Italian Supreme Court rules that technical regulation (drafted by an IP lawyer) may be *in principle* protected by copyright

Lively drafting session ...

Is an anticounterfeiting service regulation drafted by an IP lawyer protected by copyright?

This, in a nutshell, is the question at the heart of the dispute initially brought by said IP lawyer against the organizers of a trade fair in the Venice area, who had allegedly copied the regulation that he had drafted.

Last month, the Italian Supreme Court ruled (decision 10300/2020, Casucci v Unipol Assicurazioni S.p.A. and Others, also commented in Italian here) that, in principle, a technical work like that one at hand could be eligible for copyright protection, subject to it being original.

Background

At first instance, the IP lawyer prevailed over the defendants. 

However, in 2016, the Venice Court of Appeal ruled in favour of the defendants/appellants, holding that it was not apparent where the originality – and, thus, protectability - of said regulation would lie, since the regulation at hand was found to be a “standard legal text for technical-professional use”. According to the Court of Appeal, said regulation failed to display, on the side of its drafter, “any peculiar or creative elaboration of legal notions, sector-specific rules, his experiences". Rather, it did only display "practical and functional indications". [my own translation from Italian]

The IP lawyer filed one last appeal to the Italian Supreme Court. This, it is worth recalling, is not a court on the merits, and may only be seized for questions concerning the correct interpretation of the law.

The originality of a technical regulation

According to the IP lawyer, the Venice Court of Appeal had inter alia misinterpreted the Italian Copyright Act by excluding his regulation from copyright protection. According to the lawyer, the court had erroneously focused on the content and function of the regulation, rather than on its expressive form, thus reaching the conclusion that a work with a technical function could not be original.

The Supreme Court rejected this argument. 

First, it noted that the one in question would be an assessment that only a court on the merits could undertake. Secondly, and more interestingly, it recalled that the concept of originality means – as the Court of Justice of the European Union (CJEU) recently summarized in Cofemel at [30] [Katpost here] – “that the subject matter reflects the personality of its author, as an expression of his free and creative choices”.

In the present case, the Court of Appeal had not excluded tout court that a technical work could be protected by copyright. Instead, that court had ruled out that that particular regulation would be protected because of the way in which the legal concepts, sector-specific rules, the drafter’s own experiences had been contextualized, organized, and arranged.

In sum: the regulation did not display any peculiar and creative elaboration of such elements on the side of its author. To use the language of the CJEU, the work at issue did not show ‘any free and creative choices’ by its author, so that the work did not carry his ‘personal touch’. 

Although the Italian Supreme Court could not refer to last week’s Brompton Bicycle CJEU judgment [Katpost here] for obvious reasons, it did substantially adopt the same perspective. The present case is one in which the relevant subject matter, whilst dictated by ‘technical considerations’, failed to display that “qualcosa in più” (‘something more’, in the words of the Supreme Court) that goes beyond such considerations and reflects the ‘personality’ of its author.

... with the supervisor's
own finishing, personal touch

Comment

The judgment is interesting for a variety of reasons, besides the obvious one that it is relevant to all lawyers – including IP lawyers – drafting documents.

First, the Italian Supreme Court did not exclude that in principle a technical-professional regulation could be eligible for copyright protection, provided that it satisfies the required level of originality. In this sense, it may be worth drawing a comparison with two recent cases tackling copyright protection of somewhat similar types of works, one in Europe and the other in the US. 

In Europe, last March the Lithuanian Supreme Court held (MB “Novus Nexus” v UAB “SOLIDAS”, Case No e3K-3-77-687/2020, 26 March 2020) that draft company documentation adopted in compliance with the EU GDPR would be original and protectable, and would not fall within the exclusion concerning legal acts under Lithuanian law. 

Vice versa, on the other side of the Atlantic, last April the US Supreme Court elaborated upon the  longstanding government edicts doctrine, according to which “no one can own the law”, and ruled (Georgia v Public.Resource.Org.) that annotations of the Official Code of Georgia would be ineligible for copyright protection [Katpost here]. 

In all this, the Italian Supreme Court’s decision appears to follow an approach that is not too dissimilar from that of the Lithuanian court, though with a different outcome.

In so doing, and as a second point, the Italian Supreme Court substantially adopted the understanding of and approach to originality that is in line with that mandated under EU law. It is true that a technical work may be protected in principle. However, for protection to arise, it is necessary that the author performs free and creative choices that go beyond the choices dictated by technical considerations, rules and constraints, so that the resulting work carries their personal touch.

Finally, it is worth noting that the IP lawyer had further argued in his appeal to the Supreme Court that his regulation would be original also because there would be alternative regulations of the same topic, one produced by the defendants themselves. The Court declared this argument inadmissible.

However, a response to this point can be found in the Brompton Bicycle judgment. There, the CJEU – with specific regard to the existence of other possible shapes which allow the same technical result to be achieved - held (at [35]) that “even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, it is not decisive in assessing the factors which influenced the choice made by the creator.” (emphasis added) Mutatis mutandis, the same is true in the context of a legal document.