The pictures of notorious people may be used on commercial websites without their consent (or, at least, this is what the court of Bologna said)

In 1992, for the first time in more than 141 years of America’s Cup, an Italian boat was able to dispute the famous sailing race, so becoming famous all over the world as the first boat from a non-English speaking team to fight for the victory. Not only the most passionate sailors know that the boat was “Il Moro di Venezia”, Paul Cayard its skipper and that the sailing team was leaded by Raul Gardini.

This story was re-evoked in a proceeding for violation of image and personality rights started by Paul Cayard and the heirs of Raul Gardini before the Court of Bologna (full text here) to stop the unauthorized use of pictures, names and logos of Il Moro di Venezia and its protagonists on a commercial website (and related promotional Facebook pages) managed by a brand called “Il Moro di Venezia” that was unrelated to the sailing team of the famous boat.

According to the Court, however, the personality rights of an individual, that include the ways in which such individual is presented to the public, shall reflect the social perception that common people have of his/her personality and is not violated insofar as there is no misinterpretation of his/her intellectual ideological, ethic and professional heritage, as it emerges from his/her personal story as known.

Moreover, with particular reference to the names and images of Il Moro di Venezia and its team that were used on the website, the Court affirmed that the plaintiff had no right to stop their use on the basis that the contested elements were not used as trademarks and the link created with them on the resistants’ web pages was not abusive or detrimental of other rights.

The Court seems to recall the case law affirming that, besides misrepresentation, there is a further case when there could be violation of personality rights. Reference is made to the cases where the image and name of an individual are used in advertising in association with a brand, in so far as their use suggests a patronage to the brand which, instead, is lacking. A parallelism with trademark law could be found in the provisions inhibiting to deceive the public about the qualities of a sign and to create in the consumers’ mind an association between a notorious trademark and a product, thus taking an unfair advantage of said trademark.

This further case was, however, excluded by the Court of Bologna. It thus seems, by reading this decision, that anyone can make use of the names and images of third parties, also on a website aimed at promoting their commercial activity, when such person is depicted as the society expects him/her to be, suggesting a support of the related brand. This, even if a link between such person and the activity is created in the public in absence of any will from the depicted one or, as it was in the present case, with his/her express disapproval.

Many decision, on the contrary, affirmed that any individual has the right to control the uses of his/her name, image and any other aspect of his identity, even if the same were made available to the public with their previous consent, because the interested party could not approve their further use and, in particular, a commercial connection suggesting that he/she is connected to a brand (see Supreme Court decision of 6 December 2013, no. 27381; Court of Milan, decision of 21 May 2002 and Court of Rome, decision of 15 September 2007).

It’s a bit scary thinking about the consequence of the decision of the Court of Bologna that seems to be very permissive as to the possible uses of names and pictures of a person. It would be reasonable, we believe, extending the concept of distortive use as including the use on a commercial website that has not been approved by the person in question or, even worst, is expressively discouraged.

Court of Bologna, decision No. 2637/2015, 9 September 2015, Ivan Gardini, Eleonora Gardini, Maria Speranza Gardini and Paul Pierre Cayard v. Punta della Maestra S.r.l., Overseas Property LLC, Yacht Club Il Moro di Venezia and Rama S.n.c.

Oracle v Google: fair use defense saved web developers!

On 26 May 2016 a jury in the District Court for the Northern District of California unanimously upheld that Google’s use of Oracle’s APIs constitutes a “fair use” under the U.S. Copyright Act (full text here). The battle between Oracle and Google begun in 2010 when Oracle sued Google for using JAVA APIs, owned by Oracle, without permission. API stands for Application Programming Interface and is a set of instructions which allows different types of software to communicate to each other. When Google started the implementation of its Android Operating System (OS), despite writing its own version of JAVA, it copied some features of Oracle’s APIs in order to facilitate app developers, already familiar with them, in writing programs for Android. Therefore Oracle claimed a copyright on JAVA APIs  and the infringement of the copyright by Google.

