The digital work. A horror for our legal system?
[:it]More and more often we speak of 'digital work"whose meaning seems to be increasingly understood by users, without that there is, indeed, a real and effective feedback from the legislator.
In fact, as is well known, a digital work is understood to be an intellectual work that is characterised by the fact that it contains a so-called "corpus mysthicum" (such as originality, creativity, the
characteristics of innovativeness; therefore intangible connotations) and not having a "corpus mechanicum"(think for instance of the musical score or the traditional sheet of paper on which a work is written).
It is important, on this point, to remember that the digital work, precisely because of its entirely immaterial connotation, must not be confused with the CD/DVD containing multimedia files. Rather, the work is identified precisely in the files it contains, i.e. in a set of electrical impulses expressed in binary code.
It is important, on this point, to differentiate digital works in the strict sense, from the digitised works"(i.e. the simple DVD or CD, inside which digital files are imprinted and stored). In these cases, in fact, the physical format has a strong influence on distribution and musical, editorial and audiovisual works, already fully protected, are transported in digital format for distribution reasons.
Classic exampleTherefore, a digital work is the digital photograph and/or video, not necessarily being associated with a paper reproduction.
It goes without saying that the problems associated with the relationship between copyright and digital works are obviously enormous. Given the ease with which a person can 'take possession' and use a digital work of a third party through the use of the web.
Our legal system, however, has not yet defined the term 'digital work' in copyright law, and has not yet had the opportunity to regulate such disciplinedespite the fact that they have been needed for years.
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Speech at the conference on the international sale of movable property.
[:en]On 15.11. on the occasion of the conference on the international sale of movable property in the Aula Magna of the University of Verona, I had the pleasure of briefly presenting a topic that I have already dealt with in the following articles: the sale of the domain name e tld (internationally).
If it is of interest to you, here are the slides of the conference.[:]
But could an American in Rome also use the .eu?
[:en]On date 12 July 2012 the European Court of Justice issued a very interesting ruling in the field of internet law and e-commerce. Specifically, it stipulated that top-level domains (Tld - top level domain) ".eu" are only reserved for companies that have "its registered office in the territory of the EU'..
In particular, under EU law (Article 12 of Regulation No 874 of 2004) registration of the Tld '.eu' can only be applied for by the "domain names [...] of registered national trade marks, registered Community trade marks, [...] and holders or licensees of prior rights."
The Court of Justice, in interpreting the above-mentioned rule, considered that for "licensees of pre-existing rightsi' may not include companies or persons from the european union who limit themselves, at the request of a trade mark proprietor established in a third country, to registering the trade mark without being allowed to use it in the course of trade.
The present case, to make the matter clearer, involved a American society(Wlash Optical), which is active in the online sale of contact lenses and other eyewear. It has operated www.lensworld.com since 1998 and became the owner of the Benelux Lensworld trade mark, registering it on 26 October 2005. In November 2005, it decided to enter into a licence agreement with Bureau Gevers, Belgian company advising on intellectual property issuesto register the domain 'lensworld.eu' in its name, but on behalf of Walsh Optical itself. at the UERid.
One year later, Pie Optiek, a Belgian company competing with the American company, also applied for registration of the website "www. lensworld.eu." This request is, however, rejected.
Pie Optiek therefore brought an action against the American company, claiming that, as it was based in a third country, it was not entitled to use the .eu domain. The court of first instance dismissed the action. Pie Optiek appealed against the judgment. The Brussels Court of Appeal referred the case to the Court of Justice requesting an interpretation of Article 12(2) of Regulation No 874 of 2004. The Court thus holds that a person who is merely authorised by the proprietor of the trade mark, established in a non-member country, to register in his own name, but on behalf of the licensor, a domain name identical or similar to the trade mark itself, without, however, being permitted to make commercial use of it, cannot be regarded as a licensee of prior rights.
