THE POINT ON THE ITALIAN LINK TAX.

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The last few days have been extremely turbulent for web companies with the government always looking for new measures to tax the network.

The proposal to reform the Copyright Directive, one of the most discussed European Commission regulations, does not appear to be in consensus during the discussions in the European Parliament. In particular the new Directive tries to introduce rules (art. 11) in favor of the publishers (the so called "Google Tax") and the requirement (art. 13) for intermediaries to set up filters for content that users enter in order to delete those that are in violation of copyright. The mechanism attempts to monetize one of the genetic activity of the web, hypertext but the fear is that it can occur  what as already happened in Spain and Germany, where publishers have the right to get paid by Google News. The result was a traffic collapse of publishers' sites. Recently, however, the apparent negative consequences of adopting the link tax in Spain appear to have not dissuaded the Italian government from taking such an initiative. Apparently the government is studying a rule that oblige news aggregators like Google News to reach a commercial deal with publishers. In the event of this agreement failing, a mediation process may arise before the AgCom or the dedicated section of the Council Presidency before leading to a judicial proceeding.

EVEN A WINE GUIDE IS A PROTECTED CREATIVE WORK.

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In a recent decision, the Court of Rome ruled on an unfair competition case between two wines guides "Bibenda" (published by Bibenda Editore) and "Vitae" owned by AIS (the Italian Sommelier Association). The Court found relevant similitudes both relating to the physical format of the Guide and the descriptions of companies and wine production data, and "strong elements of consistency in the sequence of arguments".

Immediately after the interruption of a collaboration between the two parties, AIS  began to distribute a new Wine Guide to its members, called "Vitae", but it appeared to the authors of "Bibenda" too similar, under a multiplicity of points of view, to the one created by them according to well-defined editorial criteria. Criteria which, according to the judgment, are sufficiently similar to those adopted by Ais for "Vitae". For this reason the Court upheld Bibenda Editore's requests and stopped the publication of future editions of "Vitae". Ais was also sentenced to pay damages (still to be quantified) in favor of Bibenda Editore.

According to the judgment of the Court "an analysis of the guide published by the defendant (AIS) shows significant similarities with the Bibenda’s Guide in relation to the volume size, the material used for the cover, the binding and the fonts used and the format.

Significant similarities can be found in company descriptive descriptions, in both guides, with the same sequence and within an identical structural context and according to a common graphical presentation, data relating to company name, address, internet site, mail address, year of foundation, property, bottles produced, vineyards, direct sales, company visits, introductory part, name wine, typology, grapes, alcohol content, price, bottles produced, tasting, winemaking and matching.

It is also common to evaluate products with symbols placed on the right side of the pages.

As already noted, the two guides have strong similar elements in the sequence of arguments (...) ". On the basis of these arguments, the Court of First Instance upheld Bibenda’s claim and prevented the Italian Sommelier Association from publishing Vitae's guidebook unless significant adjustments would be made to substantially differentiate it from Bibenda's guide.

The Point on the Barnier Directive.

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More and more discussions arise around the receipt of the Barnier Directive (EU 2014/26) harmonizing copyright management at a European level so as to ensure more efficient and transparent ownership by copyright collecting societies, by introducing a greater level of liberalization. As many may know, copyright collection in the EU is still governed locally
Article 5 of the Barnier Directive provides that “right holders have the right to authorize a collective management body of their choice to manage rights, categories of rights or types of works and other protected materials of their choice, for the territories of their choice, irrespective of the Member State of nationality, residence and establishment of the collective management body or the rightholder”.
The Barnier Directive addresses three major issues.
First, the collective management of copyright and the remuneration of each artist for the reproduction of his works. The Directive has a major significant impact on music and in Italy where copyright is still collected by Siae, the Italian Collecting Society of Authors and publishers under a monopoly regime.
The second area of intervention of the Directive is the management of neighbouring rights. Unlike what is still happening with Siae, the market of neighbouring rights has been already liberalized and today the former IMAIE monopoly (Mutualist Institute Performing Performers) is competing with eight other collecting companies
The third and final aspect of the Directive is the grant of multilateral licenses for rights to music reproduced online: for example, on youtube or spotify.
In June 2016, AGCOM also wrote to Parliament and the Government, pointing out that "the value and the ratio of the European regulatory system are severely compromised by the presence, within the national system, of an isolated provision in the landscape of the Member States, which attributes to a single subject (Siae) the reserve for the brokerage of copyright. "
Something, however, seems to be changing: recently, the Minister of Culture Franceschini stated that “the government has been prepared to propose to the Parliament a standard that allows other collective management bodies to operate in Italy”. In fact, this statement seems partial and, according to many, only avoids further infringement proceedings for our country, as it does not provide for a genuine liberalization but a small opening of the market to only other non-profit-making collective management bodies, or equivalent foreign companies. 
Italy has implemented the Barnier Directive only in March 2017, thus reserving SIAE the right to an exclusivity provided by article 180 of the copyright law of 1941.
This would mean in principle that private independent management companies such as Soundreef which now operate through a UK subsidiary to evade the Italian monopoly, would be excluded. Siae already has representation agreements with European counterparts, by virtue of which each collecting company manages copyright in its own country on behalf of others. The debate therefore seems to continue.
 

