All posts by luminous

INFRINGEMENT OF THE FAMOUS PRONGED “DIADORA” SIGN. THE COURT OF TURIN IS CALLED ON TO DEFINE THE LIABILITY OF THE INFRINGERS

08/11/2016

The Court of Turin, with decision dated August 3, 2016, held that the figurative mark representing the known bifurcated owned by Diadora S.r.l. had been infringed. The Turin Court found all the defendants liable for each having contributed – albeit in different ways – to the marketing of footwear bearing a sign mostly identical to the “Diadora” mark. The Court clarified that infringement may also include any contribution – even if only of an advertising nature – to the unlawful of a third party sign.


 

The petitioner Diadora S.r.l., a company which active within the footwear and clothing industry, proceeded to enforce its bifurcated mark  diadorawhich had already been registered at a national, international and European level.

In particular, the petitioner commenced urgent proceedings claiming that the defendant companies Melania Italia S.r.l., Fantasia Calzatura S.r.l. and Punto 4 S.r.l. had commercialized and advertised on several Internet certain footwear products, reproduced below, all of which had a “Melania” sign that was mostly identical to the mark registered by the

scarpe

The Court of Turin found that the sign fixed on the shoes advertised for sale by the defendants amounted to infringement of the signs of the petitioner, given that such sign entirely reproduced all the elements of the Diadora mark (including their dimension and positioning on the product) and the fact that the defendants had added a star on the upper prong of the sign was not enough to remove its evocative power of the Diadora mark and, therefore, the consequent risk of confusion as to the origin and provenance of the goods.

The Court of Turin held that all the defendants had been responsible for the infringement and thus rejected the exception raised by the defendant concerning the lack of passive legitimacy of the company Melania Italia S.r.l. which claimed that it had never entertained commercial relations neither with the petitioner nor with Fantasia Calzature and Punto 4 S.r.l. and was also not the owner of the domains www.melania.it and www.fantasiacalzature.it (which belonged to others) where the footwear with the star had been advertised. In particular, the Court reasoned that, according to settled case law, any causal contribution – albeit only of an advertising nature – to unlawful use of a third party sign may amount to an infringement.

In this case, it was known that Melania Italia S.r.l. had presented itself in the advertisements and on the market as the entity using the sign in dispute. Moreover, on the website www.melania.it – where the footwear had been advertised and sold – the indication “Melania Italia S.r.l.” was present and on the back of the box containing the shoes, purchased from the Pittarello shop in Turin, it was declared that the shoes were produced and distributed by Melania Group S.p.a.. Finally, an inquiry had revealed the existence of invoices issed by Melania Italia S.r.l. connected to the products bearing the disputed sign. Under those circumstances, the involvement of the defendant Melania with respect to the infringement of the sign had been ascertained.


THE COURT OF JUSTICE OF THE EUROPEAN UNION DECIDES ON THE ISSUE OF HYPERLINK AS “COMMUNICATION TO THE PUBLIC”

07/11/2016

With judgment of 8 September 2016, the Court of Justice of the European Union took into consideration the complex issue related to qualifying as “communication to the public” a hyperlink inserted within a web page. In particular, with judgment C-160/15 the Court declared that there is “communication to the public” when a link published on a website without the authorization of the copyright holder redirects the user to works that are protected and freely available on another website.


 

As for this case, in October 2011, GS Media – a company that manages the GeenStijl.nl website, one of the most visited Dutch current affairs webpages – inserted within the site a hyperlink redirecting users to an electronic file uploaded on the Australian data archive website Filefactory.com. That file was accessible by anyone who clicked on the link and contained photographs taken on commission by Sanoma, the editor of Playboy magazine, where said photographs were supposed to appear on the December 2011 edition of the magazine. In this way, the photographs were  made available to the public without authorization of the editor who holds the copyright in the photographs. On more than one occasion, Sanoma requested that GS Media remove the hyperlinks present on the GeenStijl website.

The issue considered by the Court of Justice had already been partly dealt with in 2014 by the Svensson judgment – to which reference was made in the  judgment here analysed – that provided the definition of “communication to the public”. In both judgments the Court stated that i) an act of “communication to the public” had occurred when, absent intervention by the user, the clients may not benefit from the divulgation of the work and ii) “public” should be understood as referring to an indefinite number of potential users, including a consistent number of people.