The Court notes on this point how the .eu top level domain was created in order to increase the visibility of the internal market in virtual Internet-based tradeby offering a clearly identifiable link to the European Union, the associated regulatory framework and the European market, and by allowing EU companies, organisations and natural persons to register in a domain that makes this link obvious.
For this reason, domain names should only be registered if requested by any party that meets the criteria of presence in the territory of the European Union. More precisely, by companies that have their registered office, central administration or principal place of business in the territory of the Unionby any organisation established in its territory as well as by any natural person residing in the territory of the European Union.
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The unlawful use of the 'meta-tag'. Trade mark infringement and unfair competition?
[:it]For meta-tag refers to those keywords, usually encoded in HTML, which, although not shown on screen, are nevertheless used by search engines in order to index the various sites. Through a meta-tagThus, the operator of a site can enter keywords concerning his or her own web page (c.d. keyword meta-tag) in order to make it through the use of search engines.
Potentially, therefore, a site operator could insert the name of a very famous brand as a keyword in order to have its site appear among the first results each time a user performs a search using the name of the well-known brand, or, insert the brand of one of its competitors in order to appear among the results each time a search is performed by a consumer indicating the brand of the competing company as a keyword. (E.g., the company XYZ S.R.L., which operates in the furniture manufacturing sector, uses the trademark of the competitor company 123 S.P.A. as meta-tag)
The question arises in doctrine and jurisprudence as to whether such conduct may in itself constitute an offence, given that the name or trademark of others is not placed externally on the site, but remains visible only to search engines.
There are potentially two possible offences: unfair competition and trade mark infringement.
1. Unfair competition
As for unfair competition, the Court of Milan, in the now well-known 'Solatube' case, ruled that: "the use by a competing company of a 'meta-tag' reproducing the trademark of the legitimate owner company constitutes unlawful competition imputable under Art. 2598 no. 3 civil code.as determining the constant and undue matching in the search results on the various web search engines capable of leading to a diversion of customers in violation of the principles of fair trading."[1]
2. Trademark infringement
The aforementioned judgment, which establishes the existence of a violation of Art. 2598 no. 3 civil code., states that the use by a competing company of a meta tags reproducing the trade mark of another company does not constitute an infringement of the trade mark as it lacks any distinctive function of services and goods.
On the contrary, according to authoritative doctrine, if a party uses as a meta-tag a trademark of one of its competitors, such practice would also constitute a hypothesis of infringement of the exclusive trademark right pursuant to Articles 12 and 22 of the IPC (Industrial Property Code). Such an infringement would, in fact, extend to non-related goods and services if a well-known trade mark is used as a meta-tag.[2] In support of this thesis, part of the doctrine holds that it is also reasonable to recognise the meta-tag advertising function in a broad sense.[3]
3. Subliminal Advertising
Finally, part of the doctrine is inclined to believe that the use of this practice might even be considered as a form of subliminal advertising Article 5.3 legislative decree 145/07, which provides that advertising must be clearly recognisable as such.[4]
REVIEW
- the use by a competing company of a 'meta-tag' reproducing the trade mark of the legitimate proprietor company constitutes an unlawful competition offence imputable under Article 2598 no. 3 of the Civil Code
- according to authoritative doctrine, the use of one's own competitor's trade mark as a meta-tag would also constitute an infringement of the exclusive trade mark right under Articles 12 and 22 of the IPC
- Finally, part of the doctrine is inclined to consider that the use of such a practice could even be regarded as a form of subliminal advertising covered by Art. 5.3 Legislative Decree 145/07
[1] Court Milan, 20/02/2009, Riv. dir. ind. 2009, 4-5, 375 (note TOSI)
[2]Riv. dir. ind. 2009, 4-5, 375 (note TOSI); E. TOSI, Diritto privato dell'informatica, DNT, 12, 490 ff.; CASSANO, Orientamento dei motori di ricerca, concorrenza sleale e meta-tag, in Riv. dir. Ind., Milan 2009, 56
[3] Cf. the TOSI, in the note to the Milan Court judgment of 20.2.2009: "in support of the foregoing, the broad provision of Article 2(A) of Legislative Decree No. 147 of 2 August 2005 [...] states that 'advertising shall mean any form of message that is disseminated, in any manner whatsoever, in the exercise of a business activity for the purpose of promoting the sale of goods, the performance of works or services'.
