IT IS FORBIDDEN TO EXPLOIT MICHELANGELO’S DAVID’S NAME AND IMAGE WITHOUT AUTHORIZATION OF THE GALLERY OF THE ACADEMY OF FLORENCE
The Court of Florence, by order dated October 26, 2017 (RG.N. 13758/2017), stated, with reference to a travel agency which used the name and image of Michelangelo’s David for publicizing its business, the ban of use and reproduce on all the Italian and European territory of said image on flyers, sites and souvenirs, in the lack of authorization from the Galleria dell’Accademia of Florence.
In this case, a travel agency used the image of Michelangelo’s David for commercial purposes without ever trying to obtain the concession from the authority that has the property in hand, undoubtedly identifiable in the Gallery of the Academy in Florence.
The rule to be taken into consideration is the article 108 of Legislative Decree 42/2004 (Code of the Cultural Heritage) which makes subject to concession the reproduction of cultural assets for profit purposes. In fact, reproduction is free only if it is carried out without profit.
In the order the Court of Florence also ordered “the immediate withdrawal from trade and the destruction of all advertising material reproducing the image of Michelangelo’s David or parts of it, as well as all the tools used to produce and/or commercialize such products, everything with reference both to the company and to third parties which hold and/or have, however, the availability of such goods”.
The judgement of 8 September 2016 the Court of Justice (Case C-160/15) states in a very interesting argument because very common in the practice of surfing the web, namely the legality of hyperlinks according to the laws of copyright.
In the case in exam, there were some photographs protected by copyright and the company “Sanoma” had the authorization, on an exclusive basis, to exercise the rights and powers arising from the copyright.
Another website, without authorization neither by the author of the photographs nor by Sanoma, placed the photographs on the internet through an hyperlink to another website, not authorized to publish the photographs.
Assuming that authors have the exclusive right of authorizing any communication to the public of their work, the Court was asked to judge whether the inclusion in a website of an hyperlink to another site which shows works protected by the copyright (without authorization) constitutes a communication to the public, in violation of the copyright.
By one side the Court states that “It may be difficult, in particular for individuals who wish to post such links, to ascertain whether website to which those links are expected to lead, provides access to works which are protected and, if necessary, whether the copyright holders of those works have consented to their posting on the Internet”.
The Court identifies the lawfulness of the behavior in the fact that the person making the hyperlink to an unauthorized website was aware or not that the work was unlawfully published on the internet, in violation of copyright.
How to demonstrate such knowledge? The Court (point 51 of the judgement) points out that: “When the posting of hyperlinks is carried out for profit, it can be expected that the person who posted such a link carries out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that the posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder”. The presumption is until proved otherwise.
It is accordingly necessary, when the posting of a hyperlink to a work freely available on another website is carried out by a person who, in doing so, does not pursue a profit, to take account of the fact that person does not know and cannot reasonably know, that the work had been published on the internet without the consent of the copyright holder. If the person knew that the work had been published without the consent of the copyright holder, this constitutes violation of the copyright.
In the conclusion, the Court rules that: “in order to establish whether the fact of posting, on a website, hyperlinks to protected works, which are freely available on another website without the consent of the copyright holder, constitutes a “communication to the public” within the meaning of that provision, it is to be determined whether those links are provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website or whether, on the contrary, those links are provided for such a purpose, a situation in which that knowledge must be presumed”.
On 4 September 2016 the Italian Government and Alibaba, Chinese colossus of trading on-line, with more that 430 million users, have signed an agreement for the protection and promotion of Italian products.
The Ministry of Agriculture and Forestry stated that, thanks to this agreement, Italy is the only State in the world to have guaranteed to the PDO and PGI products the same protection that trademarks have on the e-commerce platform. The agreement with Alibaba to fight counterfeiting began last year and the numbers are impressive: it has been prevented the monthly sale of 99thousand tons of fake Parmesan cheese, 10 times more than the original production, or of 13 million bottles of Prosecco that did not come from Veneto region. With this agreement the protection is extended by B2B platform, accessible only to companies, to 2bc, assuring to 430 million users of the users of the network of Alibaba that they will buy real made in Italy.”
