The implementation of Article 14 of the Copyright in the Digital Single Market Directive (CDSM Directive) in Italy raises a number of questions regarding the protection of the Public Domain. This article explores these questions by analysing the relationship between Article 14 of the CDSM Directive and the Italian Code of Cultural Heritage and Landscape (CCHL).
Background
According to Article 14 of the CDSM Directive, any material resulting from an act of reproduction of a public domain work cannot be subject to copyright or related rights-protection unless it is original in the sense that it is the author’s own intellectual creation. All EU member states are required to implement Article 14 and amend their national legislation accordingly (see Deborah De Angelis’s blog post).
Italy transposed Article 14 of the CDSM Directive into domestic law by passing Article 32-quarter of the Italian Copyright Law n. 633/1941 in November 2023 (Legislative Decree no. 177). The article includes a problematic addition: “The provisions on the reproduction of cultural heritage contained in Legislative Decree No. 42 of 22 January 2004 [CCHL] remain unaffected.” The reference is to Article 108 of the CCHL, which requires the payment of a concession fee for the reproduction of digital images of state-owned cultural heritage in the public domain if the reproduction is for-profit. The provisions of the CCHL beg the question of the protection of the public domain by other fields of law outside of copyright and related rights, which are not explicitly mentioned in Article 14 of the CDSM Directive (see Mirco Modolo’s article on the subject). Only the European Court of Justice (ECJ) can provide guidance on this matter. However, no Italian court has referred to the ECJ yet to clarify the relationship between Article 14 and the CCHL.
In recent years, the CCHL has been used by Italian cultural heritage institutions to initiate a number of lawsuits against commercial uses of works by Italian artists, which are clearly in the Public Domain.
Recent case law on the unauthorised reproduction of Italian cultural heritage in the public domain
1) Ministry of Culture v. Studi d’Arte Cave di Michelangelo:
In 2018, a famous Italian luxury fashion brand posted a video on the internet in which a physical copy (a clone of the statue) of the David—created by Studi d’Arte Cave Michelangelo S.r.l. (Cave)—could be seen wearing a tailor-made high-quality outfit of the brand. The Ministry of Culture sought to have the Court of first instance of Florence issue an interim measure to prevent further use of the image of Michelangelo’s David for commercial purposes. The Court dismissed the petition on the grounds of lack of urgency, as both defendants had removed the contested material from their websites.
However, the Ministry of Culture found out that Cave continued using the image of the David on another website, studidarte.it, still for commercial purposes, and filed a new urgent petition against Cave in 2021. The petition was dismissed and then appealed against it. On 11 April 2022, the Court ordered (see Simone Aliprandi and Carlo Piana’s comment) Cave to stop using the images of the David for commercial purposes, to remove all images of the statue from Cave’s websites, to pay the Gallerie dell’Accademia di Firenze a fine of € 500 for each day of delay in the execution of the preventive order, and it was further ruled that summaries of the order would be published at the expense of the defendants in two national daily newspapers, in two local daily newspapers and on Cave’s Instagram profile and YouTube channel.
The Court concluded that the mere ex-post payment of compensation is insufficient for the legitimate reproduction of a cultural asset. For the use of the image to be lawful, consent is required, following a discretionary assessment of the requested use (and its possible configuration) concerning the asset’s cultural purpose and historical-artistic character. The nature of a cultural asset inherently requires the protection of its image through an evaluation of compatibility reserved for the Public Administration. This evaluation encompasses the right to reproduce the asset and the safeguarding of the asset’s consideration by fellow citizens – its identity as a collective memory of the national community and the territory. Therefore, according to the Court of Florence, this notion should constitute a comprehensive right to the cultural asset’s image (right of publicity).
2) Galleria dell’Accademia Firenze v. GQ:
In 2020, the Gallerie dell’Accademia di Firenze and the Ministry of Culture sued the publishing house GQ (Condé Nast) for the unauthorised use of the image of Michelangelo’s David on the July/August issue’s cover of GQ Italia (see Justus Dreyling’s post on this blog and this interview with Deborah De Angelis). The plaintiff asked the Court to enjoin the use of the image of Michelangelo’s David. The Court promptly issued an order banning the use of the image on the cover of the magazine and prohibited any further digital use of the image.
Eventually, on 15 May 2023, the same Court ruled again in favour of the Gallerie and the Ministry of Culture and condemned the publisher GQ to pay the Galleria dell’Accademia di Firenze two separate amounts: € 20,000 as a concession fee and an additional € 30,000 for the way in which David’s image was distorted for the magazine. In addition, the judge acknowledged the right to the image (which is granted by Article 10 of the Italian Civil Code to physical persons and legal entities), with specific reference to cultural heritage, considering the legal basis for this right is found in Articles 107 and 108 of Legislative Decree No. 42/2004, which directly implement Article 9 of the Constitution(See Eleonora Rosati’s comment on IPKat).
