LANDMARK DECISION ON BLOCKING ORDERS BY PUBLIC DNS PROVIDERS

11/11/2022

A panel of three judges of the Court of Milan has dismissed Cloudflare’s appeal against a preliminary injunction requested by the records’ companies Sony, Universal and Warner for blocking users’ access to three notorious pirates BitTorrent sites through Cloudflare’s public DNS service, namely 1.1.1.1.. The users’ access has been already blocked by the local connectivity companies (i.e. Telcos) following the relevant AGCOM’s orders. The Court issued a “dynamic” interim injunction, meaning that DNS blocks shall also include any alias domain to be created by the BitTorrent websites in the future.

Some technical details of the implementation of the injunction order is still subject to the Court of Milan.

Thanks to LGV Avvocati team, founding partners Simona Lavagnini and Luigi Goglia, the senior associate Alessandro Bura and the FPM Team, Luca Vespignani and Marco Signorelli.

#LGVAvvocati #lgv #fpm #copyright

DIGITAL SERVICE PACKAGE

The EU has approved a ‘package of digital services acts’: the Digital Services Act and the Digital Markets Act, which aim to create a more safe, accessible and competitive digital space.

 

With the adoption by the European Parliament of the Digital Markets Act (DMA) and the Digital Service Act (DSA) last July, the legislative process that began in 2020 with the European legislator’s proposal for a strategic digital project (also referred to as the ‘Digital Service Package’) unanimously approved in 2021 by the Member States was concluded.

The aim of this legislative package is to delimit the operating space of digital giants, also known as the ‘giants of the digital ecosystem’ (e.g. Google, Apple, Facebook, Microsoft), and encourage new spaces for small and medium-sized competitors.

Digital Market Act (DMA)- EU Regulation 2022/1925

Regulation 2022/1925 was published in the Official Journal on 12 October 2022 and will enter into force on 1 November 2022.

In the recitals of the Regulation, it is pointed out that the reference market is characterised, on the one hand, by the presence of growing small and medium-sized companies operating as online platforms, and, on the other hand, by the presence of a few large platforms that alone hold the largest market share, thus exercising a control of the access, the so-called gatekeepers. The rules contained in the DMA therefore aim to ensure fair competition on digital platforms by establishing both obligations and prohibitions for gatekeepers.

First of all, the DMA identifies qualitative and quantitative criteria on the basis of which it is possible to determine whether an entity is to be considered a gatekeepers. In summary, an undertaking that provides basic platform services is to be considered a gatekeepers if ‘(a) it has a significant impact on the internal market; (b) it provides a core platform service which is an important gateway for business users to reach end users; and (c) it enjoys an entrenched and durable position in its position or it is foreseeable that it will enjoy such position in the near future’. A company is presumed to satisfy these requirements if it has an annual turnover of at least EUR 7.5 billion or if its market capitalisation was at least EUR 75 billion and if it provides the same core platform service in at least three Member States; if it has at least 45 million active monthly end-users and at least 100,000 EU-based business users in its last financial year.

Then, the Regulation provides for a set of obligations imposed upon gatekeepers listed in Articles 5, 6 and 7. In particular, these shall have to guarantee users the right to unsubscribe from core subscription services under the same conditions as the subscription, not impose software (such as web browsers) by default on the operating system installation, and ensure interoperability of the core functionalities of their instant messaging services and report to the European Commission on their acquisitions and mergers.

The Regulation then provides investigative power for the European Commission, which will adopt an implementing act, specifying the measures that the gatekeeper concerned is to implement in order to effectively comply with the obligations laid down in Articles 6 and 7.

Digital Service Act (DSA) – Proposal for a Regulation

On 4 October, the European Council finally approved the DAS, which will enter into force 20 days after its publication in the Official Journal and will be directly applicable throughout the EU starting 1 January 2024.

The act introduces new rules on transparency, disclosure requirements and accountability with the aim of balancing the rights and responsibilities of users, online intermediaries and public authorities.

