NEW ADMINISTRATIVE REMEDIES AGAINST ONLINE INFRINGEMENT COME FROM THE ACTIVITY OF THE ITALIAN ANTITRUST AUTHORITY AND A NEW REGULATION ON WEB PIRACY
In Italy new effective tools have just become available for IPRs holders, “victims” of pirate websites offering either copycats of original products or fake copyrights works, often at rock bottom prices, heavily harming designers and producers.
This time, the Antitrust Authority (AGCM) – also in charge for the repression of unfair commercial practices – and the Telecommunications Authority (AGCOM) took the lead. Since a few months, AGCM has become more and more active in the fight against websites which systematically sell copycats, often reproducing also the visual aspect of the original websites: for the purposes of fighting the spreading online of unfair trade practices, thus protecting both the market and the consumers from deception, AGCM has the authority (of course limited to the Italian territory and enforced with the support of the Postal Police, but anyhow effective) to shut down clone-websites. In this respect, after several reports by INDICAM (the Institute of the Trade Mark Owner Association for the Fight against Infringement, i.e. the most important Italian private association active in the fight against counterfeiting and piracy), AGCM put offline hundreds of clone-websites, and other similar measures are following at a fast pace (for further reference, see the Authority’s decisions no. 24166/13, 24167/13, 24329/13, 24353/13, 24354/13, 24381/13, 24582/13, 24583/13, 24647/13, all available at http://www.agcm.it).
While AGCM focuses of websites selling copycats of products mainly protected as registered trademarks or designs, the telecommunication Authority pointed the finger at copyright infringement, a tool largely used for the protection of the industrial designs, including those related to the lighting industry (just think about the well-known “Arco” lamp by the Castiglioni brothers, produced by Flos which gave rise to the landmark decision by the CJEU of January 27th 2011 in the case C-168/09, or the new Flou’s creation under Natevo trademark). AGCOM recently adopted the resolution No. 680/13/CONS, “Regulation on the protection of copyright on the internet” (available at http://www.agcom.it, due to enter into force on March 31 next), which provides a fast, economic and simplified procedure for the removal of copyright infringing online contents, especially in urgent cases. According to such procedure, the rightholder has the possibility to submit a complaint to AGCOM through a dedicated form on the website of the latter. In case of infringement for financial gain, the Authority shall act with a simplified procedure (to be concluded within 12 days from the complaint), by mean of a communication to be sent to the uploader of the infringing material and to the web page/website manager, requesting the removal of such infringing material within 3 days from the communication. Should the uploader or the manager fail to comply with the request, the AGCOM has the authority to ask the ISP to remove the infringing material if the website is located in Italy, or to disable the access to the website if located abroad.
However the Regulation has been challenged before the Administrative Court for Lazio, on the grounds that the adoption thereof exceeded the scope of the AGCOM capability and we are now waiting for this issue be assessed by the Court.
We should also consider that, even though those new procedures are very attractive to the right holders, because of the low costs involved, since the steps following the first warning are automatic, they show their limits especially in the follow-up. In fact, illicit websites and contents, once removed, often re-appear almost identically on different websites. Further, in more and more cases, the counterfeiters simply remove (temporarily) from the website the copycats affected by a judicial injunction, leaving online (and keep selling!) the other clones, in a sort of “copycats rotation”, which allows them to earn enough money to make the infringements still convenient and which, in many cases, becomes a real “industry of fake”, based in the Far East and operating on demand, which manufactures and imports into Europe only the goods ordered by the consumers, often unaware of the counterfeiting and happy to make a good deal, even though at the expenses of the creator of the counterfeited artwork.
Again in Italy, a possible solution for dealing effectively with such phenomena, thus making counterfeiting unattractive, has been recently identified in a sort of class action brought by all producers victims of the same counterfeiters, to obtain broad-spectrum judicial remedies, related to all or almost all the clones manufactured by a single counterfeiter, so as to inflict in a single blow a relevant damage and to make not convenient further violations. In particular when Community trademarks and designs are concerned, a viable legal basis for that way of proceeding comes from the rules on pan-European effects of the injunctions grounded on violations of these rights (see CJEU of April 12th 2011 in the case C-235/09, “The scope of the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trade mark court whose jurisdiction is based on Articles 93(1) to (4) and 94(1) of that regulation, extends, as a rule, to the entire area of the European Union”).
To this regard, a pilot legal action is currently under consideration by an important Italian trade association, but similar operations are conceivable in almost all trade areas, as long as they are carried out extremely seriously and thus preceded by a professional juridical work together with an intelligence activity aimed at rebuilding the counterfeiting chain and identifying the individuals involved and the counterfeiters’ headquarters in Europe – and, if possible, their current accounts (see the Italian chapter of 2014 Anticounterfeiting Guide for further details on the available tools in Italy).
Such initiatives might represent, as a whole, a “leap in quality” in the fight against online counterfeiting, based on the increased sensitivity of the Italian Judges towards such phenomena, as proven by the extremely detailed report on online counterfeiting and liability of the subjects involved, recently done by Judge Marina Tavassi, President of the IP and Corporate Division of the Court of Milan (the most important one in Italy, also for number of cases dealt with). Therefore Italy seems to be in a key moment: a better awareness of their rights and of the tools for defending them could really make the difference for the operators of the industry facing the challenges of online infringement.
CESARE GALLI