Stamping out non-infringers

Today the European Court of Justice gave its ruling on a question referred to it by the Tribunale civile e penale di Forlì (Italy): this is Case C‑20/05, Karl Josef Wilhelm Schwibbert. This case is all about SIAE signs. Ever since 1941 Italy has made it a mandatory requirement to affix a distinctive sign to any medium containing protected works, thus enabling legitimate products to be distinguished from pirated products.

Right: Andromache, by Giorgio De Chirico - one of the artists whose work lies at the heart of this ECJ reference

The Società Italiana degli Autori ed Editori (Italian Society of Authors and Publishers, or SIAE), an ad hoc public body, is responsible for these signs. By Italian law,

"1. 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 mark of the Italian Society of Authors and Publishers (SIAE) in accordance with this law and with the implementing regulation shall be punished with a term of imprisonment of between three months and three years and with a fine of between ITL 500 000 and ITL 6 000 000".

In February 2000 the Public Prosecutor investigated Schwibbert (the legal representative of KJWS Srl) and confirmed that, he held some CDs of reproductions of the works of the artists Giorgio De Chirico and Mario Schifano for sale in the company’s warehouses. Those CDs, imported from Germany with a view to being sold at cultural events, did not bear the distinctive ‘SIAE’ sign. A record of the seizure of those CDs was drawn up in accordance with the Code of Criminal Procedure, in which it was stated that, after initial examination, the goods appeared to be counterfeit.

When the prosecution stated its case, it was not alleged that Schwibbert reproduced the works unlawfully, since he had the necessary authorisations, but only that the CDs did not bear the ‘SIAE’ sign. Not without some difficulty the court referred the following question to the ECJ: "Are the national provisions concerning the affixing of the SIAE marking compatible with Article 3 EC, Articles 23 EC to 27 EC, Articles 1, 8, 10 and 11 of Directive 98/34 and Directives 92/100 and 2001/29?".

The Court ruled:

"Directive 98/34 ... laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on Information Society services, as amended by Directive 98/48..., must be interpreted as meaning that national provisions such as those at issue in the main proceedings – in so far as such provisions introduced, after the implementation of Council Directive 83/189 ... laying down a procedure for the provision of information in the field of technical standards and regulations, the obligation to affix the distinctive sign ‘SIAE’ to compact discs of works of figurative art for the purposes of marketing them in the Member State concerned – constitute a technical regulation which, if not notified to the Commission, cannot be invoked against an individual".

The IPKat thinks this must be right -- and he finds it sad that, at a time when Europe is being overrun by fakes, infringements and counterfeits, the Italians took a break from their war on real criminals to sue someone who appears to have been anything but an infringer. Merpel adds, the time taken between the initial referral and the ECJ's preliminary ruling was just one month short of three years. Is this a sign of serious slippage in the ECJ's ability to process references from national courts, or are there specific reasons for the delay?