It applies to intermediaries offering services for remuneration, at a distance, electronically and at the request of the customer, so-called information society services. The obligations are tailored to the different types of services offered and the size of the operator: large online platforms will be bound to more stringent requirements.

In particular, obligations of due diligence and procedures for the removal of illegal content and for the protection of the fundamental rights of online users will be foreseen, such as, for example, a mechanism that will allow users to easily report illegal content; obligations on the traceability of commercial users in online markets to help identify illegal sellers.

This also provides the European Commission with a power of supervision over bigger online platforms.

Anna Colmegna


INVENTOR REMUNERATION (ITALY)

22/09/2022

We are happy to share the last contribution from Simona Lavagnini, founding-partner, and Tankred Thiem, partner of LGV, on the magazine Practical Law Global, regarding employer obligations to pay remuneration to employee-inventors beyond their normal salary as a reward and additional compensation (or consideration) for creating patentable inventions.

Take a look!

Inventor Remuneration (Italy)

THE NEW PUBLIC OBJECTIONS REGISTER (REGISTRO PUBBLICO DELLE OPPOSIZIONI)

3/08/2022

The Public Objections Register (“POR” or “Register”) is a tool that aims to strengthen the position of consumers against aggressive commercial practices of telemarketing operators. As of July 27th 2022, the regulation for the new POR came into force, establishing some important protections in the interest of users and obligations towards operators.

 

The POR is a measure against so-called aggressive telemarketing and is a public service made available to users to express their refusal to receive advertising and promotional telephone calls.
Through enrolment in the Register, established by Presidential Decree No. 178 of 2010, the consumer expresses his or her objection to receiving telephone calls for commercial or promotional purposes. The service, which has been active since 2011 and for which the Ministry of Economic Development (“MISE”) is responsible, was later updated by Presidential Decree No. 149 of 2019, which extended the scope of the POR to include paper advertising communications in addition to telephone calls. Through a service contract, the MISE entrusted the Ugo Bordoni Foundation with the implementation, management and maintenance of the service.
On January 21st 2022, the Council of Ministers approved the reform that strengthens the Public Objections Register, introducing numerous innovations both from the point of view of companies and contractors.
First, it is worth noting that the scope of the provisions in question has also been extended to other forms of marketing, not only in respect of commercial communications carried out through the activity of call centres. As provided for in Law No. 5/2018, the processing for the purpose of sending advertising or direct sales material or for carrying out market research or commercial communication of all fixed and mobile national numbers through the use of the telephone, whether or not they are included in contractor lists, and of the postal addresses included in the same lists, falls within the scope.
From the consumer’s point of view, then, registration in the Register makes it possible to block not only operator calls but also automated calls, i.e. made by means of automatic dialling software, which are increasingly common among operators and have so far escaped regulation.
In addition, consumers may also decide to include mobile telephone numbers in the Register, to prevent the receipt of promotional calls also on their mobile phones. This treatment was only reserved for fixed telephone numbers.
Another new aspect concerns the revocation of previous consents. Consumers have the possibility to register in the new POR the telephone numbers to which they do not wish to receive promotional communications: this entails the cancellation of all previously given consents.
All numbers that are not in the public telephone directory will also be entered automatically.
From the point of view of companies using so-called direct marketing activities, they are obliged to consult the Register monthly in order to remove new registered numbers from telemarketing initiatives. On the other hand, companies with which one previously had a contract may contact former customers within 30 days of the expiry of the contract. However, this is an exception, since from 15 days after a number has been entered in the Register, promotional calls to that number are considered unlawful.
Should an operator decide to contact a number for promotional purposes, even though it is included by the consumer in the POR, it would be in breach of the right to object and would be liable to administrative sanctions applicable under Article 83 of the General Data Protection Regulation (“GDPR”). These can be up to EUR 20 million or up to 4% of the total annual worldwide turnover, whichever is higher.
In conclusion, registering with the POR makes it possible to avoid receiving unsolicited commercial communications from any company. On the contrary, if the consumer intends to receive such communications from a specific operator, he/she will have to express his/her consent directly to that specific company. The latter may then include in its promotional campaigns the numbers of that specific user, always subject to the rules on the processing of users’ personal data, which must be processed in line with the GDPR, the Personal Data Protection Code, the guidelines and the binding provisions of the Data Protection Authority (Garante per la protezione dei dati personali).