[4] BONOMO, The domain name and its protection. Typology of confusing practices on the internet, 247 ff.; PEYRON, Internet meta-tags as a new means of trademark infringement and hidden advertising: a US case, in Giur. It., 1998, I, 739 ff.
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Internet law II. The trade mark and the TLD.
[:en]The domain name consists of a Top Level Domain (TLD) and by a Second Level Domain (SLD). THE TLD can essentially be of two types, generic (gTLD) (when it is appropriate to distinguish, in principle, the sector of operation - e.g. .com for commercial activities and .org for organisations non-profit) or geographical - country code Top Level Domain (ccTLD) (when it is capable of signalling the 'virtual' location of the computer).
Consider, that there is no guarantee that, in practice, to a geographical domain, for example .en for Italy, .fr. for France and so on, actually corresponds to a computer located in the territory evoked by the ccTLD.
The assignment of domain names is carried out by bodies whose task is to establish the procedures for registering domains and assigning them to applicants marked by the country code '.it'. Each state has its own bodies in charge of these functions, and each country operates independently, as the various states are distinguished by their own country codes (.de, .fr, .nl, .be). It will therefore be possible for the same domain name to be used by different parties in different states and for the addresses to differ only by country code (e.g. '.www.esempio.it" e www.esempio.de"). On the basis of the above, the Internet being a worldwide platform, regulated by independent state bodies, it is evident that the risks and opportunities for confusion between domain names used by trade mark owners operating in different parts of the globe, will be increasingly numerous and frequent.
The question therefore arises as to whether the owner of a trade mark registered in Italy may take action to prevent a third party from using a domain name containing his company's trade mark if it is characterised by a different TLD (e.g., "the trade mark of the company"). www.abcd.it and www.abcd.fr).
Here too, a distinction must be made between renowned and non-renowned brands
a) renowned brand cases
According to doctrine and case law in the case of trade marks with a high reputation, the problem of the TLD does not even seem to ariseas the counterfeiting of the sign is also in re ipsa related to the registration of the domain name, regardless of the TLD it has and even in the absence of actual use.[1]
b) cases of non-renowned trade marks
In trade mark cases so to speak sic et simpliciter, it does not seem tenable to assert that the owner of a registered trade mark, which is neither well-known nor well-known, can oppose the registration of an identical or similar domain name, but with a different TLD (e.g. .it and .de).
In fact, since the law on trade marks applies only in a national context, the owner of a trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory and cannot therefore prevent a third party from registering abroad a domain name equal or similar to that trade mark, but with a different TLD.
In any case, it must be considered that if the third registers the domain name abroad in order to direct users to its own site where it in fact advertises or sells certain competitive goods or services, in which case the territory in which the cotraffactive sign is placed on the network is irrelevant (e.g. formaggitaliani.it and formaggitaliani.com).
Indeed, given the global nature of the Internet communication system, each user, including Italian users, will be able to connect to the site corresponding to the domain name possibly confusable with the registered trade mark.[2]
It can therefore be considered that "the proprietor of the trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory, and cannot prevent a third party from registering abroad a domain name equal to or similar to that trade mark within a [different] geographical or thematic TLD, unless its use for offering for sale or advertising goods or services results in an infringement of the right.[3]
In conclusion, therefore, it is held that the owner of an Italian trade mark cannot prevent a third party from using a domain name confusable with the said trade mark if it bears a different TLD, at least that such registration has infringed the proprietor's right to use the trade mark, since it is likely to direct users to a website on which identical, similar or related goods or services are offered or advertised.
