1. Deep-Linking, Framing and Metatags Under the Italian Law
The development of the Internet in Italy begun only in the late 1990s and Internet use has only recently become widespread. As a result Italian law does not specifically regulate linking of websites and there have been few court decisions in this area of law; the relevant legal literature mainly analyses the most well-known foreign case law.
However, case law in connection with the Internet related issues has increased in the past few years and it is now possible to summarize the legal framework which applies to certain common Internet procedures that present relevant criticalities under a legal point of view.
The procedures on which we focuses in this article are deep-linking, framing and the use of metatags.
The majority of Italian commentators agree that free linking is generally allowed if the link leads to a third party’s website homepage (a process known as ‘surface linking’).
However, many commentators consider that deep-linking (i.e., linking to the internal pages of a third party’s website) may expose the owner of the linking website to liability, particularly if the linking website does not provide full information about the linked website.
Deep-linking is generally illegal if it breaches the deep-linked party’s trademark rights, copyright, database right, etc.
2.1 Deep-Linking and Unfair Competition
Article 2598 of the Italian Civil Code gives a very broad definition of unfair competition, including (i) the use of names or trademarks that may cause confusion with those of a competitor, (ii) the appropriation of a competitor’s values, and (iii) the direct or indirect use of business methods which may cause damage to a competitor, (iv) etc.
The rules on unfair competition apply to enterprises that compete with the damaged company.
"Competition" is to be understood in a broad sense, to include the activity of potential competitors and competitors at different points in the supply chain, with the same ultimate target customer.
The Italian Supreme Court has held that companies are in competition if they have the potential customers or may sell the same goods/services in future.
As trademark and copyright infringement are often also acts of unfair competition, unfair competition claims and intellectual property infringement claims may overlap.
Some Italian lower courts have found that unfair competition rules may apply if linking prevents easy identification of the owner of deep-linked contents, (i) creating confusion between the linking website and the linked website and (ii) diverting customers away from the linked website.
Deep-linking may be also be illegal if it has an economically detrimental effect on the linked website; for example, it may reduce advertising revenue, as most advertisements are placed on a website's homepage, which is bypassed by deep-linking. This rationale was applied in the United States in Ticketmaster Corp v Tickets.com, Inc.
2.2 Deep-Linking and Contractual Breach
Article 1341 of the Italian Civil Code states that a standard agreement whose terms are not negotiated by each user, only if such terms are known to the user - or could be ascertained with normal diligence -before the contract is signed. Certain clauses (e.g., limitations of liability)must be specifically approved by a separate signature.
2.3 Trademarks, Copyright, Database Right, Data Protection, Tort
The use of a third party’s trademark as a link to that party’s website is illegal under the Italian Industrial Property Code (Legislative Decree no. 30 of February 10, 2005) if it creates confusion among consumers or takes advantage of the reputation of a third party’s trademark. Therefore trademark infringement is likely to occur if a deep-link includes the unauthorized reproduction of a trademark.
Deep-linking to a website which contains copyrighted content may mislead the web user as to the identity of the copyright owner. In these circumstances, deep-linking may be deemed to breach copyright.
As Italian Copyright Law protects databases which are the result of a creative process, deep-linking to a website containing such a database may also breach copyright. In addition, Italian Copyright Law grants a sui generis right to the maker of a database (even if such database is not "creative"), if the database has required substantial investment to collect, verify or present the contents. Linking to databases containing personal data may breach the Italian Data Protection Code (Legislative Decree no. 196 of June 30, 2003).
Unauthorized deep-linking may also expose the owner of the linking website to liability for damages caused to the linked website under the blanket tort provision in Article 2043 of the Italian Civil Code.
Framing involves inserting the contents of a website into a frame within a different website.
Framing is very similar to deep-linking, but the fact that contents of the linked website’s contents are displayed within the linking website, can mislead users about where the framed contents originate.
Italian law does not specifically regulate framing. However, the majority of Italian commentators consider framing to be subject to the same problems as deep-linking outlined above and the few court judgement to have considered it – such as the Tribunal of Genoa’s decision in 2000 that framing is a form of unfair competition – are consistent with this view.
Metatags are HTML elements that provide information about websites, allowing search engines to find and to categorize them correctly. Metatags are inserted into the HTML code of the webpage. They are invisible to a user looking at the website, but are read by the search engine and can divert Internet users from a website to another.
Although they differ from deep-linking and framing, metatags present similar problems.
In 2001 the Tribunal of Rome held that the use of a third party’s trademark in a metatag is a trademark infringement if it causes confusion among consumers. This was the first decision In which it was held that the law grants protection to trademarks even if their unauthorised use is invisible. Commentators agree that the Industrial Property Code also applies to metatags.
Italian lower courts have applied rules on unfair competition to metatags which cause confusion with a third party’s website and divert costumers.
In principle, metatags which use copyrighted material could also be found to breach intellectual property rights. However, as metatags are invisible, it is unlikely that their use could be said to constitute copyright infringement.
The use of metatags may also constitute subliminal or deceptive advertising, both of which are prohibited by the Italian Consumer Code (Legislative Decree no. 206 of September 6, 2005).
Furthermore, the owner of a website which uses a metatag may face liability under Section 2043 of the Italian Civil Code for damages caused to a third party’s website (e.g., fewer hits and a corresponding fall in advertising profits).
Claims for unfair competition or intellectual property infringement are tort claims under the Italian law.
Italian court generally have jurisdiction over tort claims relating to harmful events which occurred in Italy. Moreover (pursuant to Article 22 of EC Regulation no. 44/2001 and Article 120 of the Industrial Property Code), Italian courts have jurisdiction over claims regarding trademarks registered in Italy, regardless of the place where the parties involved in the litigation are established.
The same criteria apply when determining the substantive law which governs the claim (Article 62 of Law no. 218 of May 31, 1995).
Therefore the claimant (i.e., the owner of a deep-linked website) may argue that Italian law applies and Italian courts have jurisdiction because the harmful event occurred in Italy.
Many cases at Italian Supreme Court point out that the "harmful event" may be deemed to occur both where (a) the damaging action (i.e., the behavior triggering the damage) took place; or (b) the place where the harmful consequences are felt.
However, under prevailing case law, a harmful event may be deemed to occur:
- where the claimant company is established, as the tort causes prejudice or loss of value to the claimant’s assets;
- where the defendant is established or (according to a very much criticized case law) where the server used by an infringer is located; or
- in a case involving trademark infringement or unfair competition in the context of e-commerce, at any place where Internet access is available.
Therefore, the claimant (i.e., the owner of the deep-linked website) could probably engage in forum shopping and sue the defendant (i.e., the owner of the deep-linking website) in Italy or elsewhere.
Where EC Regulation no. 44/2001 applies, Articles 27 and 28 prevent claimant from bringing proceedings against the same EU-based company in different EU courts; otherwise, a in some case (when EC Regulation does not apply), the claimant’s lawyers could have "one bite at the cherry" and sue the defendant in more than one territory under different laws.
Although Italian rules on trademarks, copyright and unfair competition are very strict, Italian courts usually are very prudent in granting and calculating damages.
Framing, deep-linking and metatags have rarely been considered by Italian courts. However, a body of case law is starting to develop and it is possible to establish a framework to determine whether and to what extent deep-linking, framing, metatags are legal.
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.