Have there been any notable recent legal developments regarding copyright in your jurisdiction, including any regulatory changes and recent case law?
Over the past few years the courts have set clearer limits on the exemption from liability scheme for internet service providers. In particular, a number of rulings concerned the activities of so-called ‘hosting service providers’. Pursuant to Article 16 of the Italian E-Commerce Act (Legislative Decree 2003/70), which implements Article 14 of the EU E-Commerce Directive (2000/31/EC), hosting service providers are exempt from liability where third-party rights are violated on the hosting service providers’ online platforms as long as the hosting service providers:
- has no knowledge of the illegal activity or information; or
- acts expeditiously to remove the illegal material once made aware of its infringing nature.
In this regard, the Rome Court of Appeal (which specialises in IP disputes) has ruled on the unenforceability of Article 16 of the E-Commerce Act against providers that do more than carry out merely technical, automatic and passive activities – as specifically provided for by Recital 42 of the E-Commerce Directive (Judgment 28337, 29 April 2017). This ruling is in line with other recent decisions on this matter (Court of Rome, Corporate Chamber, Judgment 14279, RTI-Megavideo, 15 July 2016; Court of Rome, Judgment 8437, RTI-Break Media, 27 April 2016; Court of Rome, Corporate Chamber, RTI-l’Espresso, 13 July 2016; Court of Rome, RTI-Kit Digital, 5 May 2016). Indeed, the Rome Court of Appeal denied the operator of an online platform (which offered video sharing services) exemption from liability under Article 16 of the E-Commerce Act on the ground that the activity carried out was not “limited to the mere provision of technical support in order to enable users to access the digital platform, as it proved… far more complex and structured than a neutral, merely technical type of activity”. To that same effect, a judgment (concerning the same dispute) by the Court of Rome (RTI-Break Media, mentioned above) showed that established Italian and EU case law agreed on the fact that intermediary service providers are not to benefit from liability exemptions for acts committed by service recipients when the service providers provide play a significant role in optimising the submission of offers and digital content found on the online platform, even where contributing minimally to the editing of online material that is detrimental to safeguarded interests. In the abovementioned judgments, the Italian courts apparently defined, once and for all, which criteria are to be taken into consideration when assessing the nature, be it active or passive, of a provider. The courts held that the higher the degree of involvement of a content-sharing platform in the management of data (ie, indexing and cataloguing of content), the more apparent its active nature is.
In a different proceeding, the Court of Rome (Judgment 693/2019, RTI-Vimeo, 10 January 2019) established another important principle by ruling that platforms can be held liable for "culpable cooperation by omission, for the violation of copyright" in the event that they fail to take immediate action and comply with the specific obligation of "immediate removal". In such cases, platforms will be subject to a penalty for any future infringement subsequent to the judgment itself.
The Court of Rome has also acknowledged the granitic orientation of the European Court of Justice regarding violations of author's rights committed through the linking technique (Judgment 3512/2019, RTI-Facebook, 15 February 2019). The court recognised that the publication of hyperlinks without specific authorisation from the owner must be regarded as unlawful, as it constitutes an act of communication of the work “to a new public other than that originally authorised by the plaintiff”. Therefore:
even the so-called passive hosting provider as soon as received the news of the wrongdoing committed by the users of its service, must take action in order to allow the prompt removal of the illegal information entered on the site or to prevent access to them, as he is required to conduct his business in accordance with the diligence that it is reasonable to expect to detect and prevent the illegal activities specifically reported.
Finally, the Supreme Court intervened on the status of an ‘intermediary’ (ie, a party that allows the violation of an author's rights indirectly through the provision of certain information services) (Judgment 7708/2019, RTI-Yahoo). According to the court, the limitation of civil liability regime provided for in Article 16 of Legislative Decree 70/2003 does not apply to intermediaries that do not limit themselves to carrying out an activity "of a purely technical, automatic and passive nature, which implies that the information society service provider does not know or control the information transmitted or stored", as expressly established in Recital 42 of EU Directive 2000/31/EC. This is because the limitation of liability provided for by the directive and Legislative Decree 70/2003 does not apply in the case of a provider that plays an active role and does not limit itself to merely storing data and information, but operates as a real audiovisual operator by offering a series of additional ‘indices of interference’ aimed at optimising videos for users.
