DIGITAL SINGLE MARKET DIRECTIVE: ARTICLE 17 MARKS A TURNING POINT FOR PROVIDERS OF ONLINE CONTENT SHARING SERVICE PROVIDERS

16/04/2019

The European Parliament, at its plenary session on 26 March 2019, has definitively approved the text that aims to update the regulation on copyright. Article 17 of the Directive, in particular, is aimed at online content sharing service providers (OCSSPs) and provides for significant changes with regard to their legal liability.

 

Within the legal framework that the provisions of the above mentioned Directive aspire to define – that is, a harmonised legal framework able to contribute to the good functioning of the internal market and that stimulates innovation and investment, also in the digital field – a particular importance is assumed by article 17, which concerns the use of protected contents by providers of online content sharing services. This article is addressed to providers of online content sharing services (OCSSPs) who, according to the definition contained in art. 2 of the Directive, have as their main purpose that of archiving and giving access to the public to large quantities of works protected by copyright or other protected material uploaded by their users, which the service organizes and promotes for profit.

First of all, it is interesting to note that paragraph 1 of Art. 17 expressly clarifies that the OCSSPs, in allowing users free access to protected works, carry out an act of communication to the public or an act of making available. This leads to the conclusion that they have a direct responsibility for their own activities, when they give access to illegal content uploaded by users (and if the conditions of paragraph 4 are met, which will be briefly described below).

The Directive would therefore seem to establish a general principle of liability of online content sharing service providers if they contribute to the dissemination of content protected by copyright law, without any authorisation from the rights holder. However, they have to bear a heavy burden of proof. OCSSPs could be exempted from liability if they were able to prove it together: a) made best efforts to obtain an authorisation, and b) made, in accordance with high industry standards of professional diligence, best efforts to ensure the unavailability of specific works and other subject matter for which the rightholders have provided the service providers with the relevant and necessary information; and in any event c) acted expeditiously, upon receiving a sufficiently substantiated notice from the rightholders, to disable access to, or to remove from, their websites the notified works or other subject matter, and made best efforts to prevent their future uploads.

Therefore, it seems that the only case in which the OCSSPs can clearly exclude its liability is when it has obtained prior authorisation from the rights holder. If this is not the case, then the OCSSP is obliged to implement technology to prevent the uploading of illegal content. Through appropriate technological implementation, the OCSSPs can avoid its responsibility by adopting a system whereby it can intervene immediately on services, following communications received from rightholders, to remove illegal content that has been uploaded, and also to prevent its future uploading (stay down).

Finally, it should be noted that the liability regime described does not apply equally to all online service providers as defined by the same Directive. In fact, the scope of Article 17, as specified in the recitals, exempts from those obligations providers of online content sharing services with an annual turnover of less than EUR 10 million, whose average number of unique visitors per month in the European Union does not exceed EUR 5 million.


LGV AVVOCATI PUBLISHES A CONTRIBUTION IN THE “LAW AND PRACTICE” SECTION OF THE GUIDE TO PATENT LITIGATION, YEAR 2019, OF CHAMBERS AND PARTNERS

12/03/2019

In the Guide to Patent Litigation 2019 of Chambers and Partners LGV, as a firm specializing in Intellectual Property, publishes a contribution on patent litigation.

 

Chambers and partners – the English company that deals with the rating of professional firms and individual professionals, both in Europe and globally – has published on its website, in the “Law and Practice” section of the Guide to Patent Litigation, year 2019, a contribution by attorneys Luigi Goglia, Brenda Villa and Tankred Thiem, established professionals in the practice of patent litigation https://practiceguides.chambers.com/practice-guides/patent-litigation-2019/italy/1-types-of-intellectual-property-rights-grant-procedure

The contribution reviews the forms of protection granted by the Italian legal system to inventions (patents for industrial inventions, utility models and know-how) and analyzes in detail the procedure for granting patents and utility models. It also deals – among other things – with matters relating to the time line of the procedure for granting such rights, the duration of intellectual property rights, the rights and obligations that arise for the holder of the intellectual property right and the means available in the event of refusal to grant the rights analysed.

The publication by the directory represents a further confirmation of the significant experience of LGV Avvocati in the field of patent litigation, an area in which the firm already has earned important recognition in the national as well as in international context and attributes to the firm a role of relevance, in an increasingly competitive global market.


THE ATTORNEY SIMONA LAVAGNINI GETS AN IMPORTANT RECOGNITION FROM CHAMBERS AND PARTNERS

08/03/2019

Simona Lavagnini, founding partner of LGV Avvocati, has been recognized as a leading professional for copyright in the new technologies field.

 

Chambers and partners – the English company that deals with the rating of professional firms and individual professionals, both in the European context, as well as in the global one – has confirmed the inclusion of the attorneySimona Lavagnini in the first bracket of the international ranking on copyright. In particular, Simona Lavagnini is indicated as an important professional in the field of copyright related to new technologies. Among the practices that have led to this recognition to the attorney Lavagnini, are highlighted in particular: actions to fight piracy, actions on copyright infringement and claims on unfair competition.

Her experience, strategy, reliability and availability are particularly appreciated by clients, who have contributed to the achievement of this important result. Specifically, Chambers and partners reports on a client’s review, particularly satisfied with the work of the attorney Simona Lavagnini, according to whom the latter: “She is really creative and produces interesting ideas, which is something we really appreciate”.