Wild Selfie

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A US court has recently put an end to the legal battle over Naruto’s selfie, the Indonesian macaque which became famous for his selfie. The Court's ruling was in favour of Mr. Slater, the owner of the camera, and rejected the claims of PETA, a US non-profit organization, which supported for the monkey’s rights.

The bizarre case in 2011, when David Slater, a professional photographer, was travelling in the Indonesian wild forest to capture with his camera some of the most spectacular animal species. Slater bumped into a group of monkeys and left his camera unattended for a few moments when a photogenic macaque, Naruto, grabbed his camera and began to shoot hundreds of selfies. Some of these, as well as those of the best instagrammer, were moved and blurred, others, instead, were almost perfect. The photographer published one of the photos on his blog and immediately the image became viral. Based on a literal interpretation of American copyright law, Wikimedia, the American-owner company of the Wikipedia domain, decided to include the image in its collection of Wikimedia Commons content, a collection of over 20,000 public images and videos that can be used by the community as they are unaffected by copyrights. According to American law, the rights upon a photo are owned by its author, which is the person who took the photo and, in this case, it was a monkey. Salter opposed the free disclosure of the image he considered to be his own and he gave rise to a legal dispute over intellectual property: if a monkey takes a photo, whose is it?

Over the years, the issue has become increasingly complicated and increasingly absurd: PETA, already known for its provocative battles, filed a lawsuit in the name of Naruto, Slater and also Blurb, a publishing house that published the Wildlife Personalities book, containing many animal pictures, including Naruto’s one.
Both Slater and Blurb presented a "motion for dismissal": a document used in the US legal system in order to explaining that the case against someone is wrong and based on non-existent reason. In this document, Slater wrote, among other things, that "the only relevant fact in this case is that the plaintiff is a monkey that sue for copyright infringement." According to Salter, PETA can not prove that the famous selfie was shot by Naruto and not by another monkey.
And in fact, the judges agreed with him, ruling that he has, and the monkeys cannot own any copyright over a selfie.
Despite this, PETA and David Slater have reach an agreement: the photographer will pay 25% of the revenue generated by his copyright to the non-profit organization.
 

The 1935 Agreement between Ferrari and Tazio Nuvolari.

A 1935 agreement between Tazio Nuvolari and Alfa Romeo - through the Scuderia Ferrari - was recently found.

The most striking thing concerning the agreement is the extreme concision of the agreement, perhaps one of the most important sports law agreements of the 30's is a one page letter through which Nuvolari makes his services available to Scuderia Ferrari (which the time it ran and prepared Alfa Romeo cars).
   
It is estimated that Nuvolari could gain between salary, bonuses and prizes, almost half a million lire a year. A very high figure for the era, far more than mathematics makes sense since a middle class worker usually earned one thousand lire per month. 

Another curiosity is the value of injury and life insurance, equal to almost 10% of the value of the wound.

The other interesting thing remains the breakdown of prizes. At a time when media rights did not exist, one of the main sources of revenue for a racing équipe were prizes awarded by the organizers. The deal reveals a fairly favorable breakdown for Nuvolari: over half of the prizes went to the driver.

The Peril of Using your name as a Trademark.