On the basis of the above, however, it is considered necessary, given the complexity and specificity of the discipline, for this opinion to be used as a guideline and for individual cases to be analysed specifically.
- The TLD can essentially be of two types, generic (gTLD) (when it is used to distinguish, the sector of operation (.com), business (.org) or geographical (country code Top Level Domain ccTLD) when it is capable of signalling the 'virtual' location of the computer (.it, .de)
- The question therefore arises as to whether the owner of a trade mark registered in Italy may take action to prevent a third party from using a domain name containing his company's trade mark if it is characterised by a different TLD (e.g., the "TLD" of the company's trade mark). www.abcd.it and www.abcd.fr)
- In the case of well-known trade marks, the problem of the TLD does not even seem to arise, since the counterfeiting of the sign is also in re ipsa linked to the registration of the domain name, regardless of the TLD it has and even in the absence of actual use
- in the cases of non-renowned trade marks can therefore be considered as '.the proprietor of the trade mark registered in Italy is not the owner of a right to exclusive use of the trade mark outside the national territory, and cannot prevent a third party from registering abroad a domain name equal to or similar to that trade mark within a [different] geographical or thematic TLD, unless its use for offering for sale or advertising goods or services results in an infringement of the right
[1] Court of Reggio Emilia 30.5.2000 (ordinance); Peyron, Giur. it. 2001, 96.
[2] Court of Reggio Emilia 30.5.2000 (ordinance)
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Internet law part I: the trade mark and the domain name.
[:it]To be able to enter into this topic, it is necessary to take a preliminary look at some concepts that touch on both industrial law and the customary rules of the Internet world.
First of all, it is necessary to see how the domain name is framed within theItalian system. The legislator
regulated this figure for the first time with Art. 22 of the IPC (Industrial Property Code), introducing the prohibition to adopt as "a domain name a sign which is the same as or similar to another's trade mark where, because of the identity or similarity between the proprietors of those signs and the goods or services for which the trade mark is adopted, there exists a likelihood of confusion on the part of the public which may also consist in a likelihood of association between the two signs".
The domain name, therefore, may also be relevant as a distinctive sign because in the light of the progressive 'commercialisation' of the Internet, the entrepreneur no longer uses just any domain name, but requires a specific Internet address to make the products or services offered by his commercial site identifiable to surfers.
The doctrine and jurisprudence, even before the introduction of the aforementioned definition within the c.p.i., recognised the distinctive capacity of the domain name, recognising that "it does not seem justifiably contestable that the domain name in this case also has a distinctive character of the user of the site - capable of contributing to the identification of the same and of the commercial services offered by it to the public by means of the interconnection of networks (Internet) - with some apparent affinity with the figure of the sign, as the (virtual) place where the entrepreneur contacts the customer and concludes the contract with him".[1]
This interpretation is again confirmed following the introduction of the aforementioned Article 22 IPC by a recent decision of the Court of Milan of 20 February 2009, which definitively confirms the dominant jurisprudential orientation in favour of the recognition of the distinctive nature of the domain name formed prior to the IPC.[2]
Trademark protection regulations are also flanked by the network rules. On the Internet, in fact, the principle of "first come, first served", in on the basis of which a domain name is assigned to the first applicant, regardless of whether it conflicts with the rights of others. Domain allocation bodies are not obliged to carry out any prior checks to prevent/avoid registration - such as domain name - of signs or trade marks that are confusingly similar to a registered trade mark by a person other than the owner of the distinctive sign. In other words, under the current method of allocation of domain names, all names not yet registered (such as domain name) are freely registrable by anyone on the basis of the priority of applications, regardless of whether or not those names correspond to more or less well-known names or distinctive signs of third parties.
At this point, it is necessary to analyse the actual method of application of these rules and, to do so, it is necessary to subdivide trade marks into two macro-groups, namely non-renowned and renowned marks.
