5G Technology: Speed, Data and Liabilities.

Matteo Molesti - Partner

We are celebrating the undoubted positive aspects linked to the use of this amazing new technology, to be applied in many different and heterogeneous fields of application, nevertheless we know that the introduction of fifth generation mobile telephony will give rise to new scenarios of exposure of the population to radio frequency electromagnetic fields that will be emitted in frequency bands (694-790 MHz, 3.6-3.8 GHz and 26.5-27.5 GHz) very different from those currently used for mobile telephony (from 800 MHz to 2.6 GHz).

Without prejudice to the impact of great innovation, utility and profit on a large scale (the auction, for example, will bring the State 6.4 billion euros in 4 years), some considerations on the possible harmful effects of 5G on primary health and environmental goods must be made.

In fact, studies published on the subject certainly do not tell us anything in relation to the impact and risks in the medium to long term, limiting themselves to a disclaimer " available data does not suggest particular problems for the health of the population connected to the introduction of 5G - therefore not in terms of certainty or robust probability of its harmlessness - only in the short term (see 5G electromagnetic emissions and health risks by Alessandro Polichetti - Centro Nazionale per la Protezione dalle Radiazioni e Fisica Computazionale, Istituto Superiore di Sanità, Rome).

This certainly stems from the fact that the frequencies that will be used for 5G have been the subject of fewer studies than those used by current telecommunications and broadcasting technologies.

Therefore, it is first and foremost essential that the introduction of this technology is accompanied by careful monitoring of exposure levels (as is already the case with current mobile phone technologies) and that research on possible long-term effects continues, possibly increasing.

Compared to current technologies, the 5G network is based on an extraordinarily high number of planned antennas (small cells), the very high output energy used to ensure their diffusion, the extraordinarily high frequencies, the apparent high-level interaction of the 5G frequency on ions, including the groups responsible for the cellular ion pumps. Therefore, its possible danger to health and the environment is supported from many quarters - rightly or wrongly.

The conclusions of the European Council on the importance of 5G for the European economy and the need to mitigate related security risks (14517/19 of 3.12.2019) state inter alia that the 5G network security approach must be comprehensive and risk-based. 5G security is considered to be a continuous process that starts with the selection of suppliers and lasts throughout the production phase of the network elements and the lifetime of the networks.

It seems that today we are still far from a judgement of harmlessness or probable harmlessness in the medium-long term, moving rather within the thorny perimeter of the judgement based on risk which, at the moment, would seem to be the most remote but which, in the absence of certain data, could well - over the years - "rise" to a possible if not probable risk.

Now, the World Health Organisation, the European Commission and the National Institute of Health, for example, do not seem to have yet taken the "possible risk" into adequate consideration, respecting the precautionary principle, when the available results on the existence of biological effects from exposure to electromagnetic fields - including 5G - and the scientific evaluation that does not allow to determine with certainty the risk, are most probably already sufficient to apply this principle, define the exposed subjects as potentially vulnerable and re-evaluate, at least partially, the current institutional conclusions.

On this basis, a moratorium for the implementation of 5G on the whole national territory would probably be desirable until at least an active involvement of the public bodies in charge of environmental and health control (Ministry of Environment, Ministry of Health, ISPRA, ARPA, Prevention Departments) is properly planned, preliminary risk assessments according to codified methodologies and a monitoring plan of the possible health effects on exposed subjects, who should in any case be adequately and adequately informed of the potential risks or the current rate of lack of knowledge in the medium-long term.

In other words, players and institutions should avoid that 5G could turn out to be a kind of experiment in the long run because it would bring a heavy consequence in dowry: the liabilities borne by the State and by the players themselves which, in a few years time, could be called to compensate jointly and severally a large number of subjects for the injuries and damages etiologically derived (or caused), according to a probabilistic judgement, from the harmful emissions and high frequency electromagnetic fields of 5G, if and to the extent that their harmfulness to health and the environment is actually ascertained.

In a scenario that can in some ways be assimilated mutatis mutandis - forty years ago it was blood and plasma, today it is electromagnetic fields - the State and hospital bodies have had to, and continue to, compensate the injured parties and their relatives for hundreds of millions of euros, basically for not having adequately supervised and for having culpably failed to apply the rules that in any case imposed (in their position of guarantee and by virtue of the precautionary principle) the control of blood and blood products and the screening of donors.

This economic data, in addition to the social cost of the violation of absolute, unavailable and primary ranking assets, should be taken into proper and timely consideration alongside that of the billion-dollar profits from the auctions and the speed of interaction of the new network.

The Italian Supreme Court recognizes the Burberry Check as a famous trademark.

Laura Bussoli - Senior Counsel

With the recent judgement no. 576/2020, the Supreme Court has accepted the reasons of the English fashion house Burberry in the case for counterfeiting its - now we can say it - "famous" brand with an ornamental motif.