About a year after Thaddeus O’Neil launched a menswear line inspired by the surf culture he grew around on Eastern Long Island, the independent designer received a cease-and-desist letter from a law firm representing Sisco Textiles owner of the famous “O’Neill” sports apparel trademark.

This was the beginning of legal dispute between the surfwear brand founded in 1952, O’Neill, and the independent New York designer who is gaining more and more popularity after winning several fashion contests.

In their dispute with the New York fashion designer, O’Neill argues that the brand has been using its name since the 1950s, and that Thaddeus O’Neil’s marks are “confusingly similar”. According to O’Neill this could of course lead consumers to be deceived and think that the companies are related.

Trademark disputes involving patronymics (i.e. the trademark equivalent to the founder’s name) are quite common in fashion. In 2012, Tod’s — which was operating the Roger Vivier label under a license at the time — took Los Angeles handbag designer Clare Vivier to court for trademark infringement. She eventually settled and re-branded as Clare V. In 2016, Elio Fiorucci lost his case in Italy against the new owners of the brand he founded in the trademark case that involved the use of the “Love Therapy by Elio Fiorucci” trademark.

But what is the position of Italian Courts when use of patronymics could be confusing with other trademarks? In the end of the 80’s the Supreme Court stated that the use of a patronymic as a trademark is a legitimate use of a sign conflicting with a previous registered trademark so long that the previous trademark does not become a famous mark.

This principle has been reaffirmed by the Supreme Court in 2016 in the cited Fiorucci vs. Elio Fiorucci case.

Our tip? Carry out a preliminary trademark search before launching your brand bearing your name.

The EUCJ's Ruling on Pirate Bay.

With the recent judgment C-527/15, the European Court of Justice has stated the copyright infringement by "The Pirate Bay", a file sharing web portal. The ECJ affirms that Copyright is violated even if files are uploaded by third-parties, (i.e. the users), as "Pirate Bay’s administrators can not ignore the fact that their platform gives access to published works without the permission of the rights holders."

The arguments used by the Court to censure Pirate Bay seems quite innovatie with respect to the philosophy that has been the base of these operators’ business so far.

Firstly, the Court of Justice ruled that sharing platform managers establish, through their activities, a form of public communication which, under Article 3 of Directive 2001/29 / EC, requires the right holder’s consent for the use of the work in question. In fact, administrators, by publishing content uploaded by users, play an "crucial role" in making them available, such as indexing and managing the various files, categorizing works and deleting old and obsolete files. Lastly, in its observations the EU Court has pointed out that sharing website are liable also because of the considerable advertising revenue generated by the publication of these files.

It is clear that this ruling regards the whole online sharing platform system and increases the responsibility for illegal content uploaded by users.

According to some experts, however, the ruling will have an impact not so much in the world of piracy but rather in the legal sharing video website and on the social network. In fact, having held that works’ provision on a sharing platform constitutes a public communication has more effect on free sharing platforms, such as Youtube, which are part of the so-called User Generated Content (UGC) and that use the streaming rather than actual piracy. Therefore the risk is that UGC sites are too easily assimilated to the category of outdated download torrent website like, indeed, Pirate Bay.

The fact that manager is responsible for actively managing and filtering certain content, seems to prefigure a direct and general responsibility for third parties uploads.

The European debate will be heavily influenced by this decision, because in these days the European Parliament is working on a reformation of copyrights and the relative online platforms’ responsibility.

Indirect and Subliminal Advertisements on Social Media.

The advertising market is undergoing a major change and indirect - subliminal advertisements promoted through online and social networks are becoming more and more common.

Indirect advertising is a clear and explicit message that appears on unusual spaces, but not mentioned as such. Subliminal advertising, instead, isn’t evident. This practice is banned by Italian law but only with respect to TV advertising and although film and television are a fertile ground for this kind of promotion, new challenges have emerged above all on social networks. Indeed, as the world wide web represents a new opportunity to express our thoughts and interests and tastes and a new way of learning and sharing information and content, companies have also begun to use them in an explicit or tacit manner.
On the one hand, we have real advertising spots and sponsorships, although not fully controlled: Facebook and Instagram, for example, check that ads don’t have an illegal content or prohibited by rules but they don’t control the accuracy of the information communicated, nor their congruity with the regulation, since there is no discipline code to be respected.

