Italian copyright law (Article 181 bis) prescribes that any medium put on sale or exchanged for profit, which contains computer programmes, multimedia works, sounds, voice, moving images, and generally protected works must bear a distinctive sign. This measure is aimed at reducing the number of counterfeit goods being exchanged in the marketplace. Società Italiana degli Autori ed Editori (SIAE), the Italian authors’ collecting society, is responsible for issuing the sign to the party requesting it and charges a small fee for each copy of the sign that it provides.

In the case in question, Mr Schwibbert was found to hold a certain number of CDs containing reproductions of artistic works by Giorgio De Chirico and Mario Schifano. The CDs were authorised reproductions imported from Germany with a view to being sold at cultural events in Italy. However, the SIAE distinctive sign was not displayed on the CDs. Before the Italian Court, SIAE claimed that Mr Schwibbert was guilty under Article 171ter (1) (c) of the Italian copyright law, but his lawyer sought to refer the question to the European Court of Justice (ECJ) for preliminary ruling.

In particular, the lawyer was not convinced that Italian national law and procedures were in full compliance with the provision of the Directive 98/34/EC on Technical Standards and Regulations. In fact, if the SIAE distinctive sign regime qualified as a technical regulation within the meaning of Article 1 of the Directive, then the rules imposing the compulsory application of such a distinctive sign should have been notified to the Commission in accordance with Article 8 of the same Directive.

The Court, in accordance with the opinion delivered by Advocate General Trstenjak, rejected the view that the relevant distinctive sign only applied to the intellectual work (the corpus mysticum) and therefore fell outside the scope of Article 1 of the Directive. The Court underlined that the sign is affixed to the actual medium containing the work, thus to the product itself, and, as such, Article 1 applied. However, a doubt remained in relation to whether notification to the Commission was required, given that a general obligation to apply the SIAE distinctive sign came into existence with promulgation of Italian copyright law (1941), which was well before the introduction of the Directive. On this point, the Court was firm in recognising that the requirement for the product in question came into existence with the amendments to the Italian copyright law introduced in 1994. The draft technical regulation should have been communicated to the Commission by the Italian Republic because the specific obligation actually arose after the introduction of the Directive.

In conclusion, the Court affirmed that the obligation to affix an SIAE distinctive sign to compact discs of works of figurative art for the purposes of marketing them in the Member State concerned constitutes a technical regulation which, if not notified to the Commission, cannot be invoked against an individual.

The judgement in favour of Mr Schwibbert appears to redefine and possibly weaken the power and responsibilities of SIAE in relation to its supervision of the CD, DVD and similar media market. Despite Mr Schwibbert’s case reflecting the very specific circumstances referred to the ECJ for preliminary ruling, it is clear that the step taken by the Court could, on one hand, drastically reduce the enforceability of the obligation laid down in Article 181 bis of the Italian copyright law and, on the other hand, have a negative impact on the income that SIAE derives from issuing its distinctive sign.