By Michel Jolicoeur of Racheli & C., Milan, Italy
Due to the dramatic growth of the virtual economy on the Internet and the acceptance of e-commerce in the mainstream marketplace in Italy over the last two years, the issue of protection of intellectual property rights on the Internet has acquired new importance and is having a profound impact on the application of IP laws by practitioners and the courts.
The authors wish to briefly overview the main areas of protection currently available to owners and operators of Internet web sites.
Italian IP laws have traditionally established protection for computer software on the basis of copyright law, and patent law in cases where the software is required as an integral functional element of a machine or for the functioning of an industrial method.
However, in response to the current trend in the United States of patenting software relating to the operation of commercial web sites, there is a recent trend to file patent applications in Italy for computer software which provides a method for the creation, processing, managing, distribution, protection and other operations of files or data over the Internet.
Although the same is occurring with regards to patent applications before the European Patent Office, in the author’s view the practice before the latter is complicated by the fact that oppositions may be raised on the grounds that the claims of the patent are too wide or that the subject-matter is not patentable.
In Italy the issuance of the patent is virtually assured since there are very few precedents of software patents and because the Italian Patent Office does not conduct any novelty examinations or hear opposition proceedings.
To the author’s knowledge there are no case precedents before Italian courts of infringement or nullity cases based on a software patent.
This may be advantageous to the applicants of software patents in the U.S., which have a definite lead in time of the patenting of software, to extend their applications to Italy.
The wide-spread existence of trademarks on the Internet is of significant importance to trademark owners and to those who tend to seek benefit from the claimed jurisdiction-free world of the Internet.
While the jurisdictional issue has not been often dealt with by Italian courts, there is already a body of decisions which recognise that the use of a word, whether as a part of a second level domain name or as a sign or mark on a web page may constitute trademark infringement where an unlawful and un-authorised use may create a risk of confusion or association with a registered trademark, or may constitute an act of unfair competition.
With regards to jurisdiction, the general applicable criteria under Italian trademark law are the domicile of the defendant or the forum delicti, i.e. the place where the alleged infringement was committed.
The Court of Milan, in a recent decision dated February 14, 2000, Gianni Versace S.p.A. v. Alfredo Versace et al., has applied the forum delicti test to determine its jurisdiction. The respondents in this case were accused of having the Versace surname advertised on their web site in a way that would create a likely risk of confusion with the applicant’s registered Italian trademark. Although the court recognised that the exposure of the web site was international, it held that its jurisdiction was sufficiently established by the fact that the web site was viewable and directed to consumers within its territorial jurisdiction:
Given that the plea of lack of territorial jurisdiction raised by the respondents Angelo MAIORANO and GRUPPO MANIFATTURE ITALIANE S.r.l. does not appear well-founded, on the grounds that the range of diffusion of the advertising message shown on Internet – according to the provision of Article 57 of the Trademark Law - is considered to encompass (as well) the territory of the district of the Court resorted to;
Therefore, it is recommended that any web site owners who intend to market there goods or services to Italian consumers be aware of due diligence requirements concerning potential conflicts with Italian, Community and International trademark valid in Italy.
On another note, the Italian Registration Authority has recently adopted a new registration policy which allows any physical or legal person to register an unlimited number of ".IT" domain names, which need not be used for a web site but merely "parked" on a hosting server. This change in policy is clearly favourable to registered trademark owners who can thereby block domain name squatters from the Internet.
The contents of the web site can be considered an artistic or literary work protectable by copyright, although the question remains whether information that is downloadable without any restriction or cost can be deemed to be the subject of an implicit license. This issue is particularly important in the case of MP3 technology and the Italian Society of Authors and Editors (SIAE) is currently working on new rules for the protection of copyrighted works on the Internet.
The European Commission has also been working on a draft directive to respond to this burning issue and strengthen the copyrights of the music industry and of recording artists, as well as of producers of film and software, with special provisions regarding the downloading and making of private copies. The European Council of Ministers is scheduled to meet on March 15, 2000, to approve this draft directive, which is hoped to be in force by the summer 2000.
The readers are invited to contact Racheli & C. for any further information relating to the protection of information technology in Italy.
Copyright Racheli & C. 2000, all rights reserved.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.