By ruling no. 14697 of October 16th 2023, the Court of Rome clarified the requirements for the protection of a work as a database.
The case
A company and an expert chemist – in the course of a collaboration – started an educational project relating to cosmetics and detergents. In particular, on the company’s website, users could discuss on a forum, where the expert had a mediator role and answered their questions. The forum gained a great success and it was decided to create the work called “Biodizionario”, a summary table– created by the expert chemist – on the characteristics of over 5,000 substances contained in cosmetics together with a collection of the answers given during the discussions.
During the development of the Biodizionario, the partnership between the parties ended and each one continued to work autonomously on the work, thinking to be its exclusive owner. Thus, when the company published its own edition of the Biodizionario, the expert chemist sued the company asking for, among other, the protection provided for databases in art. 1 (I)(9) and 102 of art. no. 633/1941 Italian Copyright Law, and requesting that the publication, promotion and sale of the work be inhibited.
The company defended itself claiming that the Biodizionario had undergone many transformations in time, with expansion and insights and that, therefore, it was a collective work.
In addition, it claimed that the project was born inside the company of which the expert chemist was a consultant, therefore no right would have been due to him, let alone as author of a database given that the information table of the plaintiff could not constitute a database.
The protection of a database
The Court recalled that a database is intended as:
“the organized and structured complex of cognitive data, even if secreted or protected, that exceeds the mnemonic capacity and the experience of the average single individual and that thus represents a database, which by enriching the knowledge of the competitor, is suitable to give a competitive advantage that transcends the capacity and experience of the acquired worker”.
The Italian Copyright Law provides a double protection to databases: on the one hand it is protected as an ingenuity work pursuant to title I of the Copyright Law, if, by choice or by the disposition of the material, constitutes an intellectual creation of the author; on the other hand, it is protected as a “simple” database if, even if lacking of creativity, it is anyway classifiable as collection of works, data or other independent elements, systematically or methodically disposed and individually accessible through electronic means or in other ways.
In this second case, the creator of the database – intended as the one who makes relevant investments on its creation – is recognized with the right to prevent others from extracting or reusing, totally or partially, the database for the 15 years following its completion or its publication, if earlier.
The decision of the Court
After retracing the requirements for the protection of a work as database, the Court accepted the defenses of the company sued.
The court ascertained that the Biodizionario was the fruit of the collaboration between the developers of the website of the defendant and the expert chemist, who was regularly compensated for the consulting provided. Therefore, according to the Court, the Biodizionario appears as a collective work which organization, from a technical point of view, was decided by the company while the expert chemist took part of its creation and direction.
Being a collective work, the Court therefore stated that also art. 38 of art no. 633/1941 Italian Copyright Law could be apply to the work. According to this law the editor is entitled to the right to use, that is the defendant company as owner of the internet website and domain name through which the diffusion of the Biodizionario occurred.
Notwithstanding what mentioned above and ad adundantiam, the Court also excluded that the table created by the expert was qualifiable as database, being a list of substances in use in the field of cosmetics disposed in alphabetical order, lacking of creative character and a level of comprehensiveness sufficient to qualify it both as ingenuity work and simple database.
Ilaria Feriti