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.

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The defendants are the world-renowned German toy making companies Ravensburger AG, Ravensburger Verlag GMBH and their Italian office represented by Ravensburger S.r.l.. They were brought to court for using the image of the widely popular ​​Public Domain drawing to produce and sell puzzles without authorization or payment of a fee to the Gallerie dell’Accademia di Venezia, where the physical artwork is kept.

A puzzling question

Let’s pause here. Authorization, fee, Public Domain work… These don’t add up. The Public Domain is made up of works that are out of copyright, free to use by anyone for any purpose. The Public Domain is the treasure trove of creative works that inspires us all and upon which all creativity depends. In fact, protecting the Public Domain is so important that in 2019 the European legislator made it explicit in Article 14 of the European Directive on Copyright in the Digital Single Market (CDSM) that non-original reproductions of works in the Public Domain must stay in the Public Domain — no copyright protection arises from the simple act of reproduction of public domain works, e.g. through digitisation.

So, how come the Gallerie could prevent Ravensburger from using an image of the Public Domain Vitruvian Man on its puzzles? How come the court:

• prohibited the defendants from using for commercial purposes the image of the work “Vitruvian Man” by Leonardo da Vinci and its name, in any form and any product and/or instrument, including digital ones, on their websites and on all other websites and social networks under their control;
• ordered the defendants to pay a penalty of € 1.500 to the Gallerie dell’Accademia di Venezia for each day of delay in the execution of the precautionary order;
• ordered the publication of the order in extracts and/or summaries of its contents by the Gallerie dell’Accademia and at the expense of the defendants in two national daily newspapers and in two local daily newspapers?

The answer: The Italian Cultural Heritage Code

The answer lies with a particular piece of Italian law: the Italian Cultural Heritage Code (Legislative Decree n. 42/2014). According to the Italian Cultural Heritage Code and relevant case law, faithful digital reproductions of works of cultural heritage — including works in the Public Domain — can only be used for commercial purposes against authorization and payment of a fee. Importantly though, the decision to require authorization and claim payment is left to the discretion of each cultural institution (see articles 107 and 108). In practice, this means that cultural institutions have the option to allow users to reproduce and reuse faithful digital reproductions of Public Domain works for free, including for commercial uses. This flexibility is fundamental for institutions to support open access to cultural heritage.

Incompatible with Article 14 CDSM

Be that as it may, the Cultural Heritage Code’s “authorization+fee” system generally deals a severe blow to the Public Domain in Italy, and alarmingly, beyond its national borders — Creative Commons calls attention to this in its Global Open Culture Call to Action to Policymakers. It is in fact completely at odds with EU legislation protecting the Public Domain: Article 32, quater of the Italian Copyright law (Law n. 633 of April 22nd, 1941) clearly conflicts with the intent of the European legislator. That is because Article 32, quater transposes Article 14 CDSM but limits its effect to the application of the Italian Cultural Heritage Code. We at Communia have strong reasons to believe this is incompatible with the letter and the spirit of Article 14.

Even in cases where European legislation does not in itself have direct effects or applicability in the national legal system of the Member States, it must always represent an indispensable guiding parameter for national courts, which are called upon to interpret national law in the light of European legislation (i.e., the obligation to interpret it in conformity). Further, there is a general prohibition for Member States to allow a national rule to prevail over a contrary EU rule, without making a distinction between earlier and later national law.

Not the only case

The Vitruvian Man is sadly not an isolated case. Just a few months ago, we commented on the one opposing the Uffizi Museum to Jean Paul Gaultier, where the defendant, a French fashion designer, used images of another Renaissance masterpiece, Botticelli’s Birth of Venus. These cases are bound to leave wreckage in their wake: great uncertainty around the use of cultural heritage across the entire single market, hampered creativity, stifled European entrepreneurship, reduced economic opportunities, and a diminished, impoverished Public Domain. To address these issues, we hope the European Court of Justice will soon have the opportunity to clarify that the Public Domain must not be restricted, a fortiori by rules outside of copyright and related rights, which compromise the European legislator’s clear intent to uphold the Public Domain.

Quite curiously, even though the precautionary order should be executed with specific regard to the Vetruvian Man’s puzzle, it is interesting to see that on the defendant’s website one can still  buy puzzles reproducing “La Gioconda” (the Mona Lisa) and “The Last Supper” by Leondardo da Vinci; “The Kiss” by Hayez and another “The Kiss” by Klimt and many other monuments, works of art, as well as images of nature and animals.

Liberalise it

Is legal action the right way to deal with this issue? Court proceedings are expensive and will not change reality. A different approach (compatible with an open access policy and the protection of the Public Domain) that liberalises the faithful reproduction of cultural heritage in the Public Domain would be more supportive of tourism, the creative industry and “the benefit of civil society in general. Other than being compatible with the principle stated by Art. 14 of the CDSM Directive.

The post The Vitruvian Man: A Puzzling Case for the Public Domain appeared first on COMMUNIA Association.

This blog post analyses the implementation of the copyright exceptions for Text and Data Mining, which is defined in the Italian law as any automated technique designed to analyse large amounts of text, sound, images, data or metadata in digital format to generate information, including patterns, trends, and correlations (Art. 70 ter (2) LdA). As we will see in more detail below, the Italian lawmaker decided to introduce some novelties when implementing Art. 3, while following more closely the text of the Directive when implementing Art. 4.

Text and data mining for scientific purposes

Art. 70 ter (1) LdA permits reproductions made by research organisations and cultural heritage institutions for scientific research purposes, for purposes of extraction of text and data from works or other materials available on networks or databases to which they lawfully have access to, as well as communication to the public of the results of research when expressed in new original works. It seems that the Italian lawmaker committed a lexical fallacy by adding that the purpose of the reproduction is to extract text and data from works and other materials available in networks or databases. This, as well as limiting the type of protected materials to those present on networks or databases, appear to be legislative inventions incompatible with the directive.

