THE DIGITAL RIGHT TO BE FORGOTTEN: NOT A GLOBAL PROTECTION

12/11/2019

The Court of Justice of the European Union, with two judgements of September 24, 2019, clarified the scope of the right to be forgotten: in examining a de-referencing request of web pages containing sensitive data, search engine operators are required to balance fundamental rights of the applicant with freedom of information of Internet users, not being also obliged to apply the de-referencing of such content on a global scale.

 

The events

The decisions of cases C-507/17, Google v. CNIL, and C-136/17, Google and Others v. CNIL, both concerned the Google search engine.

The first judgment (C-507/17) regards a penalty imposed in 2016 by the French Data Protection Authority (CNIL) on Google, following its refusal to de-referencing a certain content from all its search engine’s domain name extensions, limiting it to versions relating to EU Member States only. Google appealed the decision before the French Council of State, which referred the question of the territorial scope of the right to be forgotten to the Court of Justice.

With the second decision (C-136/17), the Court, once again requested by the French Council of State, following an appeal by a group of individuals contesting the CNIL’s refusal to take action against Google for the removal of sensitive data, was called to rule on the conditions under which search engines must comply with de-referencing requests of web pages containing sensitive data.

The Court’s decisions

The Court ruled establishing that there is no obligation arising from the European Union law to provide for a global de-referencing, but only limited to search engine versions relating to the Member States of the Union.

The relative scope of the right to be forgotten has also been further clarified: upon the receipt of a de-referencing request of sensitive data on web pages, it will be necessary to find a balance with other fundamental rights, such as the right of public access to information.

The background

The right to be forgotten has never been presented as an absolute right; affirmed by the same Court in 2014 with the memorable decision Google Spain, was then specified by GDPR 2016/679, the EU Regulation on the processing of personal data and privacy, which emphasized the importance of balincing such right, by applying the principle of proportionality, with other fundamental rights, providing for a limitation of the right to erasure of sensitive data in order to protect the freedom of expression and information.

The territorial scope

The Court has pointed out that the application of the right to be forgotten is not allowed to transcend the boundaries delineated by the territoriality of the law and jurisdiction, although it believes would be desirable to achieve a global de-referencing result, for instance through cooperation mechanisms activated between national authorities. However, a similar solution appears difficult to attain, given the discordant recognition and fragmented application of the right to be forgotten worldwide.

The examination of de-referencing requests

The European Union legislation does not provide for an automatic fulfillment of de-referencing requests.  In fact, the search engine receiving a de-referencing request, will be expected to balance the rights of the individual applicant and the rights of digital users, by weighting factors such as the nature of the concerned information, its impact on the private life of the individual or the public role assumed by the latter, the potential obsolescence of the information as well as the presence of reasons of public interest to its accessibility.

Implications

Both decisions raise the challenge of drawing a line between the protection of the individual right to privacy and the access to information and freedom of expression.

While the global application of the right to be forgotten could lead to the possibility of restricting freedom of information, the transnational nature of the Internet could in fact undermine the effectiveness of national or Community measures intendend for the protection of certain fundamental rights.

Alessia Asaro and Luigi Goglia


RUBIK’S CUBE: THEGENERAL COURT CONFIRMS EU TRADEMARK’S INVALIDITY

31/10/2019

Another judicial episode concerning the shape of the famous Rubik’s cube: by its recent decision of October 24, 2019 in Case T-601/17, the General Court confirmed that the shape of the Rubik’s Cube cannot be registered as a three dimensional trademark because its essential features are necessary “to obtain the technical result to rotate the different rows of the cube”.

 

The background

 In 1999 the UK- based toy company Seven Towns Ltd. registered the shape of Rubik’s Cube as three dimensional EU Trademark for “three-dimensional puzzles” in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services. The Applicant claimed no particular color for the trademark, nor did it provide a description.