Alfredo Bergolo


THE IMPORTANT DIFFERENCE OF HOMAGE AND ILLICIT FREE RIDING: THE GENERAL COURT OFFERS GUIDANCE ON THE CONCEPT OF BAD FAITH IN EUROPEAN TRADEMARK LAW

14/07/2022

With decision of July 6, 2022, the General Court has annulled EUIPO’s second Board of Appeal decision of March 10, 2021, stating that the simple fact that a trademark owner adopted a formerly well-known but currently disused sign as a homage trademark is not sufficient to amount to a dishonest state of mind and thus to bad faith (T 250/21).

 

On May 6, 2013, the applicant filed an application for registration of the EU trademark

for clothing (class 25) and some other goods such as bed covers (class 24) and leather and travelling bags (class 18) to name a few examples. The mark was registered on 31 October 2014.
During the 1930s, “NEHERA” was a well-known brand, used by a company founded by Mr. Jan Nehera. After World War II the trademark was not used any more as a consequence of the company’s nationalisation and re-branding.
On June 17, 2019, the founders’ grandchildren Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity against that mark claiming bad faith. With decision of April 22, 2020, EUIPO’s Cancellation Division dismissed the application for a lack of proof of the applicant’s bad faith. EUIPO’s second Board of Appeal, however, upheld the appeal filed by Mr. Nehera’s grandchildren, declaring the contested mark invalid: the sign was a well-known mark and had been put to genuine use in Czechoslovakia in the 1930s. Moreover, the applicant was aware of the existence and celebrity both of Mr Jan Nehera and of the former Czechoslovak trademark, which retained a certain surviving reputation. The association between the trademark owner and the former Czechoslovak trademark would amount to an unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark. The applicant requested the General Court to annul the decision as a residual fame or reputation on the filing date in 2013 was not proven.
The General Courts confirms the well-established case law according to which the concept of bad faith presupposes the presence of a dishonest state of mind or intention. By way of further specification, the General Court adds that the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin, shall be considered bad faith. Exemplary factors which may be taken into consideration include firstly whether the applicant knows (or must know) that a third party is using, a similar sign for a similar product capable of being confused with the sign for which registration is sought, secondly, the applicant’s intention to prevent that third party from continuing to use such a sign and, thirdly, the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. Other factors relevant for an overall assessment may include the origin of the sign at issue and of its use since its creation, the commercial logic for the filing of the application for registration of the sign as a European Union trade mark, and the chronology of events leading up to that filing. With respect to the degree of legal protection of the prior sign the Court analysed whether in absence of any registration and current use a “certain surviving reputation”, a “historic value” or the perception of the sign’s founder as a “celebrity” could be proven.
In the present case the General Court excluded bad faith as none of the aforementioned aspects were proven. Moreover, it observed that the applicant dedicated considerable economic efforts for reviving the forgotten trademark.
The decision while in line with precedent case law regarding efforts to revive forgotten trademarks adds at least two interesting aspects:
For analysing bad faith, the question whether an unfair advantage is obtained is of paramount importance: where an applicant tries to ride on the coat-tails of a formerly renowned sign or name in order to benefit from its power of attraction, its reputation and its prestige and, without any financial compensation and without having to make any efforts of its own in that regard, to exploit the commercial effort expended by the proprietor or user of that sign or of that name in order to create and maintain the image of that sign or of that name an unfair advantage appears quite obvious. Secondly, the General Court’s reasoning seems to imply that a “certain surviving reputation”, a “historic value” or even the qualification of a person as a “celebrity” – where sufficiently proven – could be regarded as suitable indicia for a dishonest state of mind, even in case the former sign does not benefit any current protection as registered or unregistered trademark.

Tankred Thiem