Notably, the new Italian exception also allows the communication to the public of the research outcome when such outcomes are expressed through new original works. In other words, the communication of protected materials resulting from computational research processes is permitted, provided that such results are included in an original publication, data collection or other original work.

The right of communication to the public was not contemplated in the original government draft; it was introduced in the last version of the article to accommodate the comments of the Joint Committees of the Senate and the Joint Committees of the Chamber, both highlighting the need to specify that the right of communication to the public concerns only the results of research, where expressed in new original works.

The beneficiaries of the TDM exception for scientific purposes are research organisations and cultural heritage institutions. Research organisations essentially reflect the definition offered by the directive. These are universities, including their libraries, research institutes or any other entity whose primary objective is to conduct scientific research activities or to conduct educational activities that include scientific research, which alternatively:

• operate on a non-profit basis or whose bylaws provide for the reinvestment of profits in scientific research activities, including in the form of public-private partnerships;
• or pursue a public interest purpose recognised by a European Union member state (Art. 70 ter, (4)LdA).

If commercial enterprises exercise a decisive influence, such as allowing access on a preferential basis to the results generated by scientific research activities (Art. 70 ter, (5) LdA), an organisation will not be considered a research organisation under this law. Cultural heritage institutions are defined broadly, including libraries, museums, and archives, as long as they are open to the public or accessible to the public, also those belonging to educational institutions, research organisations and public broadcasting bodies, as well as the institutes for the protection of film and sound heritage and the public broadcasting bodies (Art. 70 ter, (3)LdA).

The copies of works or other subject matter created need to be stored with an adequate level of protection and can be kept and used only for scientific research purposes, including the verification of research results (Art. 70 ter, (6)). Rightsholders are authorised to apply measures to ensure the safety and integrity of the networks and databases where the works or other subject materials are hosted (Art. 70 ter, (7) LdA). Such measures shall not go beyond what is necessary to achieve and can also be defined based on agreements between right holder’s associations, cultural heritage institutes and research organisations (Art. 70 ter (8) LdA). Such negotiations have not taken place so far.

The Italian lawmaker did not expressly contemplate any specific and fast procedure for cases where technical protection measures prevent a beneficiary from carrying out the permitted acts under both TDM exceptions. However, the law now recognises to the beneficiaries the right to extract a copy of the material protected by technological  measures in certain cases. Under Art. 70-sexies, LdA, beneficiaries of the TDM exception for scientific purposes (as well as the beneficiaries of the exception for digital and cross-border teaching activities exception) shall have the right to extract a copy of the protected material, when technological measures are applied based on agreements or on administrative procedures or judicial decisions. In order to benefit from this right, the person shall have lawful possession of copies of the protected material (or have had legal access to them), shall respect the conditions and the purposes provided for in the exception, and such extraction shall not conflict with the normal exploitation of the work or the other materials or cause an unjustified prejudice to the rights holders.

While the Italian lawmaker should be praised for introducing such a right, the Italian implementation still missed an opportunity to update the controversial and rarely applied negotiation and mediation procedures set forth in Art. 71 quinquies, (2) LdA (which transposed Art. 6(4) of the Infosoc Directive) to the actual needs of all beneficiaries of copyright exceptions. Furthermore, it should be noted that the law continues to reserve the application of the three-step test only to  the exceptions and limitations related to the use of protected materials available through on-demand services only, including under the new copyright exceptions, contrary to what is mandated by Art. 7(2) of the CDSM Directive.

Regarding contractual override protection, as stated by Art. 7(1) of the CDMS Directive, conflicting agreements with the TDM exception for scientific purposes are void.

Text and data mining for other purposes

The implementation of the exception for text and data mining for purposes beyond scientific research by any individual or organisation follows for the most part the text of Art. 4 of the CDSM Directive. Reproductions and extractions are allowed from works or other subject-matters available online or databases to which users have lawful access for TDM. The exception is subject to the possibility of rightsholders reserving their rights, but there is no clarification on how this reservation should be made. In this regard, the Italian law doesn’t mention the need​​ to express such reserves appropriately, such as through machine-readable standards when contents are made publicly available online.

No additional conditions or precisions are established on the retention and storing of copies of materials made to conduct text and data mining, nor on the measures that rights holders may take to ensure the safety and integrity of the networks and databases where the materials mined are hosted. Reproductions and extractions may be retained only for the time necessary for text and data mining as stated in  Art. 4 of the CDSM Directive.

Conclusion

In conclusion, the Italian legislator should be praised for going beyond what is required by art. 3 of the CDSM Directive. The Italian implementation allows the application of the TDM exception for scientific purposes to the reproduction for the extraction of texts and data or other subject matters (to which the beneficiaries have lawful access) and to the communication to the public of the research outcome when it is expressed through new original work. Therefore, in this respect, the Italian legislator exercised the option allowed by Art. 25 of the CDSM Directive to adopt a broader provision, compatible with the exceptions and limitations provided for in the InfoSoc and Database Directives.

For TDM for other purposes, the lawmaker reproduced the text of Art. 4 of the directive, not adding any extra elements to regulate, as written before, the exercise of the faculty to opt out by rights holders in a suitable and machine-readable by the computers. The Italian implementation also missed an opportunity to introduce provisions to allow the reproduction of material protected by technical measures that prevent beneficiaries from carrying out the permitted acts under the both TDM  exceptions. In sum, a total organic revision of the Italian copyright law would be desirable, which would allow for a better understanding and knowledge by not only the interpreter of the law, but also by rightsholders and users.

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