In the contested decision, the judges of the Court of Appeal of Rome had followed a "bizarre" argumentative procedure in order to exclude the appeal of the crime of infringement of the above mentioned trademark: and in fact, if on the one hand the appeal judge had established - unlike the judge of first instance - that it was not necessary for the purpose of infringing the penal rules on counterfeiting, that the words Burberry and the relative word mark were affixed on the Scottish motive, on the other hand he had denied the appeal of the crime of counterfeiting due to the unsuitability of the above mentioned figurative mark to create a univocal link with the English fashion house.

With this last judgment, the Supreme Court confirmed the decision of the Rome Court of Appeal in the part of the ruling that excludes the need to use the words "Burberry" on the fabric for counterfeiting purposes, considering that "trademark infringement also occurs in cases of partial reproduction of the trademark where it is likely to create confusion with the earlier registered trademark".

However, the Court then observed, in order to overturn the appeal decision, that this is particularly true in cases where the earlier mark is a well-known mark - i.e. when it is "known to a large part of the public and can be immediately recognized as relating to the goods and services for which the mark is used".

Therefore, there do not seem to be any doubts about the recognition of Burberry's reputation as an ornamental motif brand and its ability to distinguish and originate from the products on which it is affixed.

Despite the fact that the case therefore refers to a criminal offence (counterfeiting offence under Article 473 of the Penal Code) which protects public faith and does not concern the actual confusion of the public, this decision represents an important precedent for Burberry, as it openly recognizes the well-known character of the trademark and thus broadens its sphere of protection.

How to "transform" a Company into an "innovative start-up" under Italian Law.

Mattia Raffaelli - Partner

Stefano Bonacina - Associate

Under Italian Law, an innovative start-up is a company whose exclusive or predominant corporate purpose is the development, production and marketing of innovative products or services with high technological value. The Italian system set forth certain requirements and grants certain concrete benefits connected to this particular type of company.

However, not everyone knows that it is possible for those who have already set up a company to transform it into an innovative start-up and to benefit from its advantages.

Transformation" is possible provided that certain requirements are met.

The conversion into an Innovative Start Up does not constitute a real corporate transformation and it is therefore not necessary to follow the complex and costly procedure set forth for this specific extraordinary operation (notary fees, advertising requirements, etc.).

However, it is essential to verify compliance with certain requirements and to proceed with the preliminary verification of all phases of the "transformation" process.

Verification of the corporate purpose

The first requirement to be verified is related to the corporate purpose of the existing company, as it is necessary to evaluate the possible modification of the same before finalizing the change. The regulations in force provide, in fact, as a requirement for innovative start-ups, to have "as exclusive or prevalent corporate purpose, the development, production and marketing of innovative products or services with high technological value".

This analysis is particularly delicate but, if carried out carefully, it allows to save the costs connected to the notarial deed of change of the corporate object.

General requirements and term for the "transformation”

At the same time, the company must proceed with the transformation no later than 5 years (60 months) from the date of incorporation and must meet the requirements of common innovative start-ups (e.g. not distributing or having distributed profits), while at the same time undertaking not to exceed 5 million annual turnover and to continue not to distribute profits for the entire period during which it maintains this corporate form.

There are three other requirements required by current legislation:

• compliance with a predetermined percentage of research and development expenditure;

• 2/3 employees with a master's degree;

• company is the owner or licensee of a patent or intellectual property right.

However, it is sufficient that only one of these can be configured to proceed with the relative variation in innovative start-ups.

The procedure

The transformation process does not require any particular bureaucratic formalities and is entirely telematic, although assistance from a professional with adequate regulatory experience is obviously advisable.

In fact, the first step consists in the electronic compilation by the company's legal representative of the innovative startup self-declaration model. Once the form has been filled in, in order to register the company in the special section of the Register of Companies, the form must be digitally signed and sent electronically together with the Single Communication to the Register of Companies.

It should be remembered that this declaration must be renewed periodically by filing it within 30 days of the approval of each financial statement and in any case within six months of the end of each financial year in order to certify the permanence of the legal requirements.

With regard to the Single Communication, in the "VARIATION" section, a large number of data must be entered relating, for example, to the activity carried out, the corporate purpose and research activities, and this information must also be updated promptly in the event of changes.

Finally, it should be noted that, for the purposes of registration in the special section of the Register of Companies, innovative start-ups are automatically considered to be registered in the special section of the Register of Companies following the completion and submission of the application in electronic format.

From Cor Coster to Mino Raiola and Jorge Mendes: who are Sport agents and how are their services regulated?

Roberto Ninno - Senior Counsel

Carlotta Pecora - Trainee

Cor Coster, Mino Raiola, Jorge Mendez are immediately referable to the world of soccer and precisely to the - commonly known - "sports agents", more correctly defined sports agents in relation to the existing rules?)

But who are the sports agents and, above all, what are the rules, that regulate their field of action and protect their interests?

With the Budget Law of 2018 (Law 205/2017, art. 1 paragraph 373) and in implementation of the Prime Ministerial Decree of 23 March 2018 and subsequent amendments and additions, the National Register of Sports Agents was established at the Coni.