(a) cases of tomorrow's trade mark with no reputation
In the first case, if the domain name is identical or similar to another person's trade mark not having a reputation, two requirements must be met in order for that person to be able to prevent the use of that domain name:
- l'identity or similarity of the mark with the domain name (e.g. the registered trade mark is ABCD s.r.l. and the third party uses a coincident domain name www.abcd.it);
- l'identity or similarity of products or services offered. (both operate in the same branch of the market);
In that case, the principle of speciality of trade mark protection provided for and regulated by Art. 2569(1) of the Civil Code will apply.[3] and Article 20 para. 1 c.p.i. (a) and (b).
Obviously, the closer the products and services on offer are, the greater the public's confusion as to where they actually come from.
Therefore, even if there is no identity between the product sectors of the non-renowned brand and the domain nameif the bad faith of the holder of the domain name, that activity is deemed to be capable of precluding the holder of the trade mark from using it on the Internet as a further distinctive sign and therefore objectionable under Article 22 of the Code of Civil Procedure. [4]
(b) cases of tomorrow name of renowned trade mark
In the case of a trade mark with a reputation or high renown, the use of a domain name similar to the trade mark shall be deemed to be undue if the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.[5]
ABSTRACT
- the legislator, for the first time, regulated the domain name in art. 22 c.p.i. (industrial property code)
- the dominant legal orientation in favour of recognising the distinctive nature of the domain name
- in cases of domain name of an unrecognised brand name if the domain name is identical or similar to another person's trade mark, there must be identity or similarity of the trade mark with the domain name and identity or similarity of the goods or services offered in order to inhibit use of that domain name
- in cases of domain name of a renowned trade mark, it is considered undue to use the domain name similar to the trade mark also in cases of use of signs for goods and services which are not similar if the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark
[1] Court of Milan, Order of 10 June 1997 - Amadeus Marketing SA, Amadeus Marketing Italia s.r.l. c. Logica s.r.l.
[2] "The domain name has a twofold nature, technical for addressing the logical resources of the Internet network and distinctive. As a distinctive sign - constituted by the part characterising the domain name called Second Level Domain - it may come into conflict with other signs in application of the principle of the unitary nature of distinctive signs laid down by art. 22 c.p.i.". Tribunale Milano, 20.02.2009, Soc. Solatube Global Marketing Inc. and others v. Soc. Solar Proiect and others.
[3] art. 2569, para. 1. c.c.[3] "A person who has registered in the form prescribed by law a new trade mark capable of distinguishing goods or services shall have the right to use it exclusively for the goods or services for which it is registered".
[4] Court of Milan, order of 10 June 1997 "The unlawful practice of confusion known as domain grabbing consists in registering, with the Naming Authority, another person's trade mark as a domain name, for the sole purpose of appropriating the notoriety of the sign, constitutes in itself an act of infringement - censurable pursuant to art. 22 IPC - also in so far as it is an activity capable of precluding the owner of the trade mark from using it on the Internet as a further distinctive sign".
[5] Court Milan, 20.02.2009 "The unlawful practice of confusion known as domain grabbing consists in the registration, with the Naming Authority, of another person's trade mark as a domain name, for the sole purpose of appropriating the reputation of the sign, constitutes in itself an act of infringement - censurable pursuant to Article 22 of the Code of Criminal Procedure - also in so far as it is an activity capable of precluding the proprietor of the trade mark from using it on the Internet as a further distinctive sign"; Court Modena, 18.10.2005 "The assignment of a domain name (website name) corresponding to a trade mark - even if only de facto, but well known - may constitute usurpation of the sign and unfair competition in so far as it entails the immediate advantage of linking one's activity to that of the proprietor of the trade mark, taking advantage of the reputation of the sign and taking unfair advantage thereof. Moreover, the infringement of a trade mark - perpetrated by its use as the domain name of an internet site - is not precluded by the fact that that use has been authorised by the appropriate authority for the registration of domain names, nor by the fact that the proprietor of the trade mark has not previously registered the same name with that authority.".
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