Seven years later the German competitor Simba Toys filed an application before the EUIPO for a declaration of invalidity of that registration, on the ground that the rotating capability actually implied a technical solution that should only have been protected with a specific patent and not with a trademark (on the basis of Articles 59 and 7 of EU trademark community Regulation).

General Court’s first ruling:

In 2009, further to the rejection of the application for invalidity, Simba Toys brought an action for annulment of EUIPO’s decision before the General Court of the European Union.

On November 25, 2014 the Appeal was firmly rejected: the General Court stated that the essential features of the Cube did not prevent it from being protected as a trademark. In addition, the General Court, in its ruling, also held that the technical solution did not actually result from the shape but from a non-visibile mechanism located at the centre of the cube itself.

The CGUE solution and the new EUIPO’s ruling

Simba Toys then lodged an appeal against the General Court’s decision before the EU Court of Justice (CJEU). On November 10, 2016 the CJEU set aside the General Court decision, overturning the previous ruling. On the matter, by examining whether the registration should be rejected because the shape of the cube involved a technical solution, the CJEU rejected both the General Court and the EUIPO’s rulings.
According to the CJEU, the EUIPO and the General Court should have taken into consideration not only the sign’s graphic representation, but also other elements (even invisible ones) of the product related to the functionality of the good itself, such as its rotating capability.

The matter thus returned to the EUIPO. The First Board of Appeal stated that the graphic representation of the contested mark revealed the following three essential characteristics: firstly, the overall cube shape; secondly, the black lines and the resulting little squares on each face of the cube; and thirdly, the differences in the colors on the six faces of the cube. Based on this statement, the Board of Appeal considered that each of them, as fundamental characteristics, was essential to achieve the final technical result of the Cube, i.e. the presence on each face, following a series of horizontal and vertical rotation operations, of a single color common to all nine squares. On this point, however, it was noted that the European Trademark Regulation No. 40/94 did not allow the registration of a shape whose essential characteristics are necessary to obtain a precise technical result. Consequently, the EUIPO invalidated the registration in its entirety and cancelled the trademark from the register.

In the light of this ruling, Rubik’s Brand Ltd. (in 2014 the registration of the mark was assigned to this company) applied to the General Court of the European Union.

The general court’s recent ruling

By its recent decision of October 24, 2019 the General Court emphasised that the EUIPO’s Board erred in identifying that differences in the colors of the six faces of the cube constitute an essential element of the mark. This is highlighted for two reasons: firstly, in the application for registration of the contested mark, such importance in terms of colour variety has never been underlined by the Applicant and, moreover, with a simple visual analysis of the graphic representation of that mark it is not possible to identify the difference in colour between the six faces.

Besides, the General Court then aligned itself with EUIPO’s previous ruling, pointing out that the black lines are an essential element to achieve the expected technical result. They create a physical separation which is necessary to rotate the different rows horizontally and vertically thanks to a specific mechanism located at the center of the cube.

Finally, the General Court focused on the second further essential element represented by the overall cube shape. In this regard, the ruling clearly stated that the shape can be no more than a ‚Cube‘, a regular hexahedron since it is inseparable both from the grid structure consisting of the black lines and from the function of the actual goods at issue, which is to rotate vertically and horizontally the rows of the small cubes. In the light of this, the two essential Rubik’s Cube elements, which have been also correctly qualified by EUIPO, are extremely necessary to obtain the technical result consisting in the ability of that good to rotate in the contested form. Therefore, for this reason, it is not possible to register this shape as a European Union trademark.