With regard to the repression of counterfeiting, the Ministry of Agricultural and Forestry states that: “In order to identify fake goods, the Ministry of Agriculture has set up a task force of the Inspectorate of repression frauds that daily searches for counterfeit products and report them to Alibaba. Within three days the ads are removed and the salespeople are informed that they are usurping the Italian geographical indications”.
The promotion of Italian products is equally important, starting with the one dedicated to wine, scheduled for September 9, 2016
Different classes of goods or services and confusion between trademarks.
When we file a trademark application we claim products and services we wish to protect as belonging to one or more classes, according to the Nice Classification of goods and services.
In this moment the Nice Classification consists of 34 classes (1-34) for products and 11 classes for services (35-45).
It is important to bear in mind that this classification is useful for administrative purposes and that the fact that some goods (or services) are included in the same class is not necessarily and indication of their similarity. In the same way, the fact that goods (or services) are included in different classes does not necessarily imply recognition of their diversity.
This principle has also been reaffirmed by the Italian Board of Appeals (judgment 14/14, appeal n.7339) which rejected a trademark application in class 43 (services for providing food and drink; temporary accommodation) considered confusingly similar to an earlier mark for port services in class 39 (transport; packaging and storage of goods; travel arrangement).
The Board of Appeal disagree the Examiner’s statement according to which there is not a similarity between the services in class 43 and those in class 39. On the contrary, the Board of Appeal stated that: “Through an evolutionary interpretation of the classes, otherwise locked in their original fixity, the activities related to the port, as evolved and developed in the reality perceived by everyone, not only do not exclude but also normally include the catering activities, in many different forms (self-service; taverns or restaurants; bars, clubs, pubs etc.). Therefore, it cannot be excluded the confusion only by reason of a formal diversity of classes, for which registration is claimed, without performing an analysis on the historical and evolutionary events of the activities and port services, as shown in the last decades of economic and social life of the West”.
The Italian “Corte di Cassazione” (Section I, May 25, 2016 n.10826) has recently had occasion to rule on the matter of the assignment of a patronymic trademark, consisting of the name of a stylist, and on the possibility that such stylist uses, after the assignment, new brands formed by its name in addition with further words.
The main issue can be summarized as follows: can a famous fashion designer, after selling his trademarks composed of its name, use new trademarks also containing his name? In the matter in exam the new trademark used by the designer was formed not only by his surname, but also by his first name (absent in the assigned trademarks), in addition to other verbal elements (LOVE THERAPY by ELIO FIORUCCI).
The Court of Milan affirmed the infringement of the assigned trademarks (in which there was the name “FIORUCCI”) by the trademark “LOVE THERAPY by ELIO FIORUCCI”.
On the contrary, the Court of Appeal of Milan considered that “the personal right to the name (guaranteed by article 22 of the Italian Constitution by article 6 of the Italian Civil Code and by ECHR) remains intact, even if it involves the assignment of the economic rights, so that it is impossible to think to a kind of “perpetual non-competition clause”. The Corte di Cassazione points out that in its previous judgement (n.29879 of 2011) stated the principle according to which “the commercial use of a patronymic name must be conform to the principles of professional integrity and, therefore, it cannot be done with the function of a trademark, namely distinctive, but only descriptive; this is the rule according to which the owner of a trademark cannot prohibit to a third party to use its name in the economic activity; as a result, there is counterfeiting when the contested trademark includes the protected patronymic, even if it is accompanied by other elements”.
The Corte di Cassazione also notes that patronymic trademark “generally is a strong mark and for this reason its inclusion in another trademark or trade name cannot be considered neither legitimate nor lawful, unless the use by a third party of its own name (which collides with a former trademark, registered by another party) is justified by the existence of a real descriptive exigency related to its activity, products or services”.
The Cassazione, therefore, annuls the judgment of the Court of the Appeal and establishes a new trial on the merits, taking into account the following principles of law:
- “In case of a distinctive sign consisting of a patronymic name and validly registered as a word mark, it is not possible to adopt an identical or similar name, neither as trademark nor as company name, not even by the person who has that name, because the right to the name has a compression in the economic and commercial activity, when the name has been registered as a trademark, first, and has become famous, then, thanks to the same stylist who has later assigned such mark”.
