There is little doubt that one of the most (if not the most) significant exceptions in copyright law is the one relating to quotation, criticism or review.
Despite it being admittedly a ‘right to quote’ from the perspective of Article 10(1) of the Berne Convention, under EU law quotation is one of the traditionally optional exceptions found inter alia in Article 5 of the InfoSoc Directive, specifically Article 5(3)(d). This is a provision which, according to the CJEU (Painer), has the same material scope of its Berne counterpart.
While not all Member States took advantage of the possibility under Article 5(3)(d) of the InfoSoc Directive, with the transposition of Article 17 of the DSM Directive into national laws, all Member States shall be required to introduce exceptions allowing quotation, criticism and review, at least insofar as Article 17-related activities are concerned. All this is testimony to the importance of this copyright exception.
Also considering the overarching limits of the three-step test (Article 5(5) of the InfoSoc Directive), how far can an unauthorized quotation, criticism, or review go?
According to the Italian Supreme Court, not as far as allowing one to reproduce a work in its entirety.
This, in a nutshell, is the conclusion that this Court reached in a recent decision (Cassazione civile, Sez I, No 4038/2022) concerning the unauthorized reproduction of thousands (24,000) of paintings of a well-known Italian artist in the context of an archiving project aimed at producing a catalogue of records held by a foundation initially established with the goal of maintaining and protecting the works of the now deceased artist.
Following the 2003 departure of the late artist’s surviving partner from the foundation and the establishment of a new entity entrusted with the ownership and management of the copyrights in the artist’s works, such new entity sued the already mentioned foundation for copyright infringement due to the release, in 2008, of a 6-volume book carrying the results of the project referred to above.
In 2014, the Milan Court of First Instance dismissed the action in its entirety.
Further to an appeal, in 2017 the Court of Appeal of Milan partly sided with the artist’s estate, but found that the unauthorized reproduction of the artist’s works in the context of the project and the book would not be unlawful. Among other things, that court (surprisingly) reasoned that no infringement would have occurred, since the number of works reproduced were not the totality of the artist’s own production and in any case such reproductions would be incompatible with the artistic enjoyment of the works (translated: the reproduction of images of artworks in a book would not be the same thing as actually viewing the artworks, eg, in a gallery or museum ... 😵).
A final appeal to the Italian Supreme Court followed. It is important to recall that such appeals only concern the correct interpretation of legislative provisions. In this specific instance, the key question for the Corte di Cassazione related to the interpretation of Article 70 of the Italian Copyright Act, specifically its paragraph 1 (English translation courtesy of WIPO):
The abridgment, quotation or reproduction of fragments or parts of a work and their communication to the public for the purpose of criticism or discussion, shall be permitted within the limits justified for such purposes, provided such acts do not conflict with the commercial exploitation of the work; if they are made for teaching or research, the use must have the sole purpose of illustration, and non-commercial purposes.
The Supreme Court began by noting that, in accordance with inter alia Infopaq (), exceptions need to be interpreted strictly since they are a derogation from the general principle that an author has the exclusive right to exploit their work in any form. It then immediately (and correctly) rejected both arguments of the Court of Appeal referred to above, finding them devoid of any legal merit.
In accordance with Article 10(1) of the Berne Convention and the requirement that the extent of the reproduction “does not exceed that justified by the purpose” of the quotation, the abridgment, quotation or reproduction of fragments or parts of a work must be instrumental to the purpose of criticism or discussion. This, in turn, requires that the reproduction at issue does not exceed such a purpose.
According to the Supreme Court, the Court of Appeal failed to conduct any assessment of whether the reproduction of works in their entirety would be justified by the alleged research purpose.
The Supreme Court provided the following interpretative guidance for the Court of Appeal to apply now that the case is back there (my own translation from Italian):
The reproduction of an artwork, if done of such a work in its entirety instead of it being limited to details thereof, does not qualify for the application of any [copyright] exception; to invoke successfully a copyright exception, a reproduction must be instrumental to purposes of criticism or review, or purposes of illustration for teaching [or] scientific research and must not compete with the economic exploitation of a work, which is reserved to its rightholder; such a right encompasses both the making of physical copies that are identical to the original, but also any other type of reproduction that can enter the market for reproductions, including small-scale photographic reproductions.
Read in combination with Article 5(5), Article 5(3)(d) of the InfoSoc Directive, from which Article 70 of the Italian Copyright Act is derived in its current wording, permits quotations for purposes such as (but not limited to) criticism or review insofar as a number of cumulative conditions are satisfied.
First, the quotation must relate to a work or other subject matter which has already been lawfully made available to the public. Secondly, unless this turns out to be impossible, the source (including the author’s name) is to be indicated. Thirdly, the use at hand must be in accordance with fair practice and to the extent required by the specific purpose.
the essential characteristics of a quotation are the use, by a user other than the copyright holder, of a work or, more generally, of an extract from a work for the purposes of illustrating an assertion, of defending an opinion or of allowing an intellectual comparison between that work and the assertions of that user, since the user of a protected work wishing to rely on the quotation exception must therefore have the intention of entering into ‘dialogue’ with that work.
Despite that Article 5(3)(d) does not expressly mandate that the quotation be necessarily accompanied by comment or criticism, that provision intends “to preclude the exclusive right of reproduction conferred on authors from preventing the publication, by means of quotation accompanied by comments or criticism, of extracts from a work already available to the public” (Painer, ).
From all the above it follows that the unauthorized reproduction of a protected work may qualify for the application of the quotation exception provided that the use at hand is for the purposes of illustrating an assertion, of defending an opinion or of allowing an intellectual comparison between that work and the assertions of that user. In other words, the user must have the intention of entering into a ‘dialogue’ with the earlier work. This is a crucial point that the Italian Supreme Court correctly incorporated in its reasoning.
But does the law prohibit the reproduction of a work as a whole in each and every case? The answer is no.
There may be situations in which, indeed, a work needs to be reproduced in its entirety to establish the 'dialogue' referred to by the CJEU. As such, the holding of the Supreme Court that no full reproduction can ever be allowed is too trenchant and contrary to the required case-by-case assessment, as well as the principle – increasingly visible in CJEU case law itself – according to which exceptions are not just to be interpreted strictly, but are also to be interpreted in such a way that their effectiveness is guaranteed.
In conclusion: what matters is not how much has been reproduced, but rather whether the reproduction at hand is justified by the purpose of criticizing or reviewing (entering into a 'dialogue' with) the earlier work that has been reproduced.
[Originally published on The IPKat on 13 March 2022]