Further, in October 2018 the Italian Communications Guarantee Authority approved the amendments to the regulations on the protection of copyright regarding electronic communications networks. The new rules govern the exercise of the powers that Article 2 of EU Directive 2021/29/EC has attributed to the authority with the aim of combating the most serious violations through the provision of appropriate precautionary powers and measures against the recurrence of the same violations. Specifically, it is possible to take precautionary measures, as a matter of urgency and if the conditions are met, within three days of receipt of the relevant request.
Have there been any notable technological advances or developments to assist copyright owners in protecting and enforcing their rights?
Sophisticated systems exist for the automated recognition of digital content (audio fingerprinting and video fingerprinting). These systems are becoming widely available on the main digital platforms, enabling the automatic detection and removal of non-authorised content, thereby reducing the high costs incurred by rights holders when carrying out manual checks. However, these systems do not always allow the information that is exclusively in the hands of service providers to be shared with the rights holders, even where such information would greatly help identify the perpetrators of unlawful acts and ensure a proper quantification of the damage suffered by rights holders.
What is the primary legislation governing copyright in your jurisdiction?
The Italian Constitution does not specifically provide for copyright protection. However, the constitutional protection of copyright can be inferred from the combined provisions of Articles 2, 9, 21, 33 and 42. Some rules concerning copyright also appear in Articles 2575 to 2583 of the Italian Civil Code, which, however, merely reproduce the key rules contained in the Copyright Act 1941/633. The Copyright Act has been amended several times upon approval of new international conventions and EU directives relating to the protection of copyright and related rights.
Is your jurisdiction a party to any international agreements relating to copyright?
Italy is a party to the following international treaties and conventions on the national treatment of foreign works:
- the Bern Convention (ratified by Law 1978/399);
- the Rome Convention (ratified by Law 1963/866);
- the Geneva Convention for the Protection of Producers of Phonograms;
- the Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (ratified by Law 1977/771);
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (ratified by Law 1994/747);
- •the World Intellectual Property Organisation (WIPO) Copyright Treaty; and
- •the WIPO Performances and Phonograms Treaty.
Online and digital regulation
Are there any legal provisions specifically covering digital and online content?
At the national level, the E-Commerce Act implements the EU E-Commerce Directive in Italy. Articles 14 to 17 of the act govern, among other things, the internet operators’ liability. More generally, Article 1 of the Copyright Act grants protection to all intellectual works of a creative nature, whatever their means or form of expression. The publication of works online is believed to require a level of protection equal to publication in traditional media. Moreover, the Copyright Act, as amended, incorporates the provisions of the EU Copyright Directive (2001/29/EC).
On 26 March 2019, the European Parliament approved the new European directive on copyright in the digital single market (the Copyright Directive). This will need to be transposed in Italy, with the aim of "promoting the development of the market for the granting of licences between rights holders and providers of online content sharing services" (Recital 61) to allow rights holders to "receive adequate remuneration for the use of their works or other materials". In particular, Article 17 of the Copyright Directive on specific uses of protected content by online services states that:
- online content sharing service providers must perform an act of communication to the public or an act of making available to the public for the purposes of the directive when granting the public access to copyrighted works or other protected subject matter uploaded by their users (paragraph 1);
- online content sharing service providers must therefore obtain authorisation from the rights holders referred to in Articles 3(1) and (2) of EU Directive 2001/29/EC – for example, by concluding a licence agreement – in order to communicate to the public or make available to the public works or other subject matter (paragraph 1).
Are any government authorities charged with regulating and enforcing copyright law?
The Italian Communications Regulatory Authority (AGCOM) has been playing an increasingly important role following amendments to the Copyright Act, particularly through:
- Law 2000/248;
- the E-Commerce Act, with regard to online infringements; and
- the Consolidated Act on Audiovisual Media Services 2005/177, as amended by Legislative Decree 2010/44, with regard to broadcasting services in particular.