However, the GS Media case was decided in a different way from Svensson. In the latter case, the Court held that there was no “communication to the public” in so far as the hyperlink that had been made available to the users redirected them to a website on which content had been published with the authorization of the copyright holder. The hyperlink was not relevant for the divulgation of the content of the website to which the users were redirected, because the copyright holders over such work, when they had authorized its communication, had considered the entire group of Internet users as a public.

In the case considered here, however, the Court held that publication of a link amounts to “communication of the public”, on the grounds that i) the insertion of the link by the Dutch website had fulfilled the necessary condition for divulgation to the public which, in light of failure to act by GS Media, would not have benefited from the content and ii) the divulgation of the images was carried out without the authorization of the holder of the copyright in the photographs, and where GS Media, who acted in pursuit of financial gain, were aware of such lack of consent. Under those circumstances, the Court held that in this case communication of the link had caused the information to become accessible by a new and different public from that to which the photographs had been destined, with the consequence that such act could properly be qualified as a “communication to the public”.


PROTECTION OF PERSONAL DATA AND DYNAMIC IP ADDRESS

25/10/2016

The european judges qualified the dynamic IP address  as personal data where the provider of the Internet web page has the legal means to obtain from the Internet service provider the additional information necessary for complete identification of the user. 


 

The Court of Justice, with decision dated 19 October 2016, dealt with the issue of whether a dynamic internet protocol address (defined as an “IP address”) may be qualified as personal data and as such fall within the scope of the provisions under Directive 95/46/EC of the European Parliament and of the Council on the protection of individuals with regard to the processing of personal data and on the free movement of such data.

The case considered by the European judges originated from two preliminary matters referred by the German Federal Court of Justice (Bundesgerichtshof). The German Court had to deal with the petition filed by Mr. Patrick Breyer, a German citizen, against the appeal decision that had partially rejected his claims. The case arose following access by Mr. Breyer of various Internet sites traceable to the German federal services which, as a way to oppose IT piracy, register user access for each site and store it in a file register. The stored user data includes the name of the site and accessed file, the words inserted in the search bars, the date and time of access, the volume of transferred data, the message of outcome of the access and the IP address of the PC from which access was made.

Following access, Mr. Breyer filed a petition before the German administrative courts, requesting that the German Federal Republic be prevented from storing – also via third parties – the IP address of the Internet website user and in particular that of Mr. Breyer with regard to the ongoing proceedings. Following rejection of the petition at first instance, on appeal the judge held that the dynamic IP address constitutes personal data only if the user has revealed his identity during access of the website. According to the appellate judge, only in such case the operator of the Internet site may be in a position to identify the user by connecting his or her name with the IP address of his or her computer. The dispute reached the German Federal Court, which referred the matter to the Court of Justice of the European Union. The referred question was whether a dynamic IP address registered by the operator of an Internet web site, following access by the user, amounts to a personal data pursuant to Directive 95/46/EC, with respect to the operator, only if a third party, and in particular the Internet access supplier of the user, possesses the necessary information to identify the user.

The Court of Justice of the European Union, after acknowledging that it is settled that the static IP address allows unambiguous and permanent identification of the device connected to the network, also stated that the provider of the Internet web page would be able to identify the user accessing the page via the IP address only on the basis of further information generally supplied by a third party (i.e. the Internet access provider of the user). For these reasons, in order to qualify a dynamic IP address as personal data, and as such consider it subject to the above mentioned Directive, according to the European Court, it is necessary to verify whether the possibility of combining a dynamic IP address with the additional information kept by the Internet access provider amounts to a means that may reasonably be used by the provider of the Internet page for identifying the user. With regard to the case at hand, the Court of Justice of the European Union noted that German law does not allow the provider of the Internet page to obtain from the Internet access provider, upon mere request, additional information capable of identifying the user who utilizes a dynamic IP address. However, there are legal means that allow the provider of online media services facing cybernetic attacks to contact the competent authority, which may adopt the necessary measures in order to obtain the relevant information from the Internet access provider and thus commence criminal proceedings.

On those grounds, the Court of Justice of the European Union concluded that the dynamic IP address registered by the operator an Internet web page, following access by a user, only amounts to personal data if the operator has the legal means that allow it to identify the user via additional information possessed by the Internet access provider. It follows that the operator of the Internet page may collect and use personal data relating to a user of those services, without his or her consent, only in so far as the collection and use of that information are necessary to facilitate and charge for the specific use of those services by that user, even though the objective aiming to ensure the general operability of those services may justify the use of those data after consultation of those websites.


