Electronic Press Reviews, Copyright and Fair Use

15 June 2007

Paola Frassi

OUTLINE 1.Legal background and previous case law - 2.Copyright exception relating to newspaper articles - 3.The digital environment: exception under art. 65 Copyright Act after the implementation of EC Directive 2001/29 on the Information Society - 4. Copyright misuse?

1. Legal background and previous case law

The case eventually discussed before the Supreme Court deals with an electronic press review and dates back to 1997.

The starting point was a preliminary injunction granted by the court of Milan followed by a judgment on the merits, being affirmed by the Court of Appeal of Milan and in the last instance by the Supreme Court ruling on matters of law[1].

That is to say that the copyright legislation at stake was the one in force before the latest amendment of 2003 following the implementation of EC Directive 2001/29 (legislative decree n. 68/2003) which also touched to some extent on art. 65 Copyright Act concerning a copyright exception on reproduction of newspaper and magazines articles.

Facts were very simple: Selpress released and circulated among its subscribers via telefax or the internet a comprehensive press review consisting of articles and news drawn from several newspaper and magazines published by the plaintiff and targeted at the specific interests of the subscribers. Both works were simultaneously released.

There is very little case law in Italy addressing this issue; non surprisingly, all of the precedents relate to electronic press reviews, circulated via the internet[2]. It is straightforward that the digital environment has an heavy impact when it comes to gather and make widely available to the public any kind of information, included news coming form the press in a traditional (i.e. printed) format.

It must also be noted that those days the Copyright Act did not provide for rules envisaging electronic press reviews, or press reviews in general, nor did it defines them anyhow.

The only reference to this matter within Italian legislation came from the BerneConvention whose art. 10.1 (1) recites as follows: “ It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries”.

The rule shows several constraints.

First of all, it sets out on obligation only concerning protection for foreign authors. Then leaves to the interpreter the meaning of “quotations” which cannot be stretched to cover the full reproduction of materials covered by copyright but, on the other, cannot be limited to include only references such as the title of the article, the name on the author and the place o publication. Moreover, the rule must be read together with article 10 bis that leaves it to the member States to lay down the precise limits surrounding the freedom to reproduce articles published in newspapers or periodicals on current economic, political or religious topics[3].

In any event, due to the wording of the Berne Convention, we can conclude that its rules do not neither address nor solve the question of the freedom of compilation and dissemination of electronic press reviews consisting of articles reproduced in their full text, as shown by the circumstance that none of the decisions in the present case draws arguments from the Convention.

2. Copyright exception relating to newspaper articles

We can trace two different approaches in the copyright act that can be adopted to deal with press reviews; they can either concur or be followed alternatively.

Art. 65 copyright Act first comes into consideration.

Grounded on the copyright held by the author on a newspaper or magazine article, art. 65 allows for the free reproduction of articles on current economic, political or religious topics in others newspaper or magazines if reproduction is not expressly reserved by the author and provided that information is given as to source, the date and the name of the author.

The role of this provision in relation to the freedom of an undertaking to gather articles from different sources in order to produce its own press review has been subject to some discussion within the authors.

According to one view, this copyright exception allows for reproduction of articles in other newspaper must be interpreted from the standpoint of the author, meaning that the legislator assumed that reproduction within the limits set by art. 65 would not normally harm the author’s interest; whether this harm could arise, there would always be enough room for the author to avoid reproduction by placing a reserve mention. What is at issue in the field of press review therefore is not the interest of the author but the one of the newspaper or magazine publisher which is taken into account by rules other than art. 65 (art. 3, 7, 38 of the Copyright Act)[4].

A different opinion is that art. 65 exception was laid down to balance the author’s exclusive rights with the public interest in the dissemination of information, opinions and comments concerning current events allowing thus for free reproduction as long as the author had not placed a reserve.

Looking back in 1941 when the law was first enacted and to the publishing market structure to date, reproduction in other papers was looked as a rather remote possibility hampered by technical constraints so that the placing of a reserve mention by the author could work as an effective tool to prevent reproduction in the few cases where the author had a clear interest at stake.

Useless to say that authors and publishers face today a dramatically different scenario. In the current situation, if the argument beneath fair use is the one of balancing different interest (right-holders and the public interest) it is hard to draw on art. 65 to argue for a freedom to reproduce despite authors and publishers rights. Provided that art. 65 Copyright Act lays down a fair use exception, this ought to be strictly interpreted meaning, for instance, that reproduction of articles dealing with topics other than the one considered (economical, political or religious) should not be exempted nor reproduction should be allowed outside the field of other “newspaper and magazines”[5]. This would be the case for press reviews made electronically available and purpose built for a specific interest.

A derogation from art. 65 to allow for a copyright exception for electronic press reviews would place a private economic interest ahead of the one of authors and publishers of the original contribution which is hardly sustainable.

The Supreme Court seems to have followed this view as the underlying guide of its reasoning and has broken the path in affirming that an electronic press review made for profit is not exempted from the copyright protection entitled to the author and publisher on the works from which it derives.

From a slightly different point of view, the Supreme Court decision favouring a strict interpretation of art. 65 Copyright Act must be handled with some caution due to its circumstances.

As a matter of fact, the reproduction of the contested articles had been reserved by the publisher[6] meaning that this precedent could be objected as not being the one addressing in principle the question whether art. 65 Copyright Act allows for the free exploitation of articles on current topics, outside their express reservation.