Resolution 680/13/CONS of 12 December 2013 enabled AGCOM to adopt a regulation regarding copyright protection for electronic communications networks and implementation procedures pursuant to the E-Commerce Act.
In October 2018 AGCOM approved the amendments to the regulations on copyright protection for electronic communications networks. The new rules govern the exercise of the powers that Article 2 of the EU Directive 2021/29/EC has attributed to the authority with the aim of combating the most serious violations through the provision of appropriate precautionary powers and measures against the recurrence of the same violations. Specifically, it is possible to take precautionary measures, as a matter of urgency and if the conditions are met, within three days of receipt of the relevant request.
What works are eligible for copyright protection in your jurisdiction?
Copyright applies to intellectual works with a creative character relating to literature, music, figurative arts, architecture, theatre or cinematography, whatever their means or form of expression. However, in order to access the protection granted by the legislation, the work must satisfy the prerequisite of novelty. The law does not consider lawfulness, merit or value of the work as prerequisites to copyright protection, as they are both subjective and ever changing.
Are there any special provisions for the protection of non-artistic works (eg, software and databases)?
Italian law protects databases that, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation (Article 1(2) of the Copyright Act). In particular, the protected databases are understood as being collections of works, data or other independent elements systematically or methodically arranged and individually accessible by electronic means or otherwise. The protection of databases does not extend to their content and is without prejudice to rights relating to the said content (Article 2(9) of the Copyright Act). Software is also included in the list of works protected by the Copyright Act, and is regarded as literature (Article 1(2)). In particular, the list includes software of any kind, providing that it is the result of an intellectual effort originally made by the author (Article 2(8)). Lastly, meaningful slogans can also be considered as intellectual works, as can advertising campaigns that involve a complex and creative plan.
Are any works explicitly excluded from copyright protection?
Copyright protects only the form of the work, but not its information or expressive content. Therefore, mere ideas are not subject to protection.
Related IP rights
Can copyrightable works be protected by other IP rights (eg, trademarks and designs)?
Industrial design works are also subject to copyright if, besides having a creative character, they also have an inherent artistic value. In some cases, an intellectual work such as a design or a graphic work can become a protected trademark for the exact visual representation for which it is registered.
Lastly, a sculpture protected as artwork can be also registered as a three-dimensional trademark.
Establishment of rights, registration and deposit
Establishment of rights
How is copyright established in your jurisdiction? Is registration, deposit or any other formality required?
The work is subject to specific protection from the moment that it is created. Copyright results automatically from the creation of a work and requires no formalities or fulfilments.
Only the exercise of the right to remuneration for an engineering plan or drawing requires the author to insert a declaration of reservation and deposit the plan or drawing with the Italian Ministry of Cultural Heritage and Activities and Tourism.
Registration and deposit – procedure and effects
What is the procedure for copyright registration and deposit (whether mandatory or voluntary)?
Registration is not compulsory. However, works can be deposited on a voluntary basis with the Italian Society of Authors and Publishers (SIAE) and the Italian Ministry of Cultural Heritage and Activities and Tourism. The SIAE manages certain public registers, such as the Public Register of Cinematographic Works. This particular register serves primarily as a tool to record and publicise the existence of works (and thus copyright ownership) that are not required to be recorded under the Copyright Act, thus providing legal certainty from an evidence standpoint. The register also has a constitutive function regarding rights relating to deposits of engineering or similar works covered by Article 99 of the Copyright Act.
Article 103 of the Copyright Act also allows the recording of transfers of rights for the economic exploitation of works. A public register for software also exists that record and publicise the existence and ownership of rights related to programs. Moreover, the SIAE manages the deposit of unpublished works, which can include screenplays, plots, audiovisual works, software, databases and specimens of intellectual work in general. Such deposit is private, and is granted in order to provide documentary proof of the existence of the work on the date of deposit.
The Ministry of Cultural Heritage and Activities and Tourism manages the General Public Register of Protected Works, which records the works that must be recorded pursuant to Article 105 of the Copyright Act. As with the Public Register for Cinematographic Works, recording in the General Public Register of Protected Works provides evidence, unless proved otherwise, of the existence and ownership of said works. The authors and producers listed in the register are considered, unless proved otherwise, as the authors and producers of the works that are attributed to them (Article 103).