On the other hand we notice serious “product placement” proliferation within the most clicked profiles.

In this regard, the British Competition and Markets Authority stood up against disguised advertising, which is not recognizable in photos and videos posted on social media. Recently also the American Federal Trade Commission, for the first time addressed the issue, asking “web influencers” to emphasize that hidden  recognizable through hashtags or comments.

However, there are no specific rules governing indirect and subliminal and the terms of use of social media like Instagram, provide and restriction. The question arises as to whether consumers, who shall not be subject to untruthful and deceptive ads, have also the right to distinguish the advertising contents from a “lifestyle tips”.

Recently, the Italian National Consumer Union has questioned the Competition and Market Authority (AGCM) to ask for the legitimacy of indirect and subliminal advertising on social networks. The legal basis for this controversy is the article 22 of the Consumer Code which asserts that the commercial intent must be explicitly stated if it is not obvious from the context or if it is capable of misleading the consumer.

The AGCM should soon clarify the issue and provide adequate information both on the relationships between producer and influencer, and on the obligation to declare the advertising purpose of the posts.

Meanwhile, Instagram has launched a new tag, "Paid Partnership with", so that users can include it in their stories and post. Alternatively, many bloggers, including the most famous Chiara Ferragni, have started using some "claim-hashtags" such as #ad, #advertisement, or #advertising to highlight the commercial purpose of their photo, protecting the consumer.
 

Emoticons and Precontract Liability.

Emoticons or emoji, also known as smileys, are stylized reproductions of facial expressions. The word "emoticon" is a new made-up expression of the English terms "emotion" and "icon", and it is used to designate a small image reproducing our most common feelings. By now, however, emoticons, originally made of typical smile, laughs, tears, and scowl, has expanded and includes symbols and images of various kinds. These images, mainly used on the internet and in text messages to add extra-verbal components to written communications, have become so common that they are considered a new digital language.

Recently in Israel a curious fact occurred: a landlord successfully sued a couple of guy who misled him by writing an emoji message. More precisely, the landlord, Yaniv Dahan, published an ad for renting his house on an real estate webpage and a couple responded, according to the court, making a statement of intent to the conclusion of a contract. Indeed, after the young couple responded to the ad, the landlord deleted his ad but the couple stopped responding to him showing no more interest in renting the apartment. 

The matter whether there was a sort of pre-contract liability was then brought in front of the judges who considered, among the evidence used against the defendants, the text written in response to the ad, containing  images depicting various expressions and objects, from the "v" gesture of the fingers to a bottle of champagne.

The judge ruled in favour of Mr. Dahan, ordering the couple to pay about $ 2,000 as compensation for pre-contract liability. In particular, the court motivated its decision by explaining how the emoji used by the couple, including the bottle and the ballerina, indicated optimism and positivity, and hence the intention to enter into a contract. Although this message was not a binding contract between the parties, according to the court the message they wrote was enough to create a legitimate expectations that a further agreement would be concluded.

Certainly, and this is a very common experience, emoticons are intuitive and perceptive symbols, as they express a feeling or reference that would be difficult to translate in words, and that, above all, it would take longer time to be written extensively with the letters.

However, there is the question of whether the cute gifs as well as simplify and clear ambiguities by clarifying a concept have not replaced a good part of feelings, or rather the will to express them, making virtual communication lighter and more unconscious and therefore less representative of the actual individual’s will.

So far, this ruling is an isolated case, but we definitely have to reflect on this issue and, in the meantime, also to be careful to what we write ;-).
 

