the Italian legislator attributed a pivotal role to the AGCOM (see below, point (iii)). Part of the revenues, anyway, will have to be recognized by publishers to the authors of the articles subject to the online use. At the same time, publishers to whom an author has transferred or granted the use of a right by means of a transfer or license agreement shall be entitled to a share of the fee that is usually considered as payable to the author for uses of their work under any exemption or limitation to the transferred right;
3. ascribes to the Italian Regulator and Communication Authority (AGCOM) the task to identify the criteria to be used for determining the above mentioned fair compensation.
   • AGCOM is expected to adopt a regulation containing the criteria to be used for the determination of the fair compensation, such as, by way of example, the number of online consultations of the article, the years of activity and the relevance on the market of the publishers.

In the event that the negotiation process between publishers and information society service provider fails within 30 days from the request to commence negotiations in relation to the amount of compensation and without prejudice to the right to bring an action before the judicial authorities, the Legislative Decree provides that either party may refer to the AGCOM to determine the fair compensation, specifying its economic proposal. Within 60 days from the request of the interested party, the AGCOM shall indicate, on the basis of the criteria established by its mentioned regulation, which of the economic proposals formulated is compliant with the aforesaid criteria or, if it does not consider any of the proposals to be compliant, indicate the amount of the fair compensation. In this regard, the Italian legislator sets out an informative obligation to provide all the information required for the purpose of calculating fair compensation, binding upon the publisher. Also in this case, the AGCOM has a material role, being entrusted with the task of monitoring the compliance of publishers with the aforementioned informative obligation.

Furthermore, Article 1, paragraphs 6 and 7 of the Legislative Decree implements the exemptions from press publishers’ rights to reproduction and communication to the public contained in Article 15 Copyright Directive by providing that right of reproduction and right of communication to the public shall not be recognized in connection with individual uses, acts of hyperlinking and use of single words or very short extracts of a press publication.

However, it has to be noted that, according to the AGCM, the Italian transposition of the Copyright Directive contains provisions that could hinder competition and provides a too invasive scope of intervention of the public authority (i.e. AGCOM) in private negotiations. Basically, according to the AGCM, the protections granted by the Copyright Directive should not be pursued (i) neither with instruments of a public nature—being particularly invasive—(ii) nor with regulatory interventions that risk to determine unjustified constraints on the negotiating autonomy of the parties. AGCOM suggested rather to strengthen the role of the collecting societies by recognizing them the role of supervising the negotiations being more likely to pursue their authors’ interests.

Additionally, AGCM fears that the parameters for defining the amount of fair compensation to be indicated in AGCOM’s Regulation, are likely to determine improper discrimination against new entrants and smaller publishers, unjustifiably favoring incumbent publishers.

Having reported all the above, finally, it shall be mentioned that the Legislative Decree amends the exemptions regulated in the Italian Copyright Law by transposing Articles 3–6 Copyright Directive, into Articles 70-bis – 70-sexies in the Italian Copyright Law, adding some peculiarities to the EU provisions in an effort to adapt the already-existing regulation to a more online-oriented conception of free uses. In this regard, the Legislative Decree regulates the digital summary, quotation, reproduction, translation and adaptation of parts of protected works and other subject matters as well as their communication to the public for the sole purpose of illustration for teaching, to the extent justified by the non-commercial purpose to be achieved, on condition that such use:

1. takes place under the responsibility of an educational establishment, on its premises or at other venues, or through a secure electronic environment; and
2. includes the indication of the title, author, publisher and translator, when available.

However, the exception above does not apply in regards to material that is primarily intended for the educational market and sheet music to the extent that suitable licenses authorizing the teaching activities are easily available.

Finally, the Legislative Decree governs text and data mining for the purposes of scientific research by providing that the acts of reproduction carried out by research organizations and institutions for the protection of cultural heritage, for purposes of scientific research, for text and data mining from protected works available in networks or databases to which they have valid access, as well as the communication to the public of the results of research when expressed in new original works, are allowed. Notwithstanding the foregoing, the Legislative Decree also allows text and data mining carried out by any kind of user, when such mining has not been reserved to the protected work or database’s right-holder. Hopefully, Article 70-ter of the Italian Copyright Directive provides for quite extensive definitions of “research organizations” and “institutions for the protection of cultural heritage” allowing to properly identify the categories involved.

CONCLUSIONS

The Italian transposition of the Copyright Directive implies some considerations.

First of all, in the writer’s opinion, the circumstance, according to which the AGCOM is recognized with quite a pervasive role in copyright related issues, does not come as a huge surprise. As a matter of fact, the AGCOM already plays functions of copyright vigilance and inspection in coordination with the main Italian collecting society (Società Italiana Autori ed Editori—also known as SIAE). By way of example, through the adoption of Resolution No. 680/13/CONS of 12 December 2013, the AGCOM provides supports for the protection of the digital content market by fighting against piracy through means of effective, proportionate and dissuasive enforcement procedures.

Therefore, the legislator’s choice in identifying the competent public authority on this issue could only fall on AGCOM.

Secondly, such transposition of the Copyright Directive does not remedy the issues generally highlighted with regard to the text of the same. Although it has introduced some additional specifications to the aforementioned text, it does not always succeed in providing efficient and practical solutions as it was supposed to.

For example, as for the definition of “very short extracts,” on the one hand, the Legislative Decree tried as per the Copyright Directive to define such uncertain expression that arose many doubts, and on the other hand, an opportunity has been missed since it is easy to imagine that such vagueness will create lots of noise. Therefore, it is interesting to see what the practical implications will be.

In conclusion, such transposition will definitely open very interesting scenarios both with reference to the fair compensation criteria to be applied as well as for the interference of the public authority in private negotiations, especially under a competition law of point of view, and the relevant stakeholders will need to pay attention to the way this updated framework will be applied in practice in the coming months, notably with regard to the various implementations which may vary across the EU Member States.

The firm’s global intellectual property team (including in each of our European offices) remains available to assist you in navigating this new copyright framework at global levels.

By Eleonora Curreri and Camilla Pasino