If voluntary, what are the benefits of registration/deposit?
Who may own copyright in a work?
Unless proved otherwise, those who are indicated as the authors of a work during the recitation, performance or broadcasting of the work are considered as its authors, as specifically provided for in Article 8 of the Copyright Act. Therefore, those who declare to be the authors of a work are considered as such unless proved otherwise.
Joint and collective ownership
What rules and restrictions govern the joint or collective ownership of a copyright work?
Article 7 of the Copyright Act defines the ‘author of a collective work’ as the person who organises and directs the creation of that work: work performance does not suffice. A person who has created a derivative work is deemed the author of that work within the limits of their own effort. Article 10 of the Copyright Act establishes that if the work has been created by the indistinguishable and inseparable contributions of two or more persons, the copyright belongs to all the authors jointly.
Employee and commissioned work
What rules and restrictions govern the ownership of copyright in a work created in the course of employment (including works by employees and commissioned works by independent contractors)?
The person (ie, employee) who has directly created the work is always entitled to moral rights, which are inalienable and non-transferable. The rights to the economic exploitation of the intellectual work created by an employee during the course of their employment or by a contractor during the performance of a contract are not automatically conferring upon the employer as a natural consequence of the contract in place between the parties, except in respect of software, databases (Article 12bis of the Copyright Act) and industrial design works (Article 12ter). Other than these three exceptions, the employer should always rigorously and carefully formulate contracts with employees and contractors so as to avoid disputes as to the ownership of proprietary rights.
Exercise of rights
What rights are afforded to copyright owners (including rights to use and limit the use of the copyrighted work)?
Copyright holders enjoy a series of proprietary rights, such as:
- right of reproduction;
- right of transcription of oral works;
- right of public performance or recitation;
- right of communication;
- right of distribution;
- right of modification, translation and publication of the works in a collection; and
- right of rental and lending.
Beside rights to the economic exploitation of the work, the author is entitled to a series of faculties that constitute the moral rights of the author (which are inalienable and non-transferable):
- right of paternity (ie, right to be identified as the author of the work);
- right of disclosure;
- right to the publication of unpublished works;
- right to the integrity of a work; and
- right to the removal of a work.
Are there any limits or restrictions on the rights holder’s exercise of its rights, including any fair use allowances and parody exceptions?
Not every use of a protected work implies an infringement. Indeed, Italian law provides for specific exceptions and limitations to copyright, commonly defined as ‘fair use’, such as:
- the reproduction of single works for personal use;
- the reproduction and public disclosure of articles of economic, political or religious nature; and
- the reproduction or public disclosure of protected works or materials used for current events, within the limits of Article 5 of the Copyright Directive.
What ancillary or neighbouring rights arise in relation to copyright (if any)? Are there any rules or restrictions on their exercise?
The most important related rights include:
- the rights of producers of a cinematographic or audiovisual work (Article 78ter of the Copyright Act);
- the rights of performers (Articles 80 to 85bis of the Copyright Act); and
- rights related to photographs (Articles 87 to 92).
The Copyright Act governs both the content and duration of every related right. Limitations and exceptions to copyright also apply to related rights (Article 71decies).
When does copyright protection begin and what is the duration of protection?
Whereas moral rights are inalienable, economic rights have limited duration: they lapse 70 years after the death of the author of the work, even for works published posthumously. In the case of anonymous or pseudonymous works, save some exceptions, rights to economic exploitation lapse 70 years after first publication. Specific rules apply to the duration of collective works under Article 26 of the Copyright Act.
Transfer, assignment and licensing
Transfer and assignment
What rules, restrictions and procedures govern the transfer and assignment of copyright? Are any formalities required to secure the legal effect of the transfer or assignment?
The transfer of copyright is governed by the general rules of freedom of contract.
All rights to economic exploitation can be transferred, except for moral rights, which are inalienable and non-transferable.
What rules, restrictions and procedures govern copyright licensing?
