A Lawyer’s Work May Be Protected By Copyright

A recent judgment of the IP Court of Venice addresses a perhaps unprecedented issue in Italian case law: that of the protection under copyright laws of a work created by a lawyer for their client in the performance of legal services.

The case brought before the Court regarded an anti-counterfeit regulation that a lawyer had drafted for an exposition held in Milan. A few years later, in preparation for a different exposition in the Veneto region, a regulation had been sent to exhibitors (marked with the logo of the event) that appeared to slavishly reproduce the first. The document had been withdrawn following a cease-and-desist letter, but the author nonetheless sued the body organising the Veneto exposition, claiming infringement of his moral rights and seeking compensation under copyright laws.

The defendant, although denying in principle any copyright infringement, claimed that the document had been provided by its lawyer, who had presented it as the product of her own work (and who incidentally had been an associate of the plaintiff in the past). On these grounds, the defendant joined its lawyer as a party to the proceedings, asking to be indemnified by her against any adverse compensation ruling, and claiming to have used the work in good faith.

The Venice judges first dealt with the question of whether a work such as the one in suit could enjoy protection under Italian copyright laws, concluding that there were no obstacles to prevent such protection. All that is required to that end, the judges observed, is that the creative intellectual activity of the author be “expressed in a distinct and perceptible form”; that “the work belongs to the sciences and the arts in general”; and that it “possesses a creative quality, epitomised by originality and novelty”, in the sense that it “must reflect a personal contribution and the individuality of the author, and present sufficient added value compared to the prior art” although “its degree of originality and novelty can be modest”.

Similar conclusions had been reached by the Milan IP Court in a decision on another text of “technical” character, which we commented on in this article.

The work in suit, according to the Venice judges, fulfilled all these requirements. The anti-counterfeiting regulation, in fact, was not “a mere list of consolidated rules and practices”, but “the result of a personal, original, new and creative elaboration of legal concepts and industry practices and of the experiences of the author”, which “for the way they have been contextualised and organised and combined in a specific expressive fashion, form a composition that goes beyond a merely functional, necessitated elaboration”.

Having concluded in favour of the plaintiff on the issue of authorship (thanks to witness depositions), the Court found that the work in suit had in fact been unlawfully reproduced, in light of the slavish reproduction in the later document of the formal succession of arguments, the headings and the text of the articles forming the original anti-counterfeit regulation.

The Court, however, ruled out any liability for damages to the main defendant: the trial had confirmed that it had actually commissioned the work from the third-party defendant and had therefore reasonably relied on its lawfulness, ceasing its use immediately upon receiving a cease-and-desist letter from the author.

On the contrary, the third-party defendant and material infringer was found to be fully liable on account of the fact that she had knowingly presented the regulation as the result of her own work, knowing who the real author was, even suggesting that her client circulate it with their own logo on it.

Notably, the Court dismissed the argument that a copy of the regulation could easily be found on the Internet, remarking that this did not make it freely appropriated by third parties.

The third-party defendant was therefore ordered to compensate damages determined on an equitable basis (the fact that the regulation was available on the Internet did limit, according to the Court, the harmfulness of the conduct) and ordered the publication of the decision in two newspapers, one national and one local.