On 31 May 2012 Judge Alsup (Northern District of California) ruled that APIs cannot be subject to copyright under the U.S. Copyright Act (full text here) which does not protect purely functional things, i.e. “process, system or methods of operation” (17 U.S. Code § 102). He motivated that in the situation at issue the taxonomy “is composed entirely of a system of commands to carry out specified computer functions”, therefore, “to accept Oracle’s claim would be to allow anyone to copyright one version of code to carry out a system of commands and thereby bar all others from writing their own different versions to carry out all or part of the same commands”. Oracle appealed and on 9 May 2014 the U.S. Court of Appeals for the Federal Circuit reversed the ruling (full text here), establishing that JAVA APIs are copyrightable, while leaving open the possibility of a “fair use” defense in Google’s favor. In reaching its conclusion, the Federal Circuit underlined that “a set of commands to instruct a computer to carry out desired operations may contain expression that is eligible for copyright protection”. Therefore, even if a computer program is functional by definition, according to the Court, can be protected by copyright as long as it is original and its underlying idea could have been expressed in multiple ways by the author. On October 2014, Google filed a petition to the U.S. Supreme Court requesting the review of the Federal Circuit’s decision. The U.S. Supreme Court denied Google’s petition on June 2015. Therefore, the case returned to the District Court and a jury agreed that Google’s re-implementation of JAVA APIs is protected by fair use.

This decision constitutes a big relief for all developers out there which are used to re-implement each other’s APIs in performing their everyday work. A different finding by the jury could have caused a chaos in the “programmer’s world” as it could have been the begin of numerous copyright claims with a consequent slowdown of the IT progress, at least in the long run. Nevertheless, the most founded decision was Judge Alsup’s ruling in 2012, when he ruled that computer programs cannot be protected by copyright law. In fact, all programs are functional for their own nature, therefore the consideration that the same functional scope can be performed by a variety of software is without relevance in order to establish the copyrightability of computer programs. What matters from a juridical standpoint is that in computer programs there is not an actual (but only a fictious) dichotomy between idea and expression (which is the core requirement for copyrightability), instead the two merge with the consequence that APIs should not be protected by copyright, as Judge Alsup’s ruled in 2012. Nevertheless, Oracle plans to appeal, let’s see what’s next!

Elisabetta Coronel Vera

(IPlens’ guest)

District Court for the Northern District of California, 26 May 2016, Oracle America, Inc. v. Google, Inc.

The Court of Rome reintroduces the notion of “active hosting provider”: new uncertainties on the ISP liability rules

By a decision published on 27 April 2016, the Court of Rome held TMFT Enterprises LLC- Break Media (“Break Media“) liable for copyright infringement for the unauthorized streaming of audiovisual content owned by Reti Televisive Italiane S.p.A. (“RTI“).

Break Media argued that it was a passive hosting provider because it merely stored information at the request of a recipient of its service. Pursuant to Article 14 of the E-Commerce Directive 2000/31/CE, as implemented in Italy by Legislative Decree 70/2003, hosting providers are not liable for stored information if they are unaware of its illegal nature. Moreover they are not required to remove illegal content unless ordered to do so by the competent public authorities.

Further, the provider outlined that the notice sent by RTI was generic, failing to report the location (URL) where the infringing content were placed. Therefore, it imposed no legal obligation to inform the competent authorities under Article 17 of the Directive and no liability for contributory copyright infringement could be found.

In addressing the hosting provider’s arguments, the Court of Rome found the website owner to be liable.

In line with the previous Italian case law (cf. Court of Rome, October 20 2011, VVBcom.Limited and Choopa LLC; Court of Milan May 19 2011, RTI v Yahoo! Italia and Court of Milano, January 20 2011, RTI v ItaliaOnline Srl) the Court of Rome applied the distinction between active and passive hosting providers, based on the analysis of the activities performed by the entity in question.