See “Transfer and assignment”.
Are there any special provisions governing sub-licensing?
What collective licensing bodies operate in your jurisdiction and how are their activities regulated?
Italian Legislative Decree 2017/35 implementing Directive 2014/26 establishes the collective and independent bodies and entities that manage copyright and related rights. The Italian Society of Authors and Publishers (SIAE) is the competent authority for copyright. It handles the intermediation of exclusive rights for economic exploitation (music, theatre, television), as well as the collection and allocation of remuneration rights, such as:
- private copying pursuant to Articles 71sexies and following of the Copyright Act;
- resale right pursuant to Articles 144 and following of the Copyright Act;
- right to rent pursuant to Article 18bis and remuneration pursuant to Article 46bis;
- remuneration for reprography pursuant to Article 68; and
- remuneration for loan pursuant to Article 69.
The collective management of related rights is entrusted to several entities operating in the field of music and audiovisual works, collecting and allocating remunerations pursuant to Articles 73 and 73bis of the Copyright Act, and remuneration for private copying pursuant to Article 71sexies. The list of companies managing the rights related to copyright is available on the website of the Presidency of the Italian Council of Ministers at http://presidenza.governo.it/DIE/attivita/diritto_d_autore/Elenco_imprese.pdf.
Which courts are empowered to hear copyright disputes?
The corporate chambers of the courts, instituted in regional capitals (with some exceptions), have exclusive jurisdiction over IP disputes.
What acts constitute copyright infringement in your jurisdiction (including with regard to online and digital content)?
The Copyright Act does not set down copyright infringement instances that might constitute counterfeiting or plagiarism. In general terms, ‘counterfeiting’ is the exploitation of the economic rights resulting from the work without the consent of the author; it is the appropriation of the creative elements of a pre-existing protected work of a different individual. ‘Plagiarism’ is a variation of copyright infringement. It consists in the total or partial reproduction of the creative elements of a work belonging to others with the appropriation of its authorship. There can be counterfeiting without plagiarism, as in piracy, where the counterfeit element is accompanied by the name of the actual author, and the will to appropriate the work belonging to others does not exist.
Online works are treated as paper publications: works published on the Internet cannot be copied or benefited from without explicit consent from the author.
Is contributory infringement recognised in your jurisdiction (including liability for internet services providers and other online/digital actors)?
Article 156 of the Copyright Act specifically provides for the liability of intermediaries (ie, internet service providers) whose services are used for the purposes of infringing copyright. Therefore, those who have reasons to fear the infringement of a right to economic exploitation to which they are entitled, or wish to prevent the continuation or repetition of an infringement that has already occurred, can sue the intermediaries as defined above. Moreover, the E-Commerce Act establishes specific domains of responsibility for the various intermediaries. The Italian courts have repeatedly acknowledged the joint liability of internet service providers for infringements committed directly by users of their services.
What actions can be taken against copyright infringement (eg, civil, criminal or administrative), and what are the key features and requirements of each?
Civil actions against copyright infringement can follow the classic division between main court proceedings (proceedings on the merits) and interim actions (preliminary injunctions). The former are usually initiated so as to obtain – upon assessment of the existence of an infringement – the measures required to obtain the cessation of an infringement and any compensation for the damage suffered. Injunctions are sough in order both to enable the summary assessment of an infringement, and to adopt measures (ie, seizure and injunction) aimed at preventing the commencement or continuation of the unlawful act – this in light of the severity and irreparability of the damage that the rights holder could suffer if it were to wait for the conclusion of the proceedings on the merits. Interim actions can also be aimed at acquiring and maintaining proof of the infringement in view of the commencement of the proceedings on the merits. Interim measures can be requested both before the commencement of the proceedings on the merits (ante causam) and during the course of these proceedings.
Moreover, Italy has incorporated – within the framework of the Copyright Act – the protection instruments provided for by the EU IP Enforcement Directive (2004/48/EC).
With regards to criminal law protection, conducts limiting or violating copyright are prohibited pursuant to Articles 171 to 171nonies of the Copyright Act.