- “The inclusion, in a trademark, of a surname which coincides with the name of the person who has previously assigned a trademark (become famous) including such name, is not in accordance with honest practices if it is not justified, in a strictly limited extent, by the existence of a real descriptive need inherent to the activities, products or services offered by the person who has certainly the right to conduct its own economic, intellectual or creative activity but who has not the right to transform its activity in an activity parallel to that for which the earlier mark has been registered and played a remarkable distinctive function”.
On August 30, 2016 the system of opposition to trademarks shall enter into force in Mexico.
All trademark applications will be published in order to allow third parties to file an opposition to the registration of the mark.
Anyone will be able to oppose the registration of a trademark application on the basis of a prohibition under the Trademark Law of Mexico, without necessarily being the holder of a trademark application or registration and without the need to have rights on the opposed application.
The deadline for opposition will be one month from the date of publication of the trademark application.
The filing of the opposition will not suspend the process of the registration of the trademark: the arguments submitted during the opposition will be considered by the Mexican Trademark Office in order to take a decision on the registration of the proposed mark, but the office will not issue a specific decision on the opposition.
The decision on the registration of the contested mark (acceptance or refusal of the application) will be notified to the opponent to enable him to file other legal action against the mark as well as to know the grounds of the refusal of registration, if the application will be refused.
In the judgment n.10078 of 17 May 2016, the First Chamber of the Italian Supreme Court (“Corte di Cassazione”) reaffirmed a principle which is certain in Italian case law, namely that even slight changes are sufficient to exclude the counterfeiting of an earlier “weak” trademark.
A trademark is “weak” when it is conceptually linked to the distinguished product.
In this matter the holder of the trademark “Lovable Mimesis” (underwear) acted for infringement the owner of a trademark “Mimetic Papillon”, also used for underwear.
The infringement action was rejected by the Court of Appeal of Milan, who considered descriptive the term “mimesis” because having “merely evocative value of the characteristics of the product, made up of clothes adhering to the skin and invisible under clothes”. For this reason, the Court of Appeal considered the trademark “weak in reference to the word mimesis, with the result that it is prohibited only total reproduction, while slight changes of the term are sufficient to exclude the violation”.
The Supreme Court stated that the Court of Appeal correctly considered that “Lovable Mimesis” and “Papillon Mimetic” are complex marks, “in which the distinctive character is in the words Lovable and Papillon, both having the nature of a strong trademark, as they are of pure fantasy and lack of connection with the product (underwear), when, instead, the words mimesis and mimetic have a purely descriptive nature and, as such, are weak brands, likely to be used by third parties, provided that there are slight differentiations, not particularly relevant”.
The intensity of protection accorded to a trademark will vary in relation to its degree of originality and the weak trademark is characterized by the use of words, pictures or other signs which are coherent with the product (or service) distinguished by the mark.
On April 14, 2016 the European Parliament announced the approval of the Directive EU n.2013/042 for the protection of trade secrets.
There is a broad category of information which, although not having the requirements to be protected by the traditional tools of intellectual property (patent, models, copyright), are, however, an important economic resource for companies: for example, the result of research and development processes.
The purpose of the directive is to approximate the laws of the member States relating to trade secrets, also in order to make the European Union stronger towards third countries.
As stated by the Directive, trade secrets are the information characterized by the following requirements:
- it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or easily accessible to persons within the circles that normally deal with this kind of information;
- has commercial value because it is secret;
- has been subject to reasonable steps, under the circumstances, to keep it secret by the person lawfully in control of the information.
The Directive provides for the possibility that the courts of the Member States adopt, where required, interim and precautionary measures.
If a judicial decision is taken finding an unlawful acquisition, use or disclosure of a trade secret, the Directive provides for that the competent judicial authorities may, at the request of the applicant order against the infringer (article 11 of the Directive):
- the cessation of or, as the case may be, the prohibition of the use or disclosure of the trade secret;
- the prohibition to produce, offer, place on the market or use infringing goods, or import, export or store infringing goods for those purposes;
- the adoption of the appropriate corrective measures with regard to the infringing goods
With regard to damages, the Directive (article 13) requires to take into consideration all relevant factors, such as “the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other that economic factors, such as the moral prejudice caused to the trade secret holder by the unlawful acquisition, use or disclosure of the trade secret. However, the competent judicial authorities may also, in appropriate cases, set the damages as a lump sum on the basis of elements such as, at a minimum, the amount of royalties or fees which would have been due if the infringer had requested authorization to use the trade secret in question”.
