In its order concerning the Schifano case, the Italian Supreme Court rules out that the integral reproduction of an artist’s works, albeit in scale, may qualify as free use of an intellectual work pursuant to Article 70 of Italian Copyright Law, stating that even the photographic reproduction in scale of protected works can compete with the artist’s right to economic exploitation of the work. 

Italian and European Union copyright laws provide for exceptions and limitations to the economic exploitation rights by the author on his intellectual works.

(See Articles 65 – 71 (5) of Italian Copyright Law No. 633 of 1941, The Berne Convention, and the Infosoc European Directive (29/2001/EC)  on the harmonization of certain aspects of copyright and related rights in the information society).

Such exceptions and limitations have the purpose of balancing the individual rights of authors and cultural enterprises with the fundamental rights of the community and individual citizens to disseminate knowledge and ideas. 

The Schifano ruling – Italian Supreme Court

In its order No. 4038/2021 published on 8 February 2022, the Italian Supreme Court ruled on the free use of an intellectual work under article 70 of Italian Copyright Law, affirming the following principle of law:

“The reproduction of works of art, when it is integral and not limited to details of the works, does not constitute any of the cases of free use; (…)  in order to enjoy the regime of free use, moreover, said reproduction must (Translator’s note: besides being limited to details) be instrumental to the purposes of criticism and of discussion, as well as purely for illustrative purposes related to the user’s teaching and scientific research activities and must not compete with the right to the economic use of the work that belongs to the right holder: a right that includes not only that of reproducing copies physically identical to the original, but any other type of replication of the work that is able to enter the market of reproductions, and therefore also photographic reproduction in scale.”

The case had arisen from the publication of the work called “Studio metodologico” concerning the computerised cataloguing of data relating to 24,000 works by the artist Mario Schifano kept in the archive of the Fondazione Mario Schifano, compiled by the foundation together with the University of Genoa. The artist’s heirs sued the creators of the publication claiming the infringement of copyrights in the reproduced works, the unlawful exploitation of the artist’s name and the usurpation of the moral rights of the author.

The District court and the Court of appeal of Milan both rejected the claims, deeming the publication legitimate as an electronic compilation for research and study purposes. Furthermore, according to the appeal ruling, the work consisted of a computer cataloguing study including small images that did not allow the economic exploitation of the reproduced works.

Mario Schifano’s heirs brought the case before the Supreme Court which overturned the appeal verdict. The Supreme Court’s order ruled out that the integral reproduction of the works, albeit in scale, created by the Mario Schifano Foundation may qualify as free use of an intellectual work under article 70 of Italian Copyright Law, and therefore stated that the photographic reproduction in scale of protected works can compete with the right to economic exploitation of the work that belongs to the owner.

Article 7o (1) of Italian Copyright law provides as follows:

The summarising, quotation or reproduction of passages or parts of works and their communication to the public are free if made for the purposes of criticism or discussion, within the limits justified by such purposes and provided that they do not amount to competition against the economic use of the work; if carried out for teaching or scientific research purposes, such use must, in addition, be made for illustrative and non-commercial purposes.

The Austro-Mechana ruling – Court of Justice of the European Union

The Court of Justice of the European Union (CJEU) has also recently ruled on the subject of exceptions to the right of reproduction of works. In its decision in case C-433/20 Austro-Mechana, the CJEU ruled that the exception for private copying pursuant to article 5 (2) (b) of Directive 2001/29/EC, applies to reproductions made on any medium, including copies of works in the cloud.

The ruling also specified that the creation of a backup copy of a work in the cloud constitutes a reproduction of that work by establishing that the private copying exception applies to copies of works in the cloud, on a server in a storage space made available to a user by the provider of a cloud computing service. However, European Union member states are not obliged to subject cloud computing service providers to the payment of fair compensation, provided that the payment of fair compensation to the right-holder is provided for by other means.

By Gioia Perucci and Carlo Lamantea