Guidelines on the Urbani Decree

29 November 2004

Massimiliano Notaro

The Peer-to-Peer (P2P) scenario has recently changed in Italy due to the adoption of a new regulation (Law Decree no. 72 of 22 March 2004, the so called “Urbani Decree” modified by Law no. 128 of 21 May 2004). However, as soon as the new regulation came into force it has raised some uncertainty for entities and individuals that manage IP rights on the internet.

New regulation for acts infringing intellectual property rights through electronic communication networks

The Urbani Decree has introduced a new criminal rule which punishes IP infringements committed through the use of electronic communication networks, even where this is for a non-commercial purpose. This legislation was issued in order to provide better measures “to tackle illicit distribution of audiovisual content on electronic communication networks” and so to keep control over the greatly increasing P2P phenomenon, in a similar vein to the USA.

Art. 1 of the Urbani Decree introduced substantial changes to art. 171-ter of the Italian Copyright Law (ICL) which contained criminal sanctions for unauthorised acts of copying, reproduction, broadcasting, distribution of copyrighted works or making them available to the public where such acts (according to the previous wording of art. 171-ter ICL) are carried out for non-personal and gain purposes, whatever process is adopted.[1]

Pursuant to the new version of art. 171-ter, as amended by the Urbani Decree (art. 1, paragraph 2), the above mentioned acts are to be considered as copyright violations subject to criminal sanction (imprisonment from 6 months to 3 years and fines up to Euro 15,500[2]) additionally where they are carried out with a view to obtaining a “profit”from the relevant act, e.g. profit deriving from direct or indirect savings of money[3], and no longer only when carried out “for money”.

Criticism of the changes, which have resulted in the expansion of the range of acts subject to criminal punishment, was raised by some authors and politicians who proposed (i) the reintroduction of the old provision (sanctioning only acts for gain/money purposes), and (ii) for the time being, the enforcement of the new rule upon a “reasonable” interpretation of “scope of profit”, i.e. by taking into consideration the social aspects connected to the greatly increasing demand of consumers to broadband access and the resultant heavy use of P2P networks.

Notwithstanding such criticism, under the new rule the following acts will be considered illegal unless authorised by the right holders:

  • each use of P2P platforms concerning copyrighted works
  • sharing of copyrighted works on electronic communication networks within private place or firms even if such sharing is made for internal purposes only
  • making a copyrighted work available on a web site
  • in general, any reproduction of a copyrighted work made for non-personal purposes

Duty of notice of fulfillment to the ICL obligations

Paragraph 1 of art.1 of the Urbani Decree also deserves attention, since it has introduced a new and, at this stage, unspecified duty for those managing IP rights on the internet.

According to paragraph 1 of art.1 of the Urbani Decree, the uploading of a copyrighted work, or of part thereof, into an electronic communication network must be accompanied by a proper notice of fulfillment of the obligations provided under the ICL. Such notice, which shall be properly displayed, shall include mention of specific sanctions provided by the law for each infringement.

At this stage, however, the regulation does not provide any clarification in relation to the categories of subjects obliged and the technical modalities to be adopted. Such clarification shall be provided by a future executive decree (not yet drafted), with the prior agreement of the SIAE[4] and the associations of the concerned IP right holders (art. 1, paragraph 1, sentence 2 of the Urbani Decree).

As a consequence, until such executive decree has been issued, the notice referred to above must be provided in a way to grant its direct visibility (art. 1, paragraph 1, sentence 3, of the Urbani Decree).

Meanwhile, the following issues remain:

(i) The effective addressees of the duty: for the time being such persons should be considered as subject to the notice requirement in the same way as those who upload a copyright protected work on the internet, i.e. any content provider. However, it is observed that, after 5 months from the coming into force of the new provision, there are very few websites containing the mentioned notice of fulfillment.

(ii) Modalities of the application of a watermark in relation to all uploads of copyrighted works into the internet:in accordance with art. 1, paragraph 1 sentence 3, the notice may be regarded, and so inserted, as a common disclaimer, e.g. contained on the home page. However, such a modality is unlikely to be considered appropriate after the issuing of the executive decree. It is also under discussion whether the executive decree will include any procedure, e.g. SIAE application forms to be filled out, to be followed in order to comply with that duty of notice.

(iii) Sanctions: according to art. 1, paragraph 7 of the Urbani Decree, the non-compliance with the duty of notice is subject to sanctions provided for by art. 21 of the Legislative Decree n. 70/2003[5]. In the light of the above, it seems doubtful that sanctions provided for in art. 21 of the Law. 70/2003 could be enforced prior to the issuing of the executive decree while a common disclaimer may be used to discharge any responsibility. For completeness, the duty of notice is applicable only to acts which take place in Italy.

[1] Computer programs are exempted as ruled by art.171-bis ICL.

[2] Please consider that imprisonment is increased up to 4 years in case of mere uploading into an electronic communication network (art. 171-ter, paragraph 2, lett. a.-bis) ICL as introduced by the Urbani Decree).

[3]Case law of the Supreme Court unanimously stated that the scope of profit means “money saved on the purchase of the original product”- Supreme Court, Criminal Section III, n. 33896 of 19 September 2001.

[4] SIAE is the Italian collecting society managing copyrights on behalf of Authors end Publishers.

[5] Art 21 of the Law n. 70/2003 implementing Directive 2000/31/CE relating to e-commerce provides fines amounting from 103 to 10,000 euros.