Author: Vieri Canepele

With the Legislative Decree no. 177/2021, Italy has finally implemented the principles provided for by the EU Directive no. 790/2019 (known as “Copyright Directive”).

Adding some new provisions to Law no. 633/1941 (i.e the Italian Copyright Law), this Decree provides for some long-awaited amendments, aimed at restoring greater equity in the long non-regulated market of leading digital platforms, which use creative contents, which has shown in the past some cases of manifest injustice to the detriment of the authors.

This measure will benefit press publishers as well, in consideration of the overall stricter mechanisms of platforms accountability which, with a mind to contrasting copyright infringement, must cooperate with the public authorities.

Among these changes, those set forth by the new articles 102 sexies and subsequent ones of Law no. 633/1941 are relevant.

The third subsection of article 102 sexies clarifies that, before granting public access to copyright-protected works, online content-sharing service providers must obtain prior authorization from IP right holders, also by entering into license agreements.

As a matter of fact, in the past authors were unlikely to receive adequate compensation since the use of their works, or part of them, in the digital universe could not been subject to adequate nor strict control (or regulation), so that leading digital platforms would inevitably reap the benefits.

Article 102 septies further makes it clear that, lacking the permission of the right holders, such providers and platforms are anyways accountable in the event of copyright infringement, unless they demonstrate they have undertaken utmost effort to obtain the holder’s consent. In addition, in case the right holder submitted a sufficiently detailed notification reporting infringement, they will have to ensure that such infringing content are expeditiously hidden and/or removed.

Moreover, platforms shall prove they have undertaken their best effort to prevent the same content from being uploaded also in the future, even through different references or web links.

On the other hand, article 102 decies provides for a “lighter” complaint notification burden on the side of the author, with no need for special formalities, as he/she must simply inform the service provider about the overall facts and reasons supporting their request for removal/block. At that stage, the recipient platform must process the notification and consider the complaint. Pending the decision, the platform shall disable the contents contested, submit the author or user’s complaint to human verification and, in any case, set up effective and expedited internal complaint processing mechanisms.

The decision made by the service provider or the platform can be challenged by bringing the case before the Italian Communications Authority (AGCOM), which is an independent administrative Body acting, in this case, as a ‘guarantor’.

This may be said to be the first scenario in which a public authority may intervene in disputes of this type, also for the purpose of striking a fair balance between the contrasting interests.

The new, significant role of the Italian Communications Authority stands out also with regards to the new article 43 bis of the Law no. 633/1941.

This provision addresses a further anomaly witnessed over the past years when newspapers and press publishers did not receive any compensation from digital news reviews (Google News being one of those), which reproduced part of the protected content without paying any fee.

In the attempt of assuring a greater equality, the new norm provides that, for online news publications to be used, service providers have to pay a fair compensation to the publishers of the publicationwhich must be assessed according to the guidelines set forth in a Regulation adopted by the Italian Communications Authority, which, among other factors, will consider the following: number of online consultations of the news review; press publisher’s reputation and importance on the market; number of journalists employed by the publisher; costs incurred for technological and infrastructure investments; turnover of both parties, etc..

For the purpose of protecting the press publisher against possible retaliation during the negotiations, subsection 9 of the new article 43-bis states that it is not lawful limiting the visibility of the contents at issue during the negotiations. This unjustified limitation of the content constitutes would constitute breach of good faith principles.

Furthermore, the provision envisages that an agreement must be reached within 30 days upon receipt of the request for commencement of the negotiations. Should this not be the case, either party may address the Communications Authority, which will have a supportive and facilitation role, in the first instance, or to indicate, on its own initiative and discretion,the amount of the fair compensation due in case an agreement is not reached voluntarily.

The service provider is in any event required to cooperate with the public authority and to provide all information suitable for assessing the amount of the fair compensation due, as some information on the market may be in its possession solely.

Subsection 13 of the new article 43-bis marks an interesting change as it also regulates the relationship between press publishers and authors of news articles, by specifying that the former shall pay to the latter between 2 and 5% of the fair compensation determined based on the first part of the provision.

The new publishers right related to the digital use of their works, however, is to expire two yearsafter publication of the news, calculated from January 1of the year after publication.

To conclude, after approximately two decades, a ‘showdown’ between leading digital platforms and creative authors (holders of rights) seems to finally take place, with the latters being entitled to a fair compensation after years when the former alone had reaped the benefits.

However, the process has been neither swift nor simple since rebalancing these relations has required, among other guarantees, the intervention of public authorities (here AGCOM) to play an extremely delicate role as facilitator and possible ‘arbitrator’ of relations which for many years had been left to the private initiative only.

In terms of the general fight against counterfeiting, the impression is that the strict obligations now imposed onto platforms and service providers will be further developed following the EU’s approval of the Digital Services Act, which should come soon.