September 26, 2006, n. 20410/06
The publisher of a newspaper or magazine must be considered the author of this collective work according to art. 7 Copyright Act and the owner of its economic rights of exploitation in accordance with art. 38 copyright act.
A 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.
Art. 65 Copyright Act allows the free reproduction of newspaper articles except where the rightholder has reserved the exploitation.
A press review circulated for profit is a systematic reproduction of information and news whose exploitation is entitled to others and is therefore unlawful under art. 101 Copyright Act since it realises a product, having parasitical characteristics, which is offered to the same market of the publisher of the work being reproduced.
According to copyright law any act upon defence thereof and any act of exercise which is consistent with the function of securing the economic exploitation only to its owner cannot be regarded as being abusive in terms of competition law.
Summary of the Proceedings
Milano Finanza Editori S.p.A, Class Editori S.p.A. and Erinne s.r.l., on the ground of art. 700 of the Code of Civil Procedure, requested the Court of Milan to prevent Selpress s.r.l. from systematically reproducing newspaper and periodical articles in order to deliver them electronically to their own clients. The Court granted the requested order.
By way of legal proceedings dated April 22nd 1997 the aforesaid companies sued, before the said Court, Selpress s.r.l. in order to establish the unlawful character of the aforementioned conduct and to have an injunction and an order of compensation for damages.
The Tribunal granted the requests of the plaintiffs.
Selpress lodged an appeal which the Court of Milan rejected, holding that the copyrights of the publishing companies had been violated, based on what was considered to be the collective nature of the periodicals and the newspapers in question, and having proven that unfair competition for purposes of profit was involved in the publication of the press review of the appellant.
Selpress is appealing to the Supreme Court against this judgment, on four grounds. The publishing companies dispute by way of counterclaim. The parties have filed their pleadings.
Grounds for the decision
2. The court makes the preliminary observation that it is self-evident that the publication of the articles in question occurred by electronic means, thus permitting them to be distributed for commercial purposes, from as early as six o’clock in the morning, anticipating or (simultaneously) accompanying the first publication of same. The position of the publisher of the collective work is at issue, as the respondents maintain, since there is no doubt as to the application of the relevant rules under art. 38 and ff of the Italian copyright law to periodicals and newspapers and therefore as to the extension of their right to exploitation of same.
The basis for the correct formulation of this issue is art. 7 of the Italian copyright law which lays down the rule that whoever directs and organises a collective work is considered to be the author. Therefore, in this case, since there is no element to rebut the aforesaid presumption, the publishing companies are to be considered authors of the material published by them, and thereby the holders of the rights under art. 12 of the Italian copyright law(first publication of the work and economic exploitation of same). And this applies without there being any need to establish, as claimed by the appellant, a different manner or a distinct source of acquisition of the right on the component work, in contrast to that on the collective work. Under art. 38 of the L.A., indeed, regarding the collective work, in the absence of agreement to the contrary, the right of economic exploitation is vested in the publisher, without prejudice under art. 7 to the rights of whoever organises and directs. And it is the publisher, i.e. the owner of the publishing enterprise who, assuming the entrepreneurial risk of publication, has the right to enjoy the resulting economic benefit in the absence of an agreement to transfer this right.
2.a. The suitability or otherwise of the electronic means of publication of the articles in the press review does not arise in this case, nor the specialised character of same, since the right of first publication is not an issue in itself but at most, is a component of the exploitation. It must be emphasised that the press review released for commercial purposes is not by law exempted from the protection afforded to the author and the publisher of the work to which it relates. Therefore, as the judge held on the merits, while art. 65 of the Italian copyright law, on the one hand, considering the topical relevance of the articles, permits their free reproduction in other forms of publication, it makes an exception for the case in which the holder of the exploitation rights has specifically reserved the right to their reproduction or exploitation. And in this particular case this express reservation is self-evident, as ascertained article by article by the judge, by a claim which was not in itself contested.
3. The third ground is unfounded, by which the appellant protests the violation of art. 101 of the Italian copyright Act and the presumed unfair competition involved in the publication and distribution of the articles in the press review. The aforementioned provision defines as unlawful and therefore as participating in the nature of the act of competition within the meaning of art. 2598 of the Civil Code, among others, the publication or systematic reproduction, for commercial purposes of information or news to which others are entitled. The exploitation rights. The press review distributed for commercial purposes belongs to such form of exploitation since it amounts to the product offered to the same market addressed by the publisher of the reproduced work having in whole or in part, a parasitic nature.
4. The appellant’s final ground of complaint is that the failure on the part of the respondents to concede to Selpress s.r.l. a licence to reproduce their articles in the press review had the effect that by the apparently legitimate exercise of their right they in fact did abuse of the same.
The commercial enterprise which compiles and releases press reviews is, in fact, protected by art. 41 of the constitution, a provision which the Court appears to have overlooked [Omissis]
4.a. The court observes that this ground rests on a misunderstanding. There is no question in this case of the legitimacy of the enterprise which releases a press review to the market, targeted, moreover at the interests of clearly identified consumers of news. What is at stake is the correct relationship between the monopoly of exploitation of the work to which the author is entitled and the right of other subjects who may potentially hold exploitation rights over the same work, which are not in conflict with the aforesaid legitimate monopoly. The law, indeed, by protecting the work of the author also in the economic content of the right, permits only the author (or in this case, the publisher) to assign the exploitation right or to permit others to share in it. For as long as copyright protection persists, no act in defence of the same from any interference, and no act in defence of same, consistent with its economic function, may be considered as abusive exercise.
The respondents have not agreed to the publication in question by Selpress and for these reasons the law does not submit this refusal to deal to any nor does it make the legitimacy of this refusal subject to any other requirement, owing to the legitimacy of the copyright monopoly.
First published in the annual review "Italian Intellectual Property 2006”