On November 8, 2007 the ECJ has delivered its decision in case C‑20/05, a reference for a preliminary ruling under Article 234 EC from the Tribunale Civile e Penale di Forlì (Italy), in the criminal proceedings relating to Karl Josef Wilhelm Schwibbert. This case is not the usual IP case, actually it is not an IP case at all, but since it marginally deals with copyright law and, as it will be seen below, basically repeats the same teachings of the Bridge-Bainbridge case about the need for internal legislation to be compatible and not contrary to EU legislation, it deserves a quick look.
In Italy, according to Law No. 633/41 of 22 April 1941, it is mandatory to affix to affix the distinctive label ‘SIAE’ (an acronym for Società Italiana degli Autori ed Editori, -Italian Society of Authors and Publishers- an ad hoc public body, which has protection, mediation and certification responsibilities on copyright matters) to any medium containing protected works as an authentification tool and safeguard enabling legitimate products to be distinguished from pirated products. With another Law, No 121/87 of March 27, 1987 the requirement to affix the distinctive sign ‘SIAE’ was extended to other media containing intellectual works.
Mr. Schwibbert was found to own a certain number of CDs of reproductions of the works of the artists Giorgio De Chirico and Mario Schifano for sale in the company’s warehouses. Those CDs, which were imported from Germany on behalf of other companies with a view to being sold at cultural events, did not bear the ‘SIAE’ label. Now, in implementing Directive 92/100, the Italian legislature had introduced into the 633/41 Law a provision which imposes specific criminal penalties to any person who sells or rents video cassettes, music cassettes or any other medium containing phonograms or videograms of cinematographic or audiovisual works or sequences of moving images which do not bear the label SIAE.
Mr. Schwibbert defended with reference to an entirely different law, Directive 83/189 of March 28, 1983 which had introduced a procedure for the provision of information in the field of technical standards and regulations into Community law. According to this Directive the member states must ensure that the texts of the main provisions of national law which they adopt in the field governed by the Directive are communicated to the Commission. Since Italy had not notified the Commission of the SIAE requirement, Mr. Schwibbert claimed that the criminal provision which made reference to the SIAE label was incompatible with EU law and thus inapplicable to his situation. The ECJ had, therefore, to ascertain whether or not SIAE requirement fell under the Directive and if it did whether or not had been communicated to the Commission, since,in the event of non-compliance with that obligation, as per earlier ECJ’s decisions, the technical regulation remains unenforceable against individuals.
The ECJ found that the label ‘SIAE’, is intended to inform consumers and the national authorities that the reproductions are lawful and is affixed to the actual medium containing the intellectual work and thus to the product itself and does not, as the Società Italiana degli Autori ed Editori and the Italian Government held, relate solely to the intellectual work. Therefore, such a label constitutes a ‘technical specification’ within the meaning of Article 1(3) of Directive 98/34, since it falls within the requirements applicable to the products concerned as regards marking or labelling.
Since observance of that specification is compulsory de jure for marketing those products, the SIAE requirement constitutes a ‘technical regulation’ within the meaning of Article 1(11) of the Directive 98/34, and thus should have been immediately communicated to the Commission. Given that the Italian Government had not done so, the ECJ held that the obligation to affix the distinctive sign ‘SIAE’ to CDs of works of figurative art for the purposes of marketing them in the Member State concerned constitutes a technical regulation which cannot be invoked against an individual.
Now I’d be curious to see if and when the Italian Government notifies the Commission, since until then…. everyone may freely sell or rents video cassettes, music cassettes or any other medium included in the Law No 121/87 which do not bear the label SIAE.