Blue Ivy

A curious legal battle is recently going on between two international music stars and an Californian company for filing of the trademark "Blue Ivy", which happens to be also the name of the Beyonce’s and Jay-z’s five-year-old daughter. The two singers had already tried, at the time of the baby's birth, to register her name as a trademark, but the LA based clothing company had entered an opposition, asserting its rights to the same name, which had been operating for three years before the child was even born. Today, Beyoncé and Jay-z have filed a new request for registration, adding to brand also the rapper's last name, Carter. This time, the brand, available for viewing on the US Patent and Trademark Office database, covers a wealth of product categories from the beauty market to childcare products, as well as DVDs, CDs, handbags, books and even gambling cards or " live music performances ". The registration request was originally filed in January 2016, but was only available for opposition on January 10 this year. In fact, the California based company has again moved to block this second application, claiming that the two famous parents would like to proceed with trademark registration only to prevent someone else from using the name of their child, without being able to provide the actual proof of use on the market. Indeed, contrary to what is provided in the Italian legal system, according to the United States trademark law, an essential requirement for registration of a trademark is the presentation, at the time of application, of a so-called "statement of use", demonstrating the use of the mark on the US market. If the applicant company is new on the US market, the trademark application is temporarily accepted. Within six months, the registration may be confirmed following the commercial “use test” in the United States. The test of use is made possible by the proof of the product’s sale, or with the printing of catalogs, with advertisements, etc. In Italy, however, the use of the trademark is not an essential requirement for its registration, but a condition for maintaining its validity. The legislator, in Article 24 of the IP Code, explicitly regulated the case of the trademark revocation for "non-use" if the holder of a trademark registered in a specific class didn’t use it for 5 years. In both cases, the ratio of this rule is to prevent anyone from make use of a distinctive sign without actually using it, withdrawing it from the market and preventing others from using it.

Are you Ready for the EU New Privacy and Data Protection Rules?

The Data Protection Authority has published the new Guidelines concerning the implementation of the new European General Data Protection Regulation 2016/679, issued by the European Parliament in April 2016, to enable public entities, institutions, natural person and private companies to know and correctly apply the new provisions on this matter. The Regulation, which will become fully effective from 18/05/25, will be operational in all EU countries without any other transposition procedure and it will replace the current Privacy Code, which was adopted instead with the Legislative Decree n. 196 of 2003 in the implementation of a previous European Directive. Within a year, data protection national laws will be unified in a single discipline. The system set up by the European Union consists of two parts: a regulation concerning people, companies and administrations and a more specific Directive concerning the use of personal data in the field of security and police or justice activity. This second part will have to be transposed by a national law. The Data Protection Authority's Guidelines deal with the issues of the first part of the legislation, dividing it into six groups (lawfulness of processing, disclosure, data subjects’ rights, processing responsible, risk-based approach and accountability measures of holders and responsible, international data transfers) and addressing its innovation and possible issues. In particular, some of the changes introduced by the Regulation are in the interest of data owner. First of all, the disclosure eventually signed by the data owner must be clear, brief, intelligible and easily accessible. In addition, the owner may decide to transfer his data from one subject to another, with the possibility of changing the manager without losing the information provided. Only for non-European countries or for international organizations not having an adequate privacy policy it will require an explicit consent to the transfer of personal data. On the other hand, the Regulation promotes the accountability of data holders and the adoption of approaches and policies that constantly take into account the risk that may occur in the data processing. Finally, another important innovation is the introduction of the Data Protection Officer, a professional manager for managing and controlling the privacy policies of companies and public entities. Thus, in a year we will discover the effects of this reform and how personal data management will change in all of European Union.

A unique decision by an Italian Court on online streaming.

Uploading films protected by copyright  on the internet is not in itself an illegal activity. This is what has recently ruled a minor Court in Italy, which cancelled an administrative fine of more than 550 thousand euro issued against a website which allowed visitors to watch online pirated movies. 

In particular, the italian judge upheld an action against a decision of 2015, according to which the manager of the website was fined for copyright violation. According to the Italian Court a copyright violation through a web-site that host links to movie and music streaming is not automatic, but it requires an investigation to establish the existence of a scope of profit, as stated under article 171 of the Italian Copyright Law. In this case, the judge has ruled against the existence of a scope of profit, notwithstanding the existence of banners . According to the Court sharing files protected by copyright, allows the owner to save expenses and is not an activity which contains a scope of profit.  