The decision held that if a hosting provider is directly involved in the website’s operations by allowing users to upload videos and other content, it is deemed to manage the information and content that its users provide. In this case, the ISP would be regarded as an active hosting provider, subject to a duty to remove illicit content if so requested by the rights’ holder.

On the contrary, if a hosting provider merely provides storage and connectivity to specific websites, and plays no active role in managing information online, it should be regarded as a passive hosting provider, which is not jointly liable with website owner for copyright infringement unless it fails to comply with a removal order issued by the competent administrative or judicial authorities or is aware of the illicit nature of the content on the hosted website and fail to alert the competent authorities.

According to the Court, Break Media was an “active hosting” of media content. Indeed, the activity of Break Media was not limited to the activation of technical procedures for enabling the content to be loaded to the platform (“passive hosting”), but provided a complex service of advertising exploitation of the content.

As a result, the liability exemptions established by Article 14 of the E-Commerce Directive were not applicable.

Although RTI’s notice demanding the removal of the infringing materials from the platform did not identify the specific location of the content to be removed, the defendant was effectively aware of the infringing nature of the content. This knolwedge was deemed enough in order to affirm the provider’s liability.

Based on the above, the Court condemned the provider to pay damages for € 115,000, approximately corresponding to € 1.300 for each minute of unauthorized publication.

Reintroducing principles affirmed by the aforementioned case law, the current decision distanced from the decision of the European Court of Justice on the SABAM case (24 November 2011 in Case C‑70/10, Scarlet Extended SA v. SABAM et al.) according to which national authorities are prohibited from adopting measures which would require an ISP to carry out general monitoring of the information that it transmits on its network.

Based on the SABAM jurisprudence, the Court of Appeal of Milan, January 7 2015, overturning the Court of Milan first instance decision in the case RTI v. Yahoo! Italia, took the view that the distinction between ‘active’ and ‘passive’ hosting providers should be regarded as misleading, being envisaged in neither the E-Commerce Directive nor in the Italian implementing Legislative Decree 70/2003. Consequently the fact that an ISP provides for services to organize contents published by its users should not change its role.

The issue provides matter of clarification for the Supreme Court.

For further comments look at the interesting analysis carried out by Maria Letizia Bixio on dimt.it

Jacopo Ciani

Court of Rome, 27 April 2016, Reti Televisive Italiane S.p.A. v. TMFT Enterprises LLC- Break Media

Are Concept stores eligible for copyright protection?

With a decision issued on 13 October 2015 (full text in Italian here), the Court of Milan stated that concept stores are eligible for copyright protection, even if they consist of a simple and straightforward design.

magi

The decision is the last of a long court-battle fought between two companies active in the cosmetics field.

Here the relevant facts. Kiko S.r.l., one of the protagonists in the Italian market of cosmetics, contacted an architectural firm asking them to project the interiors of their new stores, to be innovative and strongly distinctive. When the project was completed, approximately 300 stores were opened in Italy with a minimalist design, featuring essential symmetries and clear lines.

Afterwards, Wjcon S.r.l., one of Kiko’s competitors, opened a number of new stores in Italy that, according to Kiko, recalled the concept, design and colours characterizing the project of its stores.

Various decisions followed, with different reasoning and that, in essence, declined any type of copyright protection to the concept of Kiko’s stores. In 2010, by a decision as of 3 May 2010 (full text in Italian here), the Court of Milan rejected Kiko’s copyright and design infringement claims, resulting from the copying of all the essential features of its retail stores arguing that Kiko and Wjcon’s stores were similar only for details that were common and not distinctive in the field of cosmetics’ stores.