The second approach which is also concurrently followed by the Supreme Court is the one relying on art. 101 Copyright Act.

Art. 101 is modelled on the unfair competition protection provided for in the civil code (art. 2598) and views at the interests of the press agencies towards the news they circulate from a twofold perspective. On the one hand, it allow agencies for a lead time of 16 hours from the first release or publication in the press, before any news can be freely reproduced or broadcasted by others (art. 101.a).

On the other, there is a ban on the systematic reproduction for commercial purposes by other newspaper, magazines or broadcasters of news and pieces of information made accessible by publication or broadcasting (art. 102.b).

The Supreme Court contribution in clearing up the way to the application of art. 101.b) Copyright Act to press reviews (whether electronic or not) compiled without the right-holders authorisation is is noteworthy especially if confronted with some of the views in the doctrine.

According to one opinion, art. 101 b) refers to pieces of news and protects the interests of the press agencies and this is not the case of press reviews resulting from the collection of newspaper and magazines articles. This is to say that articles may contain news but are non merely news so that art. 101.b) does not envisage the case at issue. Moreover, as to the systematic reproduction which is laid down as a condition for the provision, this should be found only when the information is parasitically drawn from a single source, such as given magazine or newspaper[7], which seldom occurs in practice as press reviews tend to cover several different sources.

Even previous to the case decided by the Supreme Court, the applicability of art. 101.b) had been affirmed by the courts[8].

3. The digital environment: exception under art. 65 Copyright Act after the implementation of EC Directive on the Information Society

The Copyright Act was deeply amended in 2003 to comply with EC Directive n the Information Society.

The chapter concerning fair uses and art. 65 in particular was also amended in order for legislation to keep up with technological changes.

In any event, the overall structure of art. 65 has remain unchanged meaning that reproduction of articles on current topics is by large always subjects to the limitation that have been examined above.

The area of materials that can be reproduced has been stretched outside newspapers and magazines articles to cover any material (i.e. data) on current economic, political or religious matters which are anyhow made available to the public meaning also via the internet in electronic newspapers instead of requiring the former publication in the press. Moreover the area of fair use extends non only to the reproduction in the traditional press but now also covers their broadcasting (radio and television).

Still, reproduction in electronic newspaper is not expressly envisaged[9], which would in any event place art. 65 in a difficult position if and when an electronic press is under consideration.

Le soluzioni sono valide? legislative perspectives on electronic press reviews: aborted

4. Copyright misuse?

One final remark addressing the right-holders refusal to allow for reproduction of articles within third parties press reviews.

The Supreme Court neatly affirms that the copyright holder is lawfully entitled to refuse to licence his copyrighted work, as this refusal touches on the of exclusivity itself.

One might argue that this rather radical statement looks inconsistent with the mainstream of EC jurisprudence which has affirmed an abuse of right with reference to certain refusals to deal in the field of copyright[10].

The Court does not carry any in-depth analysis on the point, but it has nonetheless to be underlined that newspaper articles stand on the side of literary works more than mere facts and data, as was in the cases brought before the EC courts, taking thus the present issue far away from the one which arises where the opportunity of copyright protection in itself could be seriously objected to[11].

[1] Court of Milan, April 8, 1997, Dir. Inf. 1997, 573; Court of Milan, July 13, 2000, AIDA 2001, 772; Cour of Appeal of Milan, March 26, 2002, AIDA 2003, 912; Supreme Court, September 26 2006 n. 20410, Foro it., 2006, 3337.

[2] In addition to the decisions mentioned hereabove, see Court of Milan, February 14, 1997, Foro it., 1997; I, 3030; Cour of Genova, December 3, 1997, in Riv. dir. Ind., 1999, II, 83.

[3] Art. 10 bis : “1) It shall be a matter for legislation in the countries of the Union to permit the reproduction by the press, the broadcasting or the communication to the public by wire of articles published in newspapers or periodicals on current economic, political or religious topics, and of broadcast works of the same character, in cases in which the reproduction, broadcasting or suchcommunication thereof is not expressly reserved. Nevertheless, the source must always be clearly indicated; the legal consequences of a breach of this obligation shall be determined by the legislation of the country where protection is claimed”.

[4] See PENNISI, Le rassegne stampa telematiche, AIDA, 1998, 160.

[5] See VALENTI, Ancora in tema riproduzione sistematica di articoli di giornale in rassegne stampa eletrroncihe, Riv. dir. ind., 1999, II, 88 ss.

[6] The Supreme court also agrees on the idea that the reserve mention may be placed by the publisher to whom the author has assigned his copyright.

[7] See PENNISI, cited; CARTELLA, La riproduzione di articoli, notizie ed informazioni, Riv. dir. ind. 1988, II, 320.

[8] In addition to the decisions in the early stages of this case, see Court of Genova, December 3, 1997, cited (the articles reproduced in the press review there under scrutiny were taken all from the same newspaper).

[9] Art. 66 copyright Act also amended in 2003 refers also to telematic newspaper so that their omission in art. 65 cannot be overlooked.

[10] Immediate reference is to ECJ decision in IMS (April 29, 2004, case C-418/01) and CFI decision in Magill ( ).

[11] Relation between IPRs and competition law is a gigantic topic. For one Italian way see GHIDINI, Intellectual Property and Competition Law, Edward Elgar, 2006 (106 et seq.).