Italy first Country in European Union for PDO PGI TSG
According to the data released in March by ISTAT (http://www.istat.it/it/archivio/183618) and updated to 31 December 2014, Italy confirmed its first place among the countries of the European Union for the number of PDO (protected designations of origin), PGI (protected geographical indications) and TSG (traditional specialties guaranteed), with 269 high quality food product (8 more than in 2013).
PDO PGI TSG. ISTAT noted the following:
- The regions with the higher number of high quality food products are Emilia Romagna and Veneto, while the most awarded sectors are vegetables and cereals, followed by cheese, extra virgin olive oil and meat preparations.
- The PDO AND PGI specialties recognized by the EU are widely spread on the whole territory. Some regions are particularly rich in PDO AND PGI; in Emilia Romagna and Veneto the recognized products are respectively 41 and 36. In the North Italy also stand Lombardy and Piedmont with 31 and 21 specialties, while Liguria and Valle d’Aosta have respectively 3 and 4 awards.
- In the center of Italy the greater number of names is detected in Tuscany and Lazio, both with 26 specialties. In the South of Italy the regions most awarded are Sicily with 29 products and Campania with 22, followed by Calabria and Puglia, respectively with 17 and 16 products.
- The Italian PDO recognized by the EU are 161, the PGI are 106 and the TSG re 2 (mozzarella and pizza napoletana).
- There are 13 areas that have received awards: Fresh meats; Meat preparations; Cheeses; other animal products; Vegetables and cereals; extra virgin olive oils; vinegars other than wine vinegars; bakery products; spices; essential oils; seafood products; salt and pasta.
- Compared to 2013, the animal breeding are reduced by 1%, while the invested area increased by 0,4%
- Unfortunately, the data also show that in 2014 the new inflows of workers are inferior to the outputs compared to the previous year.
In the Official Journal of the European Union of 4 March 2016 was published the Commission Implementing Regulation (EU) 2016/303 entering PANE TOSCANO (Tuscan bread) in the register of protected designations of origin and protected geographical indications.
In 2013 the United Kingdom and Belgium opposed the registration and stated that PANE TOSCANO must be considered a generic name.
The arguments of both opponents are summarized as follows: wheat harvested in Tuscany would not be different compared to wheat harvested in the rest of Italy; the processing of the grains to obtain the wholegrain flour type is similar to the one that takes place everywhere in Italy and Europe; the name PANE TOSCANO would be commonly used throughout Tuscany for several types of bread, which are presumably not produced according to the process defined in the application; in Italy PANE TOSCANO would be synonymous of bread without salt.
Despite the oppositions, the application for registration of the name PANE TOSCANO as a DOP was granted.
In accepting the request the European Commission states, at first, that “the name to be registered refers to the product “bread” and not to flour or wheat. It is therefore the product “bread” that is to be focused on, in order to verify whether it possesses the quality or characteristics essentially or exclusively due to a particular geographical environment with its inherent natural and human factors”.
The European Commission considered that the characteristics of the product were specifically mentioned in the single document and in the product specification, namely “its keeping qualities, its aroma of roasted hazelnuts, the “neutral”, i.e. unsalted, flavor of its crumb, its crunchy crust, its crumb’s irregular holed and white-to-ivory colour, its high nutritional value and digestibility due to the use of a mixture of different varieties of wheat low in gluten and with the nutritional value of the flour naturally containing the original wheat germ (unlike today’s normal practice of adding the wheat germ during processing), and to the historic absence of salt”.
These characteristics of the product were ascribed to the “natural and human factors prevailing in the geographical environment of the defined geographical area”.
With reference to the allegation that, in Italy, PANE TOSCANO would be synonymous with bread without salt is not supported by any evidence. At the same time, the European Commission stated that “the allegation that the proposed name PANE TOSCANO is commonly used throughout Tuscany for several types of bread which are presumably not produced according to the process defined in the application is groundless. The fact that a name for which an application for registration is submitted is found to be used with reference to products that are not covered by the rules included in the proposed product specification does not prevent the registration of the name. The purpose of the registration may lawfully be the harmonization of the methods of production of the product marked under a certain name.”
In the light of the foregoing, the European Commission considered that the name Pane Toscano becomes DOP should be entered in the Register of protected designations of original and protected geographical indications.