The high positioning in this prestigious directory, especially with regards to a constantly developing field such as copyright in new technologies, is paradigmatic of the competence and foresight of LGV Avvocati. In addition, this recognition further strengthens the presence and influence of LGV Avvocati in the field of copyright and IP intangible asset protection in the international context and gives the firm an important role in an increasingly competitive global market.


EU GENERAL COURT RULES THAT “CHIARA FERRAGNI” IS NOT CONFUSINGLY SIMILAR TO “CHIARA”

19/02/2019

In 2015 Serendipity S.r.l. filed an application to register the figurative sign “Chiara Ferragni” for the classes 18 and 25. The opposition filed by a Dutch company that holds the earlier Benelux word trade mark ‘Chiara’ registered in class 25 against the above trademark was found successful, as the EUIPO found subsisting likelihood of confusion. Subsequently, the GC annulled the EUIPO decision.

 

The General Court recently issued a ruling on the trademark case bearing the name of the famous Italian influencer. The case shows how vital trademarks are in the fashion industry. In the visual comparison of signs composed by word and figurative elements, word elements are considered to be, as a general principle, more distinctive than figurative elements; in particular, consumers would more likely identify the products by saying the name of the trademark, rather than describing its figurative element. However, in complex trademarks the figurative element may be as important as the word element, taken in consideration its shape, dimension, color or position.

The GC held that the figurative element of “CHIARA FERRAGNI” is very peculiar, as it represents a stylized eye with long black lashes; the position and the dimension of the eye make the figurative element predominant in the sign. Therefore, consumers would easily memorize it, perceiving it as an elaborate and original element of the sign. In addition, the element “Ferragni” is visually more important than “Chiara”. It follows that the earlier trademark “Chiara” and the sign “Chiara Ferragni” should have been considered similar to a low extent. Turning to the assessment of the aural similarity, it can be stated that consumers usually focus on the initial part of the sign, which is the same in this case. However, as “Chiara Ferragni” is also a given name and a surname, it cannot be affirmed that the public focuses more on the name rather than on the surname, considered that it is a foreign name for Benelux’ consumers.

Furthermore, just because the marks contain the same female name, this does not mean that the marks are conceptually similar. Indeed, the trademark applied for identifies and distinguishes a certain person, that is a person belonging to the Ferragni family, while the earlier trademark only refers to a name without identifying a certain person. Coming to the assessment of likelihood of confusion, the GC found that the visual similarity of the signs plays a central role in determining the likelihood of confusion, as the products of class 18 and 25 are usually sold in self-service shops. In this type of situation, consumers’ attention is certainly captured by the blue eye sign, rather than by the word “Chiara”.

Despite the existence of a similarity between the products at issue, the differences between the signs, in particular from a visual standpoint, are sufficient to exclude the subsistence of any risk of confusion in the perception of the relevant public.


BREWMASTER WIPES THE SMILE OFF MORETTI FOR “LA BIANCA” SIGN. (BUT THE CASE IS STILL OPEN).

14/02/2019

A famous German brew master, holder of the German trademark “la Bianca” and assisted by LGV partners Luigi Goglia and Tankred Thiem, successfully opposed the registration of a similar European trademark filed by the notorious beer producer Heineken (today’s holder of the Italian brand “Birra Moretti”). The decision, issued by EUIPO after the long opposition procedure, confirmed that the prior sign “la Bianca” is a legitimate ground for refusing the registration of the sign “La Bianca” filed by Heineken Italia S.p.a.

 

Con On January 30th, 2019, EUIPO opposition division rejected the application for the registration of the figurative sign “La Bianca” filed by Heineken S.p.a. in 2016. It was found that it was lacking the novelty requirement as the German brew master already registered and used the sign “la Bianca” for beer and similar products.

In first place, EUIPO ascertained that the prior sign was genuinely used by the brew master from 2011 to 2016 to identify his own craft beer. In second place, it was found that the sign filed by Heineken for registration was confusingly similar to the prior German trademark, so the application was rejected.In particular, EUIPO held that the distinctive element in both signs was the identical expression “La Bianca”, while the figurative and word element of Heineken’s sign (the notorious Moretti’s mustache bearing the general trademark “Birra Moretti” and “Luigi Moretti”) are not likely to strike at the attention of the average consumer. Therefore, the signs were considered extremely similar – not to say identical – as long as the products – beer – were found to be related.

The EUIPO decision is of “political” importance, as it shows that the trademark hold by a craft brew master is enough to combat the monopoly of multinationals in the field of beer production and trade. The decision also outlines that companies tend to create “special” signs or add further elements to their “general” trademarks to characterize new product lines. In this case the prior sign “la Bianca” could be confusingly be considered a new line of Heineken beer, which is not true. Heineken further claimed that it should be taken into consideration the reputation in the field of its general trademark “Birra Moretti”. The office rejected the argument on grounds of the EU Trademark Regulation, according to which the exclusive rights on the sign are conferred by the registration of the sign. Hence, whatever happened before the application was filed is not relevant for the registration.

The decision is not definitive, and it has already been appealed before the appeal commission of EUIPO. Who knows whether the German brew master will finally wipe the smile off Moretti for “la Bianca”?