The IP court of Milan on the copyright protection of literary books

By order of 21 February 2014, the IP court of Milan, judge Ms. Giani, dealt with the copyright protection of literary books, retracing the key principles of the relevant copyright legislation.

The dispute that led to the decision was commenced by RF and RAF (collectively the “claimants”) who claimed that they were the authors of a book published in Canada in 1995 and in Italy in 1997, and that they become aware, in October 2013, of the publication of a book unlawfully containing integral parts of their own material, written by the authors DM, ES and IM, published by EE and distributed in Italy by LF (collectively the “defendants”). The claimants requested that the defendants therefore be enjoined from reproducing and marketing the book, with the establishment of a penalty, that the copies of the book already printed be seized, and that the decision be published in the press.

The defendants argued that the reproductions in question were not unlawful because: i) the work and the names of the claimants were cited in the bibliography, resulting in recognition of the claimants’ authorship; ii) the reproductions were limited to the first chapter of the defendants’ book; iii) the book was written with different work organisation and forms of expression than that used in the book of the claimants; iv) the originality of the idea contained in the claimants’ book was attributable to another person (not part of the proceedings). LF further added that, as a mere distributor, it did not have any role in the creation of the book, in addition to having immediately ceased commercializing the book and to having only sold a small number of copies.

In the order under review, the judge accepted the motion, noting that “such reproductions, made ​​without authorisation, of several pieces of the claimants’ book, although solely restricted to the first chapter of the defendants’ book, violate both the economic and moral rights of the authors, who have the exclusive right to reproduce and sell their work , and to claim authorship. The reproduction of several pieces of the claimants’ work with marginal lexical or syntactic changes rules out the autonomous and creative organisation of the claimants’ work, with regard to chapter 1 in which the reproduced parts are contained. If it is true that creativity is not constituted by the idea itself, but by the form of its expression, it is also true that in this case, through the reproduction of maps and parts of text which are identical or have marginal linguistic variations, there was the very reproduction of the form of expression adopted by the claimants”.

The judge then stated that the infringement is not excluded by the fact that the claimants were listed in the bibliography: this publication – given its commercial character – does not fall within the cases in which copyright protection is excluded pursuant to art. 70 of the Italian Copyright Law (Law no . 633/41 , “ICL” ), which states that “the abstract, quotation or reproduction of pieces or parts of the work and their communication to the public are free if made for purposes of criticism or discussion, within the limits justified for such purposes and provided that they do not amount to competition in the economic use of the work. In addition, if carried out for the purpose of teaching or scientific research, use should also be made for purposes of illustration and for non-commercial purposes“. In addition, even if such publication fell within the cases provided for by said provision, the mere mention of the title and the names of the claimants in the bibliography would not be sufficient to attribute to the claimants the authorship of the parts of the work reproduced in full by the defendants.

Finally, the judged declared that the infringement is not excluded by the fact that the idea behind the claimants’ book was not original, since “the requirement of creativity is not intended as absolute originality and novelty, and it does not relate to the idea in itself, but to the form of its expression, so that the same idea can be the basis of several works that are or may be different as regards their subjective creativity (Supreme Court, 28-11-2011, no. 25173; Court of Milan, 08-02-2011)”.

In light of the above, the order upheld the motion, enjoined the defendants from reproducing and marketing the first chapter of their book, with a fixed penalty of €400 for each subsequent violation and of €200 for each day of delay in the enforcement of the order, and ordered the seizure of the copies of the book “also against third parties that market them and that received them from the parties in these proceedings“.