REGISTERING SOUNDS, MOVEMENTS, MULTIMEDIA AND HOLOGRAMS AS TRADEMARKS – THE CONSULTATION PROCESS OF THE CONCERNED CIRCLES WITH THE GOAL OF ACHIEVING AN HARMONISED PRACTICE IN THE ASSESSMENT OF VALIDITY REQUIREMENTS HAS BEGUN

15/10/2019

With Directive no. 2015/2436 the European Union has provided a framework for the regulation of new types of trademarks, responding to an increasingly widespread practice of exploiting modern forms of communication for marketing. Italy implemented the directive by Legislative Decree no. 15/2019, which, inter alia, abolished the requirement that a sign, in order to be registered as a trademark, must be capable of being represented graphically. With the prospect of registering new forms of trademarks, a series of questions still remain unanswered, such as, for example, that of intrinsic distinctiveness or the descriptiveness of new forms of trademarks. A consultation open to all interested parties and aimed at arriving at a concerted and harmonized practice will be concluded within mid-November.

 

In the context of European Union law, the implementing regulation no. 626/2018 of the Regulation on the European Union trademark clarifies that the trademark may be represented in „any appropriate form using generally available technology“, provided that it can be reproduced in the register in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective manner”. This should enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. However, these aspects – also known as Sieckmann criteria – have not (yet) been defined more precisely. In addition to the application of these criteria to new types of trademarks, the consultation also concerns the question of how any discrepancies between the representation and description of the trademark can be assessed or how priority claims should be examined when at least one of the trademarks belongs to a new type. The consultation is not limited to the examination of absolute grounds of validity but also addresses the examination of relative grounds of invalidity. There is no established case law as to how the comparison between two new types of marks should be conducted or if only one of the marks to be compared is of the new type.

The consultation, which is open until 14 November 2019, offers the opportunity to participate in the development of shared criteria. In view of the increasingly crowded space in the field of traditional trademarks, the registration of new types of trademarks offers important economic advantages, as demonstrated by a recent analysisconducted by EUIPO in collaboration with the EPO.


THE COURT OF JUSTICE OF THE EUROPEAN UNION FORCE FACEBOOK TO REMOVE ALL IDENTICAL AND ILLEGAL CONTENT WORLDWIDE

08/10/2019

Based on the recent decision of 3 October 2019, the Court of Justice strengthens the obligation for hosting providers to stay down on a worldwide scale, concerning all identical and/or equivalent contents previously declared to be illegal.

 

La vicenda

Mme Eva Glawischnig, a member of the Austrian Parliament, seeks an order that facebook removes a comment, published by a user on his personal profile and available for any facebook user, harmful to her reputation, and allegations which were identical and/or of an equivalent content.

The context behind the preliminary ruling and the request of the Court

LThe Oberster Gerichtshof (Supreme Court, Austria), when called upon to give a ruling on the question, asks the Court of Justice to interpret art. 15 of the Directive on electronic commerce (Directive n. 2000/31), which provides for a general prohibition on the supervision of host providers. In particular, the Austrian Supreme Court asked whether art. 15 generally precludes the obligation imposed on a hosting provider, who has not promptly removed unlawful information, to remove not only that illegal information but also others identical or equivalent worldwide.

The CJUE solution

The Court of Justice, by the abovementioned decision, clarifies that although art. 15 (1) of the E-commerce Directive prohibits Member States from imposing on hosting service providers a general obligation to monitor information they transmit or store, as it stands out from recital 47 of the Directive, that obligation does not concern monitoring obligations in “specific cases”. Such a specific case may arise, as in the present case, from precise information, stored by the service providers and requested by a social network user, the content of which has been analyzed and considered unlawful by the Court of the member state. Consequently, it is legitimate to consider that the Competent Court may require the hosting providers to remove information which it stores, the content of which is identical to the content of information was previously declared to be unlawful or to block access to that information, irrespective of who requested the storage of that information. The same has been acknowledged in relation to equivalent contents, provided that it contains specific elements duly identified such as the name of the person concerned, the circumstances in which that infringement was established or a content equivalent to that declared unlawful, so as not to compel the hosting provider to carry out an independent assessment of that content.
Finally, the Court of Justice clarifies that article 18 (1), Directive n. 2000/31 does not provide for any territorial limitation and therefore does not preclude the abovementioned injunctive measures from producing worldwide effects.


