Recent Court of Milan orders
Dynamic injunctions in Italy
Efficiency of dynamic injunctions
Comment
In two orders granted this year, the Company and IP Division of the Court of Milan has issued preliminary injunctions against a number of internet service providers (ISPs) that provided mere conduit services used to broadcast live football matches (National A Division and National B Division of the Italian League) in violation of the rights of the claimants (ie, the National A League and the National B League) and their exclusive licensee, which intervened in the proceedings.
The two orders expressly referred to and applied the principles set forth by the Court of Justice of the European Union in its judgment of 27 March 2014 in Case C-314/12. What is noteworthy, however, is that the injunction required the ISPs "to take immediately the most appropriate technical measures in order to effectively inhibit, for all recipients of their services", not only the access to the websites and services already identified in the appeal for the illegal content that was the subject of the proceedings, and for those objectively and subjectively attributable to the same services, but also the access to:
- "the same services... regardless of the domain name used", insofar as they are "referable to the same services and resolving to the IP addresses (current and future) identifying the 'Main Servers' and/or the 'Delivery Servers' underlying them";
- "any other possible IP address - provided that it is unambiguous - which allows access to the aforementioned domain names";
- "the aforementioned domain names, even if (access) is associated with a top-level domain other than those already indicated which makes available to the public the same unlawful content" referred to in the services covered by the order; and
- "the aliases resulting from changes to the second-level domain relating to all current showcase sites and those associated with the main server" which refer to the same content and in which is "objectively detectable... the subjective link to the subjects responsible for the illegal activity currently taking place".
These orders are perfect examples of dynamic injunctions as applied to the web, especially as they dealt with some practical aspects of the enforcement thereof. However, this type of injunction is not uncommon in Italian case law in IP matters in general.
As a starting point, it should be noted that, under Italian law:
- Both an injunction and withdrawal from the market (although the latter is quite unusual) may be ordered either in urgency proceedings (Article 131 of the Code of Industrial Property) or in proceedings on the merits (Article 124 of the code), implying the duty for the recipient to buy infringing products from the resellers.
- Both are usually backed by a fine for each violation of the order, to be paid to the rights holder. Violation of an injunction is also subject to criminal penalties (a prison term of up to three years or a fine) under Article 388 of the Criminal Code, the scope of which has recently been expanded.
- The injunction (either final or preliminary) may be extended to all the means of undue use of the infringed IP right, taking into account the range of conceivable violations and, in case of identity of kind and species of the prohibited conduct, any variations that are merely extrinsic and not characterising cannot exclude the operativeness of the ruling (see Supreme Court of Cassation, Case No 8080, 25 July 1995); this has the effect of a blocking/dynamic injunction.
It is necessary for the claimant to formulate its claims in a reasonably broad manner (ie, it must be sufficiently wide, but not fully undeterminable), since Italian law precludes the courts from granting measures that are more extensive than those requested by the parties (as well as undeterminable measures). Disputes relating to the identification of conducts that constitute a violation of an injunction must be resolved by the court that issued the injunction by order not subject to appeal.
In a landmark decision dated 7 January 2020, the Company and IP Specialised Division of the Court of Bologna issued a pan-European order prohibiting a company that marketed Italian agricultural products in Europe from using the trademark COOP ITALY and the name COOP Italy Trade Srl, in violation of the EU trademark COOP ITALIA, owned by a giant of large-scale retail. The order prohibited not only the continuation or repetition of already-committed offences, but also the use of any distinctive sign including the dominant element of the infringed trademark (ie, the word 'coop') on the Internet (including in domain names), regardless of the website on which the offence (ie, the offer and advertising of products bearing the infringing trademark, and the use of the infringing company name) was committed.
This order was effective in the whole of the European Union, and included a fine for any violation and for any day of delay in complying with the order.
Efficiency of dynamic injunctions
In Italy, the effectiveness of blocking/dynamic injunctions is further increased by the following:
- Article 132 of the Code of Industrial Property, as amended in 2010, expressly states that injunctive relief (including a fine or an order for withdrawal from the market) granted in urgency proceedings may become final, unless one of the parties starts proceedings on the merits. Therefore, proceedings on the merits are necessary only to request the court to additionally order the infringer to pay compensation and surrender the profits resulting from the infringement.
- If (as in the case decided by the Court of Bologna) the injunction is backed by a fine for each violation to be paid to the rights holder, the latter may proceed to directly enforce the credit corresponding to the penalty calculated based on the violations committed.
In this respect, on 17 January 2003 the Supreme Court of Cassation (in Case No 613) confirmed a decision of the Bologna Court of Appeal dated 3 March 1999, which had held that it was possible to proceed in executivis (in foreclosure) without prior quantification of the amounts requested by way of penalty. This principle has now been expressly codified.
Therefore, the owner of the infringed IP right may directly seize the infringer's assets for an amount corresponding to the penalty calculated by the owner based on the number of breaches (or the duration of the breach). In this case, it is up to the author of the alleged violation to file a complaint to contest such violation and ask the judge to suspend payment of the penalty. To this end, the infringer may file an opposition against the seizure, which is followed by a trial on the merits to establish the infringement; the foreclosure is suspended during the trial only if it appears prima facie that the right to proceed in executivis is unfounded.
Arguably, these peculiarities of Italian law have proved to be suitable to make blocking/dynamic injunctions particularly effective, and should thus also be considered by other member states.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email ([email protected]). The IP Law Galli website can be accessed at www.iplawgalli.it.
This article first appeared on WTR Daily, part of World Trademark Review, in December 2021. For further information, please go to www.worldtrademarkreview.com.