IS THERE CRIMINAL PROTECTION FOR SUI GENERIS DATABASES? THE RECENT OPINION OF THE ITALIAN SUPREME COURT.
With judgment no. 6734, published on February 12, 2019, the Italian Supreme Criminal Court ruled on the requirements for criminal protection for databases protected by sui generis law.
In the case examined by the Italian Supreme Court, the data contained in a well-known site concerning judicial auctions for real estate had been extracted and reused by a different operator, active in offering to the public of consumers services and consultancy for the purchase of real estate in judicial auctions, through publication on various websites. The material consisted of photographs, floor plans and files, the latter created by the judicial auctions site, showing the main characteristics of the properties subject to enforcement proceedings.
The application of Articles 171-bis and 102-bis of Law No. 633/1941 by the Italian Supreme Court
The Court of Lucca, before which the case was appealed, held that the conduct described above shall be considered punishable under Article 171-bis of Law no. 633/1941.
It should be noted that this provision punishes conduct committed in violation of Articles 64-quinquies and 64-sexies and Articles 102-bis and 102-ter of Law no. 633/1941. Article 64-quinquies provides for a series of exclusive rights of the author of the database, if it qualifies as an intellectual work, and in particular the rights of reproduction, translation or adaptation, distribution to the public, presentation, demonstration or communication to the public, transmission by any means or in any form. Otherwise, Articles 102-bis and 102-ter grant to the database maker- even if referred to a non-creative database – the right to prohibit the extraction or reuse of all or of a substantial part of the database, if the maker has made a significant investment in the constitution of the database, of a qualitative or quantitative nature.
In the present case, the Court before which the appeal has been filed, held that the conduct of republishing the data concerning judicial auctions was punishable under Article 171-bis of Law No 633/1941, since it was suitable for integrating the case of extraction or reuse, in order to make a profit, of all or of substantial parts of the contents of a database. Therefore, the Court of Lucca had confirmed the preventive seizure of the web site containing the data extracted and reused without authorisation, by means of the shoutdown of the web site and by blocking the accounts referable to the owner of the web site.
The basis of the crime in dispute had therefore been based on the protectability of the database made up of the data collected at the judicial offices and organized exclusively, through the activity carried out by the party offended by the crime. The circumstance that the activity in question was complex, and therefore required a significant investment, had indeed ensured that to the offended party was attributed the status of creator of a database, in accordance with previous decisions (1). According to the Court of Lucca, the extraction of the data contained in the information sheets produced by the offended party would also have compromised the efficiency of the advertising assignment commissioned by the public body, reducing the number and quality of access to the official website, given the unauthorised access and therefore liable to cause unjustified prejudice.
The opinion of the Court of Cassation
The defendant contested the qualification of the offended party as a database maker. According to the appeal, the web site of the offended party is merely a form of primary and obligatory advertising under Article 490 of the Italian Code of Civil Procedure. In particular, it was pointed out that the offended party is not the author of the public data published on its website, but only the person in charge of the publication of data already present on the Portal of the Ministry of Justice (for example, the order of the judge, the estimate report and the notice of sale of the professional delegated) and “in any case without any right of exclusivity”. Therefore, there is a lack of legitimacy to invoke the protection provided by copyright law.
The requirement of creativity of the work according to the Supreme Court
The Supreme Court of Cassation held that the claim brought by the defendand was grounded, stating that the archives (electronic and paper) cannot be qualified as creative works, if a sufficient degree of creativity cannot be found in them, to be identified in the activities of selection and/or disposition of data. According to the Court, there are two different notions of creativity, “an objective one tending to consider that a work is creative which is objectively characterised by original and innovative elements such as to distinguish it from any other pre-existing work, and a subjective one according to which a work which has the personal imprint of its author should be considered creative”. For the Supreme Court, in line with its orientation (2) and in accordance with supranational case-law (3), the subjective notion must be considered preferable, since “the object of protection is not necessarily the idea in itself, which can be the basis of several works of genius, but the particular form it takes regardless of its novelty and the intrinsic value of its content”. On the basis of this, the Supreme Court ruled out the possibility that the database of the offended party was provided with the degree of creativity necessary to qualify it as a work of the intellect, since there was no creative activity traceable in the operation of selection and/or disposition of data.
As already anticipated, the non-creative databases can benefit, in civil matters, the protection – defined by the Court itself as a “parallel track of protection” with respect to the traditional one, concerning the database – provided for by Articles 102-bis and following of Law No. 633 of 1941. The rationale of the provision is to offer protection to the “maker”, who has sustained significant costs for the constitution of the database, independently from the protectability of the latter from the point of view of copyright. In the present case, the Court stated that “that right is independent from any copyright in the database […] and is totally independent of its creative or original character”.
According to the Court, however, the identification of the offended party as the maker of a database, and therefore the beneficiary of the sui generis protection granted by art. 102 bis, “is in no way equivalent to grant to the maker the protection typical of copyright law, including both the instruments granted in civil law in relation to moral rights and economic use, and the criminal cases provided for in criminal law by art. 171…”. In the opinion of the Court of Cassation, therefore, creativity would be an indispensable requisite for the recognition of criminal protection for all intellectual works and therefore not only for creative databases, but also for non-creative ones, with the consequence that the maker of a sui generis database could not benefit from the criminal protection of copyright law.
From the interpretation adopted by the Supreme Court on the requirement of creativity in the field of databases, there is a clear separation between the sui generis protection provided to the maker and the typical protection afforded by copyright to creative databases. Therefore, the protection including the criminal cases referred to in Articles 171 and following of Law No. 633/1941 is not, according to the Supreme Court, likely to be applied to databases which lack the requirement of creativity. This conclusion, however, appears to be in contrast with the letter of Article 171-bis of Law No. 633/1941. In fact, this provision regulates in criminal proceedings both copyright violations (and therefore creative databases) and violations of the sui generis right, as can be inferred from the simple reading of Article 171-bis, paragraph 2. The rule, in fact, when defining the material object of the crime, operets a reference as it punishes both the conduct committed in violation of the provisions of Articles 64-quinquies and 64-sexies, and the conduct committed in violation of Articles 102-bis and 102-ter.
(1): In particular, Trib. Roma, judgment no. 48121, 19 September 2013, in Foro Italiano 2014, 14, 11, 1, 3340, where it was held that: “In the present case, the elements acquired must be considered to be integrated with the case in point, which constitutes the related law pursuant to Article 102 bis of the Italian Civil Code, and indeed the applicant company, as a party operating in the field of advertising services for judicial auctions, carries out a complex activity, divided into several stages of processing made necessary also by the obligation to comply with the criteria and standards established by primary and secondary regulatory sources. […]. The complexity of the activity described above undoubtedly requires the preparation of adequate instrumental equipment and qualified personnel and therefore requires significant investments in terms of time, workforce and financial resources”;
(2): See Cass. civ. sez. I, 11.08.2004 n. 15496 in database online Pluris;
(3): See European Court of Justice, 1.3.2012, caseC-604/10 in AIDA 2012, 1464.
Valentina Cerrigone and Alessandro Bura