PARODY: THE UMPTEENTH „STRESS TEST“ FOR THE PROTECTION OF RENOWNED BRANDS

04/10/2019

The Criminal Supreme Court held that the parodistic reproduction of well-known trademarks was legitimate given the unsuitability of the seized products to create confusion among the public as to their origin, since it did not consider integrated the offenses referred to in articles 473 and 474 of the Italian Criminal Code.

 

 

The history

The case concerns the marketing of “FAKE LAB” branded clothing in which famous brands are reproduced – ironically – without the (obvious) authorization of the rights holders. Following the seizure of products bearing said trademarks and the subsequent validation of the precautionary measure adopted for violation of Articles 473 and 474 of the Criminal Code, the question has reached the criminal section of the Supreme Court, which was faced with the tricky issue of „parodistic“ reproduction of well-known trademarks.

Decision of the Court 

The Court held that the parodistic (i.e. artistic/descriptive) reproduction by “FAKE LAB” of third parties’ well-known mark was lawful, since the public would not be confused about the entrepreneurial origin of the goods in view of the unsuitability of the goods seized for confusion with the “originals”. According to the Court, the reproduction of the well-known mark of others is lawful whenever the mark is used with obvious ironic and parodistic purposes for the creation of new and original products (as in the case of “FAKE LAB”). Such forms of reproduction would be suitable to exclude the confusion between products and consequently the criminal offenses referred to in Articles 473 and 474 of the Criminal Code against the simple parodistic reproduction of well-known trademarks. This is because the primary function of the mark, i.e. the indication of origin, would not be affected (on the assumption that consumers would be able to understand that they were about to buy a parody of the original and not the original itself).

Contrasting decisions 

The decision of the Supreme Court, although made in criminal matters, is intended to rekindle the jurisprudential and doctrinal debate on the free use of trademarks for periodical/satirical purposes, especially in relation to well-known trademarks. The confirmation of the uncertainty in which the free parodistic uses of trademarks are found is given by the reading of the recent case law of the same Criminal Court of Cassation which, a few weeks before the decision in question, ruled oppositely in relation to the appeal of a items’ seizure bearing the trademark „FAKE LAB“ (yes, the same trademark), considering – in contrast to the decision commented on here – that the offence under Article 474 of the Criminal Code existed (Court of Cassation, Penal Court Section II, 07.11.2018 no. 9347 in the on-line database DeJure). In said decision, the Court specified that the protection of Article 474 of the Criminal Code does not concern the determination of the individual purchaser in the purchase, but it concerns the public faith, i.e. the trust of citizens in the authenticity of the distinctive signs. It would have derived that, only in the case of gross forgery or if any danger of confusion on the part of the purchaser were totally excluded, the punishability of Article 474 of the Italian Criminal Code could have been excluded.