3) Gallerie dell’Accademia di Venezia v. Ravensburger:
On 24 October 2022 (see Deborah De Angelis and Brigitte Vézina’s comment on this blog and Giuilia Dore’s contribution on the Kluwer Copyright blog), the Court of first instance of Venice decided on the lawsuit brought by the Gallerie dell’Accademia di Venezia, a public museum under the Italian Ministry of Culture, against the German toy-making companies Ravensburger AG and Ravensburger Verlag GmbH as well as their Italian branch represented by Ravensburger S.r.l. for the unauthorised use of the images of Leonardo da Vinci’s Vitruvian Man on a series of puzzles. The order enjoined the German company to stop using the image of the Vitruvian Man for commercial purposes, to pay to the Gallerie dell’Accademia di Venezia a fine of € 1,500 for each day of delay in the execution of the preventive order, and it was further decided that summaries of the order would be published at the expense of the defendants in two national daily newspapers and in two local daily newspapers.
4) Uffizi v. Gaultier:
In October 2022, the Uffizi Galleries announced their intention to sue the French fashion house Jean Paul Gaultier for damages that could exceed € 100,000 after the company’s (allegedly) unauthorised use of images of Botticelli’s Renaissance masterpiece The Birth of Venus to adorn a range of clothing products, including T-shirts, leggings, and tops, for the brand’s new line Le Musée. There has not been any news on this controversy, and there is no evidence that a lawsuit has been served (see, Justus Dreyling, Brigitte Vézina, and Teresa Nobre’s post on this blog).
It is clear that a protectionist trend is emerging in line with the approach of the government (for a critical approach, see Roberto Caso’s comment on the Kluwer Copyright blog).
The Ministerial Decree on the minimum tariff for the reproduction of the digital images of the state cultural heritage
Prior to 11 April 2023, the interpretation and practice of art. 108 of CCHL granted cultural heritage institutions discretion to decide whether to adopt an Open Access policy, enabling the use of the digital images of cultural heritage through the use of a Creative Commons licence or Public Domain tools, to promote fair access to and sharing of Italian culture, while supporting the role of cultural heritage institutions in sustainable economic and social development.
In April 2023, however, the Italian Ministry of Culture introduced minimum fees for commercial reproductions of state-owned cultural heritage, including for works in the Public Domain that all state-owned public museums will have to apply (Decree no. 161 also known as Guidelines). The Decree will have a detrimental effect on the promotion and dissemination of Italian cultural heritage globally, impeding knowledge sharing (see reporting on huffingtonpost.it and repubblica.it). The new guidelines represent a significant setback as they contradict the fundamental principles of public enjoyment and enhancement of cultural heritage enshrined in the Italian Cultural Heritage Code.
The situation in Italy escalated on 14 June 2023, when Senator Marcheschi (Fratelli d’Italia) proposed to punish with a fine between € 20,000 to 60,000 the unlicensed use of cultural objects in the public domain in violation of Articles 107(1) and 108(1)-(3) of the CCHL (as an amendment to the proposal of law on Article 518-duodecies of the Italian Criminal Code, on the destruction, dispersal, deterioration, defacement and illegal use of the physical cultural heritage and landscape). At the session of June 21st, 2023, the amendment was withdrawn, having received a negative opinion because of the costs it would entail to activate the sanctions, but it turned into an agenda for the Government “to consider the advisability of providing for the imposition of an administrative fine of 20,000 to 60,000 euros against anyone who, in violation of Articles 107, paragraph 1, and 108 paragraphs 1, 2 and 3 of Legislative Decree No. 42 of January 22, 2004, reproduces a cultural heritage or markets its reproduction in the absence of or in contravention of the order of the authority in charge of the property.”
A solution for no problem
The flow of income generated from the licensing of images of cultural objects remains more or less unchanged for major museums. Peripheral and smaller museums, by contrast, lament an increase in bureaucracy not supported by the hiring of new staff. The reproduction and dissemination of images of cultural heritage in smaller museums, even for commercial purposes, contributed to the diffusion of culture and the promotion of national heritage.
The discretion that was left to individual museums when licensing images of the objects under their custody, allowed the museum staff to consider different factors: internal costs, whether they already had good quality images not covered by copyright, the promotion of the museum, the valorization of the cultural object, etc. The mandatory application of the minimum tariff stated by the guidelines makes it impossible, e.g. for state-owned museum staff, to permit the free use of images according to the open access principle. In the past, museums and other state-owned cultural institutions could allow the free use also for commercial purposes (as permitted by CC licences and tools compatible with open access) without asking for a concession fee. The discretion previously held by cultural institutions to decide whether to authorise the free use of cultural heritage images has been eliminated.
Instead of creating positions to help under-staffed museums or promoting the preservation of the Italian cultural heritage, the Ministry of Culture has enacted unnecessary restrictions. The imposition of high fixed fees for the for-profit use of images of cultural objects in the Public Domain may result in limiting the exploitation only to privileged classes of individuals, while preventing local communities or “communities of origin” with a limited budget from participating in it. Moreover, the community has not been involved in the decision-making process and has not had a chance to participate in the debate. This scenario is further complicated by the possibility for the licensing administration to deny for-profit uses of images by invoking the “decorum” exception, namely judging the declared use of the image of the artwork as inappropriate. “Decorum” is a very broad, subjective, and undefined concept that contributes to generating uncertainty in this field (see Daniele Mancorda’s contribution).
What is more, creativity is at risk! Today, when using professional photographic reproductions of works in the Public Domain, which are subject to both copyright and the Guidelines, users will face the so-called “tragedy of anticommons” (a term coined by Michael Heller). These works will be used less due to the existence of multiple layers of protection, which are hard to navigate.