 

The Unique Italian Vespa

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The Court of Turin has recently ruled that a Vespa’s shape is a creative and artistic work, protected as an industrial design, and that it can not be copied. In these terms the judges issued an historic ruling which, for the first time, awards the exclusive right to commercialize the timeless Vespa on the Italian market. It all began in 2013 at the EICMA, the Milan motorcycle expo, where the Police seized eleven scooters belonging to seven different companies, because of their similarity to Piaggio’s historic model. On that occasion, the Financial Police had found that the displayed models violated Piaggio’s exclusive right consisting in a three-dimensional trademark that protects the distinctive shape of the Vespa. One of the companies involved in the seizure, the Chinese Taizhou Zhongneng, had requested the Court of Turin for the cancellation of Vespa's trademark and, therefore, to ensure compliance of Chinese motorcycle line presented at EICMA , under the "Ves" trademark. The Italian group, however, had initially responded claiming its right on a specific model, the Vespa LX of 2005, and then on all the lines produced since 1948. The Court granted the applications of the trademark and accepted the requests proposed by Piaggio’s Lawyers and established not only that the Chinese company is prohibited from producing and marketing the scooter Ves, but also that all of the Vespa stylistic variations are protected by Article 2 of the Italian Law on copyright. This, however, raises some doubts because, although it was obvious that the shape of the Ves is identical to that produced by Piaggio and in addition the trademark is infringing, on the other hand granting a copyright or design shape to all Vespa models is more complicated. In fact, by affirming that all the different versions of Vespa are protected by copyright the judges established a prohibition of the marketing of any scooter, being the Vespa’s shape and the scooter’s one the same thing.

Facebook's Copyright Infringement case continues in front of the Court of Milan

The case between Facebook and Faround will be heard in front of the Milan Court of Appeal on April 4. In the first degree Facebook was sentenced for the first time for unfair competition and copyright violations against Faround, a software application created in 2012  by the Milan-based company Business Competence.

On the first instance the Milan’s Court, had held that Facebook’s application Nearby was infringing Fararound’s electronic database which is protected under Italian Law.
Faround selects data on Facebook, through the profiles of registered users, and organizes and display them on an interactive map. The map then shows shops near to the user's position, also with relatives reviews and information on discounts and offers. Indeed this information is not owned by Faround. However the Court held that the mode of their organization holds a degree of originality which should be granted copyright protection. In fact, "the previous programs developed by Facebook (Facebook Places) and by third parties (Foursquare and Yelp) did not have the same capabilities as Faround: the first was a kind of pager to reach friends and not a geolocation of shops close to the user, while others were designed on the basis of logical algorithms working on the base of data entry provided by members of their social networks, and not Facebook’s.”
For these reasons, the Business Competence Srl accused and sued Facebook for infringing the application’s concept and format, launched with the name of Nearby. In addition, Nearby attracted professional advertisers, perpetrating unfair practices on the advertising market.

The Court of Milan, found that the two applications had the same functionalities and overlapped and ruled for the publication of the decision on the newspapers "Corriere della Sera" and "Il Sole 24 Ore" and, for at least fifteen days, on home page of facebook.com. The Court also banned any further use of Nearby in Italy, placing a fine of 45 thousand euro for each day of violation of its order . Facebook has appealed the decision in front of the Appeal  Court of Milan, which, at the moment, has rejected the suspension request of the provisional measures imposed at first instance.
 

Hendrix vs Hendrix

Experience Hendrix, a subsidiary of Janie Handrix, who owns the rights to all the entire estate of the guitarist and most famous brother Jimi, sued Leon Hendrix and his partner Pitsicalis for breach of copyright and trademark. In fact, Leon and Pitsicalis would illegally used some of the many Experience’s trademarks (the signature and the images of the face and bust of Jimi) to trade marijuana cigarettes and alcoholic beverages. But the battles for the commercial use of the Jimi’s name are going back in time. In 2015, the Washington District Court had ruled on the matter, forbidding Leon and Pitsicalis to use images of the musician. In addition, in January 2017, the District Court of Georgia declared illegal the use of the words "Jimi" and "Hendrix" on their websites, social media and online platforms. The lawsuit filed in March 2017 in front of the Court of New York by the Experience Hendrix declared illegal, for infringement, also the use of the name "Purple Haze" in the sale of marijuna cigarettes and T-shirts. Purple Haze, in fact, is a song written in 1967 by Jimi Handrix. Experience Hendrix has requested injunctive relief, the elimination from the market of goods violating the trademark’s right and the relatives damages. On the other hand, Thomas Osinski, Pitsicalis and Leon Hendrix’s lawyer, said that "Experience Hendrix has long known long of my clients’ products and it brings this suit only to tarnish and interfere with the lawful and correct Leon’s businesses, which respects Jimi Hendrix’s legacy." Furthermore, Osinski, regarding the content of the claim, said that, although previous rulings have excluded Leon Hendrix and his family from Jimi’s music catalog and denied the possibility to use the trademarks created by Experience Hendrix, nothing prevents Leon and his partner to sell other merchandise Hendrix-related. Who knows how the Court will fix this new family dispute.