Parody of well-known trademarks in civil law and doctrine

The debate about the legitimacy of the periodistic/satirical use of well-known trademarks first arose in the civil path and has also recently been strengthened by some new regulations. The new EU trademark directive 2015/2436 (also mentioned by the Court of Cassation in the decision at stake) invites Member States to consider „artistic“ uses of registered trademarks legitimate if their use complies with the principles of professional correctness and therefore cannot generate a danger of confusion about the entrepreneurial origin of the products (recital 27). This clarification is not yet present in the current Italian Industrial Property Code. In the absence of a normative provision, the doctrine and the jurisprudence have historically tried to make such uses fall within the legitimate ones according to the art. 21 c.p.i. (as creation of copyright). However, from the analysis of the cases submitted to the Italian Courts, it emerges that the object of the parody (as in the case of FAKE LAB) have always been well-known trademarks, i.e. trademarks protected not only against confusable uses but also against uses that could prejudice the image of the trademark or give an undue advantage to the abusive user. On this point, it is enough to recall the „AGIP/ACID“ case in which the image of the famous six-legged dog was associated with the wording „ACID“ on T-shirts. On that occasion, the Court of Milan (Trib. Milano 4.3.1999, in Giur. ann. dir. ind. 3987) held that, in order to determine the infringement, it should have been ascertained that the image of the notorious parodied mark had been damaged and not simply confused between the products (which, even in that case, had not been considered to exist). In the same sense, reference could be made to the decisions of the Court of Rome in the „GAMBERO ROSSO/GAMBERO ROZZO“ case (Trib. Roma, 4.2.2010, in Giur. ann. dir. 2010 p. 198) or of the Court of Turin „DIESEL/PORCO DIESEL“ (Trib. Torino, 9.3.2006, in Giur. ann. dir. 2007 p. 149) in which, although excluding counterfeiting, the periodical mark was considered to be detrimental to the image of the parodied mark because it was well known. Recently, the Court of Milan, in the „LOUIS VUITTON/GOLDEN BOYS“ case (Trib. Milano, 14.9.2012, in the online database Darts.ip), clarified that renowned trademarks carry not only a message of entrepreneurial origin of the marked products but also a further message, namely the promise of a status, a philosophy, a luxury from which the bearer benefits. According to the Court of First Instance, this message must also be protected against periodical uses that may undermine the exclusivity of the renowned trademark by giving an unfair advantage to the sign of the parodying subject.

Parody in copyright

In this context, the typical defense of infringers is represented by the assertion that the parody of the well-known mark is lawful also based on the provisions of copyright as an “original” creation affixed in a decorative sense and not as a trademark to the product. This statement is based on the creative elaboration of a protected work (art. 4 l.a.) or in the exemption of the purpose of criticism (art. 70 l.a.) and in the freedom of expression constitutionally guaranteed under art. 21 Cost. The Italian jurisprudence (Trib. Milano 1.2.2001, in AIDA 2001 pag. 659 and Trib. Milano 13.9.2004, in AIDA 2005, pag. 551) has on several occasions considered the parody legitimate if it can be a conceptual reversal of the original work so as to prevent any assimilation to the work of derivation, or if the parody – while inspired by the original work – transforms it to such an extent as to make it creative and with a new expressive meaning. In the absence of these elements, we would not be faced with a lawful periodical use of a work but with a trivial counterfeiting, able not only to damage the economic exploitation rights of the author but also (in some cases) his moral rights.

Parody and other public interests

With regard to the infringement of the author’s moral rights or of the entrepreneur’s commercial image on the market, further consideration should be given to whether the parody, even if it is lawful on the basis of what has been discussed, is not capable of damaging the interests of third parties or whether it may be contrary to public morals. In some circumstances, in fact, parody can go beyond the boundaries of public morals, resulting in swearing, blasphemy and images contrary to any morals and capable of damaging (in case) the image of others. Just think of the aforementioned judicial case „DIESEL/PORCO DIESEL“ or the proliferation of social pages dedicated to parody and satire that can be considered, in most cases, contrary to public morality (think of www.instagram.com/welcometofavelas__/?hl=it). In these cases, we can only classify the parody trademark as radically illegitimate also because it is contrary to public morality.

Conclusion

The judgment of the Court of Cassation commented does not seem to be able to put an end to the debate on the parody of the use of the trademark of others, which remains a particularly insidious terrain, in the light of the existing jurisprudential contrasts and the many issues that must be analyzed in order to assess the circumstances of the case. On the other hand, it is clear that the trend of periodical use of the trademark is constantly growing and that soon our Court will be called to a new „stress test“ on the resistance of renowned trademarks against their use in parodied form. We do not yet know what the counter-promotions studied by the owners of well-known brands in court will be; from a commercial point of view, an interesting orientation seems to be emerging, according to which the owners of the brands themselves produce parodied versions , as can be seen in the recent use of the ADIDAS brand by the German fashion house:

https://www.adidas.ch/it/t-shirt-shmoo/EC7373.html