Lastly, the Italian Communications Regulatory Authority adopted, through Deliberation 680/13/CONS of 12 December 2013, the Regulation on the Protection of Copyright on Electronic Communications Networks, whereby the authority can issue, under certain conditions, injunctions against access providers (the regulation can be accessed at www.agcom.it/documents/10179/0/Documento/b0410f3a-0586-449a-aa99-09ac8824c945).
Who can file a copyright infringement action?
Only the holders of the rights allegedly infringed or their successors in title can file actions for copyright infringement. Where the rights at issue have been transferred, it is up to the transferee(s) to bring the action, even for infringements committed before the transfer.
In addition, case law has established that an exclusive licensee can file an infringement action in absence of any specific authorisation from the licensor, unless the licence agreement does not include that possibility. Non-exclusive licensees are not entitled to such prerogative and need the rights holder’s authorisation.
What is the statute of limitations for filing infringement actions?
The general rule foreseen in Article 2947 of the Italian Civil Code (five-year limitation period, unless the fact constitutes an offence) also applies to non-contractual infringements ascribable to copyright.
What is the usual timeframe for infringement actions?
Civil law preliminary injunction proceedings take about a month. Civil proceedings on the merits take about three years at first instance, while administrative proceedings before the Italian Communications Regulatory Authority typically take three weeks.
What are the typical costs incurred in infringement actions?
Costs typically stem from the gathering of evidence and from legal assistance.
How are attorneys’ fees handled? Can they be claimed in infringement actions?
In civil proceedings, the unsuccessful party (typically, the defendant) is required to pay the costs incurred by the rights holder. However, to recover its costs (for legal assistance and the gathering of evidence), the rights holder must initiate a separate action for pecuniary damages against the infringer.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The Italian IP Law sets forth special interim measures, such as preventive technical consultancy, description, seizure and injunction. They can be requested before the commencement or during the course of the proceedings on the merits. For the interim measures to be issued with regard to copyright infringement, in particular as to the protection of proprietary rights, two essential circumstances are required: periculum in mora (risk – urgent and irreparable – of financial loss in case of non-issuance of the measure) and fumus boni iuris (existence of the right to be protected). Seizure and injunction (whereby the infringement is stopped) can be subject to counterclaims by the alleged infringer. The issue of interim measures can be subject to the plaintiff paying a bond.
What remedies are available to owners of infringed copyrights?
Based on the claims being made in or out of court, different remedies are available. Generally speaking, remedies can be restrictive or compensatory.
What customs enforcement measures are available to halt the import or export of pirated works?
Customs actions are either ex officio or activated following an application for action (ordinary procedure). The latter requires the rights holder to submit an application for action with the customs authority aimed at protecting its works. If the application is successful, the customs authority can clear the suspect works or detain them. Moreover, the rights holder is entitled to inspecting the works subject to the customs measure. By contrast, the ex officio procedure requires the autonomous intervention of the customs authority in presence of sufficient grounds for believing that the works may infringe the IP rights of others.
What defences are available to infringers?
Infringers typically claim the enforceability of exemption from liability and the exceptions to exclusive rights set forth in Article 65 and following of the Copyright Act.
What is the appeal procedure for infringement decisions?
As far as (civil law) preliminary injunction proceedings are concerned, the unsuccessful party is entitled to challenge the measure within 15 days of its service or notification (pursuant to Article 669terdecies of the Italian Code of Civil Procedure). As to ordinary proceedings on the merits (again in civil law), the time limit for lodging an appeal is either short or long. The former is usually 30 days from the date when notice of the first-instance judgement is served, whereas the latter runs from the publication of the judgment, for six months.
Protection and enforcement measures
What special measures and safeguards should rights holders consider in protecting their online/digital content?
In addition to the remedies against copyright infringement available through civil and criminal proceedings discussed in the “Enforcement” section, in case of online infringement, the Italian Communications Regulatory Authority can issue orders against internet service providers under the Regulation on the Protection of Copyright in Electronic Communications and its implementing procedures pursuant to the E-Commerce Act. It is advisable to serve a cease and desist letter before initiating any judicial proceedings, in addition to filling in the online claim forms available from the service providers.