A similar ruling was issued a couple of years later by the Court of Rome (decision of 5 September 2012, full text in Italian here), that rejected Kiko’s copyright infringement claim, arguing that concepts stores do not fall under the scope of protection of copyright law, unless they have artistic value. The decision maintained that concept stores could not be protected under copyright law as works of architecture, but only as designs. Given that Italian Copyright Law provides that designs could enjoy copyright protection insofar as they present artistic value, the existence of a valid copyright on Kiko’s stores was excluded. As a matter of fact, the latter did not prove the existence of such a value for its stores.

With the October decision the Court of Milan followed a third approach. In short, the Court rejected the arguments according to which Kiko’s concept stores’ features were not original since they were common in the field and consisted of functional elements (and, hence, not copyrightable), and clearly affirmed that interior designs may be protected as works of architecture under copyright law as long as it is possible to identify an original act of creation.

According to the Court, originality may not be excluded even if the project consists in essential or simple features, part of the cultural heritage of the field, since the threshold for originality for concept stores is not different from the usual one, which is indeed quite low.

With particular regard to interior designs, originality must be recognized every time the project is not merely functional and the choice, coordination and organization of the singular elements of the store are arranged to obtain a new and creative final result.

In the Court’s view, Kiko’s shops were undeniably characterized by creative elements and their overall concept was peculiar and original. Even if such elements were already known in the field, originality may be inferred from the fact that no competitor had ever arranged before the features of Kiko’s shops in such a way. The fact that Wjcon copied the overall impression of Kiko’s concept stores, with merely minor differences, is not relevant in excluding copyright infringement considering that almost all the original solutions of the project where copied.

A distinct solution – in-between the approach requesting artistic value and the one satisfied with a low originality – had previously been adopted by a third group of decisions, granting copyright protection to interior design only when the architectural elements composing it were inextricably bound to the real estate and, nevertheless, original (see Court of Milan decision of 31 May 2006, Court of Milan decision of 10 July 2006 and Court Catania decision of 17 June 2000).

The complexity of the protection of concept stores under copyright law is demonstrated by the number of different theories proposed by the various decisions and is further confirmed by the provisional decree issued by the Court of Appeal of Milan as of 26 January 2016, where the October decision of the Court of Milan has been appealed by Wycon. The Court of Appeal decided to suspend the enforceability of the Court ’s decision, recognizing that the protection of concept stores under copyright law is a complex issue.

A last note: recently, also EUIPO Board of Appeal had the chance to examine Kiko’s shop and, with a decision dated 29 March 2016 (proceeding no. R 1135/2015-1), declared it not eligible for protection also under trademark law. We’ll see what’s next.

Maria Luigia Franceschelli

Court of Milan 13 October 2015, RG n. 80647/2013, Kiko S.r.l. vs Wjcon S.r.l.

US 2nd Circuit holds that Google Books does not infringe copyright

Nearly two years after the US District Court for the Southern District of New York decision on the Google Books Library Project, the US Court of Appeals for the 2nd Circuit confirmed that the scanning activities of Google within its Library Project are to be considered a fair google-books-featured1-500x236use of copyright works under §107 of the US Copyright Act (full text here). The Litigation was brought against Google by the Association of American Publishers (AAP) and the Authors’ Guild, on behalf of authors whose books Google had digitized without permission, claiming that Google’s digital copying ofentire books, allowing users through the snippet function to read portions, would infringe author’s copyrights, providing consumers with a substitute for the original works.

In 2012, the AAP and Google concluded a settlement agreement, but this did not arrest the ongoing litigation between the Authors’ Guild and Google.

Judge Pierre N. Leval held among other things that Google’s making of a digital copy to provide a search function is a “highly transformative use”, with the meaning set forth in Campbell v. Acuff-Rose Music, Inc. (510 U.S. 569, U.S. 1994) to “add something new, with a further purpose or different character, altering the first with new expression, meaning, or message”.