How can you protect the concept of an Art Exhibition?

A recent ruling of the Supreme Court held that an exposition may be considered an intellectual work and, thus, it can be protected by copyright. Therefore, moral and economic rights can be recognised to curators or the organizers. The realization of an exhibition may be the expression of a creative idea: on the one side you protect the concept, that is the originality of the theme, on the other side, you protect the project, ie the creative operation that precedes the actual preparation. In this sense, the exhibits are the result of a complex and expensive process of planning and organization, which deserves to be protected.

The case submitted to the Italian Supreme Court concerned a TV report released by RAI SAT, which, presenting an exhibition, didn’t respected its content, violating the economic rights recognized by law to the authors of the work. It was ascertained the creativity of the TV show, as necessary element of a copyright. In other cases, the Italian courts had rejected requests for declaration and protection of a copyright because there were no evidence that the objects of the exhibition had been arranged in an original way. In some cases, moreover, the judges have gone further and have expanded the protection to entire museums. It's what happened in Paris when in 2006 the Courts have recognized the quality of "work of genius" at the Museum of Cinema Henri Langlois.

Although Italian Case Law seems to agree in granting protection to exhibitions, it seems harder  lead the case to a legal institution provided by the legislator. In our legal system, protection of copyright is guaranteed by the provisions of law n. 633 of 1941, which includes all the works belonging to “literature, music, visual arts, architecture, theatre, cinematography, ..., as well as databases that, for the selection or arrangement of their contents, constitute own intellectual creation”. With an interpretative effort the exhibition could be considered as a database, since it is a "collection of works, data or other materials, arranged in a systematic or methodical way” (article 2, subparagraph 9, l 633/41). Or, you may include the exhibition within Article 4 of Law 633 of 1941, which recognises as intellectual works also derivative works, i.e. "the creative processing itself, such as translation into another language, transformations into any other literary or artistic form, modifications and additions constituting a substantial makeover of the original work, adaptations and abridgments which do not constitute an original work ".

In both cases, an essential condition for the existence of a copyright for shows and exhibitions is the originality and creativity of the intellectual work.

Cavalli vs Cavalli

The court of Catania has sentenced Roberto Cavalli to pay the costs of proceedings in the trial against Mrs. Luciana Cavalli, a craftswoman, producer of shoes in Sicily.

The famous Florentine designer, six years ago, had sued his namesake for the misuse of“Cavalli” brand.

It doesn’t matter thatthe Sicilian designer’s surname is actually Cavalli and that her brand exists even before Mr. Robert’s: in his opinion, this name is used out of turn and it represents a case of unfair competition. This is why Roberto Cavalli asked the judge to ascertain an economic damage against his company and to establish a compensation, calculated in 10,000 Euros per day of use, under Article 2600 of Italian Civil Code.

But the Court has rejected the requests made by the complainant and, as Luciana Cavalli’s lawyer says, the judge has awarded the good faith and the continuous use of the trademark “Cavalli” by the manufacturer of shoes and accessories. Thus, Mrs. Cavalli won’t withdrawn her name from the market and she will be able to continue her production of leather goods “made in Italy”.

The Sicilian judgement is at odds with what was stated by the Supreme Court about Fiorucci. In that case, the Court judged unlawful the use of the brand Love Therapy by Elio Fiorucci by Mr. Fiorucci himself, because the famous trademark had been sold to a Japanese holding. That time, it was ruled that the use of the name, even if his own name, it’s not legal if it is a patronymic mark owned by third parties. It can happen, the Court explained, that a coupling effect is generated and that this leads to confusion about the more renowned trademark.

"Made in Italy" as a collective National Trademark

Recently Italian manufacturers have been talking about the creation of a "Made in Italy" brand, which would ensure the Italian character of the production process, based national on raw materials.

