Creativity and originality: databases criminal law protection requirements

The Court of Cassation ruled on the applicability of criminal sanctions under the Italian Copyright Law to online databases with judgment 6734/2019 of 13 February 2019.

In the case examined by the Court, a notorious auctions advertising website used and published on various websites, material available online such as photos, plans and details of properties subjected to enforcement procedures

In the case discussed, the Court of first instance of Lucca held that the criminal offence provided for by article 171 bis of Italian Copyright Law (l.d.a.) was applicable and it ordered, and confirmed, the preventive seizure of the website by obscuring it and blocking its accounts.

Article 171-bis of l.d.a punishes with up to 6 years of imprisonment and provides for a financial penalty starting from 2,582 euro against anyone who illegally reproduces the contents of a database in order to make a profit, as well as extracts and reuses substantial parts of the contents.

As the experts of copyright law are aware, the databases were inserted as an independent category of works only in 1999, and they are protected exclusively when they constitute an intellectual creation for the selection or arrangement of the materials (art.1, paragraph 2, l.d.a.). Moreover, the legal protection granted to these categories of works does not extend to their content itself, but to the method used to organize the data contained therein and does not affect the existing rights on them (art. 2, n. 9, l.d.a.).

As confirmed by the Italian and European case law on the matter (among the many, the judgment of the Court of Justice C-604/2010), only creative databases are protected by copyright law. Therefore, it’s only in favour of this specific category that the criminal protection referred to in art. 171 bis l.d.a. can be granted. Instead protection of non-creative database can only be granted by art 102 bis and the following of l.d.a.

This provisions confer the right to prohibit the extraction (i.e. transfer to other media) and re-use (i.e. making available to the public) of a substantial part of the contents of the database to any person who invested substantially in its creation.

The ratio of the rule is to grant protection to the ” creator”, which is the person who incurred substantial costs for the creation of the database, independently of its eligibility of protection. In this case, the Court stated “that right shall be independent of any copyright which may exist on the database […] and shall be completely independent of its creative or original character of the database”.

The sui generis protection granted to the “creator” aimed to deter any counterfeiting carried out through the extraction or re-use of the contents of the database must therefore be kept separate from the typical protection offered by copyright, including the criminal offences referred to in art. 171 and the following of the l.d.a.

The residual and more limited nature of protection offered to the ” creator ” also reflectes in its duration, limited to 15 years, compared to the 70 years after the death of the author provided by the l.d.a. in favor of the “author of the work”.

In the examined judgment, the Court ruled that the data published on the auctions website might have a sufficient level of originality such as to constitute an intellectual creation and could be regarded as databases within the meaning of the Copyright Law.

The Judges observed that this website collected and published “without any margin of autonomy, nor of processing the data forwarded by the Ministry of Justice”, the only entity authorized by law to process them.

Consequently, lacking the creativity and originality requirements of the database in the examined case, the Court of Cassation excluded the applicability of Article 171 bis. l.d.a. and revoked the website seizure ordered by the Court of first instance of Lucca.