In particular, the court said that Google’s book search function was transformative because it “augments public knowledge by making available information about the plaintiffs’ books without providing the public with a substantial substitute for matter protected by the plaintiffs’ copyright interests in the original works or derivatives of them”. Even if the snippet reveals some copyright–protected authorial expressions, the brevity and the cumbersome, disjointed and incomplete nature of the snippets just helps users to evaluate whether books falls within the scope of their interest, but does not allow to make them a competing substitute for the original.
A unanimous three-judge panel rejected the Author’s Guild’s argument that Google’s distribution of the digital copies to libraries exposed the books to risks of loss. On the contrary, the court said that Google Books did not have a strong effect on the potential market for the books and that any losses would eventually address interests unrelated to copyright.
If the decision will be upheld by the Supreme Court, it will predictably become a landmark ruling in copyright law. Its long term effects could be relevant. In addition to the public benefits of Google Books, which expands access to books and allows scholars to analyse huge amount of data, the decision might open the door for creating similar types of digitization projects involving copyrighted works. In this regard, it will be interesting to carefully follow if and how the decision will travel outside the United States, especially in those legal systems which does not have a fair use clause.

Predictably, in any case, the decision will not meet with unanimous praise. The decision proposes an extensive application of the transformative use doctrine, which could be interpreted as a lack of consistency concerning how the degree of transformativeness is to be assessed. This point could be matter for further guidance by the Supreme Court.

In the meantime, while Google heaved a sigh of relief, the next candidate is already on the horizon. It is the online trading platform Amazon, subject to both antitrust investigations and further calls for regulation. But this is another story…

Jacopo Ciani

The Court of Turin rules about authorship in copyright: toward protection of advertising ideas through moral rights?

A recent interim decision of the Court of Turin (full Italian text here) in a copyright dispute faced an interesting issue concerning the concept and scope of right to co-authorship, hence also a moral right pursuant to art. 20 of Italian Copyright law (Law No. 633/1941).

In a nutshell, Mr. Pagani, a former employee of the advertising company Leo Burnet, claimed to be the author of the “creative idea” from which Fiat advertisement “Fiat 500 cult yacht” (which was awarded, among others, the Cannes Lion 2014 at the International Festival of Creativity) was produced. He expressed this idea in a script exposed during a meeting at Leo Burnet. The proposal was discarded by Fiat. Four years later the script was revived and elaborated by two other employees of Leo Burnet to produce the advert Fiat 500 cult yacht. Credits on the advert were then attributed to these two employees.

Taking aside the question whether scripts may be autonomously protected as creative works, the Court of Turin considered that (i) advertisements can be the subject of copyright protection, as works characterized by innovative ideas or new form of expression of previous ideas; (ii) a video advert is a complex work, which includes visual and audio elements; (iii) conception of the advert is a crucial phase within the creative process: the project of the advert constitutes the “synthesis” to be developed during the production of the video; (iv) Mr. Pagani’s script (as mean of expression of the advert idea) included all the main elements that characterize the final advert: the promotional message, its way of expression (i.e., the particular environment, the narrator’s voice, the final advertising claim) and the targeted public.

In light of the above, Mr. Pagani’s script expressed more than a mere idea and contributed decisively to the final advert. Thus, the Court ordered to rectify the credits of the advert including Mr. Pagani among the authors and to notify the interested parties.

This decision is far from granting copyright protection to mere ideas, since protection of Mr. Pagani’s idea was conditioned to (i) the expression on a physical medium (i.e., the script) and (ii) the presence of all the main expressive elements of the final advert. However, it confirms a flexible view in acknowledging (co)authorship to creative contributions of a work (on a similar ground, see Court of Milan 21 October 2003, which considered co-author the scriptwriter who conceived the characters of a comic).

Francesco Banterle

 Court of Turin, 31 March 2015, Riccardo Pagani v. Leo Burnett Company S.r.l.