THE SHAREHOLDER OF AT LEAST ONE THIRD OF THE SHARE CAPITAL OF A PRIVATE LIMITED LIABILITY COMPANY HAS THE POWER TO CALL A SHAREHOLDERS MEETING

21/10/2016

In relation to limited liability companies, the right to call a shareholders meeting, in case of inactivity of the management body and in absence of regulation by legal provisions and bylaws, must be accorded to the shareholders representing one third of the corporate capital (Supreme Court, decision no. 10821/2016).


 

 The First Civil Section of the Supreme Court has ruled that, in case of inactivity of the management body, where legal norms and company bylaws do not deal with the matter, the right to call a shareholders meeting must be accorded to the shareholder holding at least one third of the corporate capital.

Preliminarily, it must be noted that the Italian Civil Code does not regulate limited liability companies (S.r.l.) in the same way as public limited companies (S.p.A.) for which in respect of the latter art. 2367 of the Civil Code allows the summoning of the shareholders meeting upon the shareholders’ request.

Art. 2367, applicable to the S.p.A., provides as follows: “The directors or the management body must call without delay the shareholders meeting, in case of request raised by the shareholders representing 1/20 of the corporate capital of companies listed on the stock exchange market or 1/10 of the corporate capital of other companies or the lesser percentage provided by the bylaws, and the request shall contain the items of the agenda”.

The Supreme Court is of the opinion that – following the 2003 corporate law reform – in general the purpose of the reform has been to identify the S.r.l. as a flexible model, and one designed to enhance the personal elements existing in small and medium-sized companies; the above must be combined with a system of law provisions allowing organizational solutions set forth in the bylaws, as provided for partnerships. The role of the shareholder has become a central issue of the system governing limited liability companies: now the shareholder has been given powers that previously were exclusively reserved to the directors.

In particular, the Court – with reference to the case at issue – drew a marked distinction between the regime governing the S.r.l. from that applicable to the S.p.A., and also eliminated the reference technique. The autonomy and potential comprehensiveness of the legislation governing the S.r.l. must therefore exclude the analogical extension of the procedure for the summoning of the shareholders meeting provided by art. 2367, applicable to the S.p.A., to the case of the S.r.l. (moreover, such an extension would be in conflict with the inflexibility of the different corporate models).

The decision of the Court must be seen as the result of a constant effort by professionals aimed at eliminating the risks of deadlock within companies in case of inactivity and obstructionism on part of the directors. Such risks arise, on the one side, from the inapplicability of art. 2367 of the Italian Civil Code to private limited liability companies, due to the strong diversity of these corporate models; and, on the other side, from the irrelevance in the present context of art. 2487 of Italian Civil Code, relating exclusively to the appointment and revocation of the official receivers (subsequent to the Court’s decision).

In conclusion, it is evident that the decision at issue represents a considerable innovation in the corporate scenario and, in particular, with regard to limited liability companies which have finally identified, in case of silence of the law and bylaws, an alternative procedure, represented by the right of the shareholders – holding at least one third of the corporate capital – to call the shareholders meeting in case of inactivity of the management body.


TANKRED THIEM ELECTED VICE PRESIDENT OF DAV ITALIA

18/10/2016

On the basis of a vast majority, German-Italian attorney Mr. Tankred Thiem has assumed the position of Vice President of the Italian section of the Association of German Attorneys. As part of his mandate he intends to strengthen the ties between the section in Italy and those located in Germany. He also plans on consolidating and widening the offer of legal education with specific reference to German-Italian relations.


 

In the course of the annual assembly held on Monday 17 October 2016 at the Straf Hotel in Milan, Mr. Tankred Thiem was elected Vice-President of DAV ITALIA, the Italian section of the Deutscher Anwaltsverein (DAV) (i.e. the Association of German Attorneys). With over 67.000 members, DAV is the biggest private legal association in the world. Founded in 1871, the association relies on a widespread organization throughout the entire German territory, in addition to 10 sections abroad. The activities of DAV include protection of the interests of its attorneys, the redaction of position papers concerning law proposals, active participation in the German and EU legislative process, as well as taking the stand on current issues that are relevant to the work undertaken by attorneys and, finally, education of its members.

DAV ITALIA, founded in 2007, is one of the foreign organizations with the highest number of members. It collaborates with other German institutions operating in Italy, such as the Italian-German Chamber of Commerce and the German consulate in Milan, and presents itself as a point of reference for German private individuals and companies who require general information. DAV Italia regularly provides its members and interested professionals the possibility of attending educational events on topics that are of relevance to Italian-German relations in all areas of law.