The draft of a "Voluntary Conformity Certification of Italian Origin and Specialities” is ambitious and it aims to increase the attractive power of Italy’s national supply chain, as a brand system that enhances products, production and domestic supply of goods and services.

The initiative has been put forward by Conflavoro, who has entered into an agreement with the worldwide agency for certifications Lloyd's Register, which has the power to issue certifications. The protection and certification mechanism is subject to a double control: one of an Internal Supervisory Body, set up by Conflavoro and the other is a Scientific and Technical Committee for the Address and the Development of Single National Brand, compose of external  experts in the field of world business, universities and consumer associations.

In particular, the food market seems the most interested in this project. Indeed, the single brand would be affixed on food products’ packaging and would ensure not only protection against counterfeiting system, but also a response to the increasingly stringent demands of consumers in terms of quality and safety of food and beverage.

Thus, the "Made in Italy" would become a sign of authenticity and traceability of Italian products and, if possible, also a symbol of innovation that coordinates taste and genuineness.

Marylin Monroe: a Registered Trademark

On 9 November 2016, The Estate of Marilyn Monroe has sued an apparel company of New York for having illegally used the “Marilyn Monroe” trademark by using the image of the famous star.

The Marilyn Monroe Estate registered at PTO (The United States Patent & Trademark Office) its own exclusive property on Marilyn’s identity, image, name and likeness and also the right to grant licenses to third-parties.
Thus the Monroe Estate owns and manages Marilyn Monroe trademark, which continuously for over thirty years was used in the market. This circumstance makes the trademark incontestable, providing it greater guarantees of protection.

For these reasons, the Monroe Estate demanded a jury trial for detecting infringements laid down by Lanham Act, 15 U.S.C. 1051 ss, New York Statutory and common law, and a compensation for damage, in terms of trademark infringement, trademark dilution and unfair competition.

No matter, therefore, that the name of Marilyn actually has not been used commercially by the defendant company: the image of the most famous diva of all time, when used as distinctive mark, falls within the “Monroe Rights”, owned by plaintiff.
More specifically, as it follows from a previous court rulling*, it’s necessary to distinguish the infringement of trademark exploitation’s rights from the image exploitation’s right. Only in the first case, indeed, law requires that the consumer is induced to believe that the use of the brand has been authorized by the owner.
On this point, Monroe Estate stated that a confusion, among consumers and retailers, occurred: in fact, many have contacted the company believing that defendant’s products had been approved, authorized or sponsored by the company which owns the trademark.

In this specific case, therefore, while it might be difficult, or even impossible, to establish an infringement of the mark, because the mark has not been used, Article 1125(a) 15 U.S.C. gives actor wide powers to bring a legitimate request.
In fact, the US federal trademark law is intended to protect consumers. If there is a confusion in the audience, there should be a likelihood of confusion, which is the case traceable to article 1125 (a) U.S.C.
The existence of  actual confusion coupled with a registered trademark should ensure the implementation of the rule, guaranteeing Monroe Estate the acceptance of requests .

The Court of Torino on the First Sale Doctrine

The Court of Torino lately has applied the First Sale Doctrine, which limits the exclusive right of an IPR holder in the market. In trademark law, this same doctrine enables reselling of trademarked products after the trademark holder put the products on the market. 

The case concerned the preventive requests proposed by a company operating on the cosmetics market. The firm aimed to inhibit the use of the company’s brand and the marketing of products by some assignees.

Italian law states that the exclusive right exercised by IPR holder on a product runs out at its first placing on the market and thus the right holder can not oppose following commercialization.

The rationale behind this rule, as the judge said, is to prevent brand owner to influence market trends of products covered by trade mark.

The only exception to this rule is the occurrence of unfair commercial practices carried out by dealers, who can arrange terms of sale detrimental for brand prestige. This type of practices can also lead to a drawback in terms of attractiveness and economic value of the product.

Except in these cases, all those who are entitled to use the trade mark and to distribute relative products shouldn’t be impeded in their business, either for the selling price or for the sales system. 

Therefore restrictions against distributors, relating to e-commerce sales and the application of discounts on the price, would be improper and unjustified.

According to the Court these sales condition don’t constitute a per se discredit practices.