ECJ: the Owner of an Online Database not Protected by Copyright or Sui Generis Right May Limit its Use by Contract

On January 15, 2015 the Court of Justice of the European Union (ECJ), in Ryanair Ltd v PR Aviation BV, C-30/14, handed down a decision concerning the interpretation of Directive 96/9/EC on the legal protection of databases (full text here). The case concerned the unauthorized extraction of flight data (so called ‘screen scraping’) from Ryanair’s website by the PR Aviation, which operates a price comparison website where users can also book a flight on payment of commissions. Access to Ryanair’s website requires acceptance of the air company’s T&Cs, by ticking a box, which prohibit unauthorized ‘screen scraping’ practices.

Ryanair brought proceedings against PR Aviation before Dutch courts for infringement of copyright and sui generis right on its database as well as breach of contract. Upon preliminary ruling requested by the Dutch Supreme Court, the ECJ ruled that the Directive 96/9/EC is not applicable to databases which are not protected either by copyright or by the so-called sui generis database right granted to the maker of the database (whether Ryanair’s website may be entitled to such protection shall be determined by the competent national court).

Therefore, according to the ECJ, mandatory exceptions to restricted acts laid down by Articles 6 and 8 of the Directive (allowing the ‘lawful user’ of the same to use the protected database without the author’s or maker’s consent, in certain cases and if certain conditions are met) do not prevent the database owner from laying down contractual limitations on its use by third parties, while the same contractual limitations are null and void vis-à-vis lawful users of those databases which benefit from copyright and/or sui generis right protections.

While the interpretative principle outlined by the ECJ is actually not very striking (insofar as it is rather clear from the literal text of the Database Directive that the legal regime implemented by it – including the mandatory rights of ‘lawful users’ – only apply to those databases which can be protected with copyright or the sui generis right), it is important to highlight that, according to general principles of contract law, any contractual provisions governing the use of unprotected databases may only be binding on third parties who accepted those provisions (and that, accordingly, should be deemed to be already aware of their content) and, conversely, cannot bind any third parties extraneous to the contractual relationship with the website owner. In the Ryanair case discussed above, the ECJ makes clear that the company that had ‘scraped’ Ryanair’s flight data without authorization had previously accepted Ryanair’s general T&Cs by ticking a box to that effect. What about if ones were to take the disputed flight data not from Ryanair’s website but from the price comparison’s website? In this scenario, Ryanair’s T&Cs, notably the ‘screen scraping’ prohibition, should not be deemed to apply.

Federica De Santis

Court of Justice, 15 January 2015, C-30/, Ryanair Ltd v PR Aviation BV, C-30/14

The Court of Appeal of Milan declares Yahoo! video-sharing platform a passive hosting provider under the E-Commerce Directive

In its recent decision on a debated case (full text in Italian here), the Court of Appeal of Milan clarified that Yahoo! video-sharing platform (no longer active) shall be considered a passive hosting provider and may benefit of the ISP limited liability regime under the E-Commerce Directive.

The Court overruled the first instance decision and extended the safe harbour provisions also to “evolved” hosting services: adopting advanced automated functionalities for hosting third parties’ contents is not enough to be qualified as an “active” provider. Additionally, ISPs may be held liable exclusively if they do not activate after receiving a detailed take down notice. Finally, the decision excluded the possibility to impose general filtering obligations on ISPs.

The Court stressed the need to adopt a reasonable interpretation of these principles with the aim of preserving areas of freedom on Internet and updating legal definitions to technological developments. As affirmed by the ECJ (see decisions Telekabel, Netlog, Scarlett, etc.), the ISP discipline must seek a fair balance among opposite interests: provision of new online services, copyright protection, and individual fundamental rights (e.g., privacy and freedom of expression). Copyright protection is not an absolute right and its enforcement shall be measured in light of a “proportionality” principle.

Thus, this decision further aligns the Italian case law to the ECJ interpretation. A step forward for the harmonization of the EU national courts’ case-law.

Francesco Banterle

Court of Appeal of Milan, decision No. 29/2015, 7 January 2015, Yahoo! Italia S.r.l. and Yahoo! Inc. v. RTI (Reti Televisive Italiane) S.p.a.