From the aforementioned Decree, the Regulations for Sporting Agents, issued by CONI in 2019 and recently amended by resolution of the National Council no. 127 of 14 May 2020, and the Regulations issued - in the field of football - by the FIGC on June 10, 2019, will be analyzed here the procedures for access to the category, the exercise of the office of agent and any invalidity of the same, as well as the causes of cancellation from the register, in addition to the discipline of sports agents established and domiciled.

Sports Agents are considered to be all those who "relate two or more persons for purposes:

1. the establishment, modification or termination of a relationship having as its object a professional performance;

2. the conclusion of a contract for the transfer of professional sports performance;

3. membership in a national professional sports federation".

Minimum subjective requirements for registration in the National Register are:

1. Italian citizenship or citizenship of another member state of the European Union or non-member state of the European Union with a regular residence permit;

2. full enjoyment of civil rights in the absence of disqualification, incapacitation, bankruptcy;

3. possession of a secondary school diploma or equivalent qualification;

4. absence of convictions for non negligent crimes in the last five years prior to enrolment.

The aspiring sports agent in possession of the above requirements, in order to be enrolled in the National Register, must necessarily take a qualifying examination articulated in a general test, which takes place at the CONI, and a special test, which takes place at the national professional sports federations.

The manner in which these tests are held is governed respectively by Articles 4 and 5 of the Prime Ministerial Decree to which reference.

The person who validly passes the two tests may submit a request for registration to the national professional sports federation where he or she has taken part in the special test which, within the following 20 days, shall issue the agent with a certificate of registration (see Art. 6 of the Prime Ministerial Decree).

The agent - who has obtained this qualification - may work in one or more national professional sports federations with which he is registered.

Any assignment given to a person not registered in the National Register of Sports Agents in the manner provided for by law shall be considered null and void (see Art. 7 of the Prime Ministerial Decree), without prejudice to the provisions of Article 348 of the Italian Criminal Code on the abusive exercise of the profession.

Contrary to what previously provided, therefore, the nullity affects only the assignment conferred and not the entire "sports performance contract, transfer contract or membership with a Federation".

The registered agent then has, like most professionals, the obligation of constant updating through participation in courses organized and accredited by the national professional sports federation in which he operates, and the obligation to renew the annual registration on pain of cancellation from the National Register.

Other causes of cancellation from the National Register are, as expressly indicated in Article 10 of the DPCM:

i. the occurrence of a cause of incompatibility provided for in the CONI regulations;

ii. the absence of one of the subjective requirements set forth in article 2 and listed above;

iii. the deletion from the Federal Register as a result of the failure of any of the requirements that may be required of each national professional sports federation, provided that the agent is not validly registered in the Federal Register of another national professional sports federation.

The above-mentioned regulations (Regulations for Sporting Agents - CONI, the DPCM of 23

March 2018 and the FIGC Regulations of 10 June 2019) also regulate two other figures of Sporting Agents:

• EU agents;

• non-EU agents.

EU agents are those who, as Italian citizens or citizens of another Member State of the European Union, have obtained the title of agent in another Member State of the Union by passing tests equivalent to those required by Italian law.

Therefore, qualified to operate in another member state of the European Union and within the corresponding national sports federation, established sports agents are registered in a special section of the National Register and can operate without any limitations using the title recognized abroad (within the EU borders). After three years from the registration in the special section, established sports agents who are in good standing and who have carried out the profession of sports agent in Italy in an effective and regular manner (five assignments per year for three years) may apply for registration in the Federal Register and in the CONI Register without being subject to a qualification examination.

Non-EU agents, also called domiciled sports agents, are instead those non-European citizens who have obtained the title of sports agent in a non-EU country and who can operate in Italy only after domiciliation with an agent duly registered in the national register or in the federal register of the relevant federation.

The latter may operate always and only by explicitly indicating the title recognized in the country of origin adding the name of the agent registered in the national register where they are domiciled.

The discipline provided for non-European/domiciled sports agents also applies to those Italian or European citizens qualified within the EU borders but with different proofs ("not equivalent") to those provided for by Italian law.

Can an anonymous work be protected as a trademark?

Gianpaolo Todisco

According to a recent decision of the EUIPO (Intellectual Property Office of the European Union) it would seem not to be the case: the rejection by the Office of the request for trademark cancellation made by the Full Color Black (manufacturer of greeting cards).

This all started when, in 2014, Banksy decided to register his famous work "The Flower Thrower" as a trademark with the European Union; it is a mural made in Jerusalem in 2005 and still wants to remember how wars and battles should be fought with the flower of hope and abandon violence. In accordance with his line of action characterized by irony, provocation and marketing strategies, the famous British writer has registered the work as a trademark to protect any products distinguished by the famous work.

Howeverthe British greeting card company Full Colour Black, sued by Banksy for counterfeiting, claimed that the trademark should be cancelled because it never intended to use it on any products. This was the argument used by Full Color Black's attorney to exonerate her from the 2018 copyright infringement charge. Well, with the decision of 14 September 2020 the EUIPO rejected the artist's request because, according to the Community Trademark Regulation, in order to claim its right on those images it is necessary to leave the anonymity.

To renounce anonymity, however, would damage the aura of mystery that surrounds him. Banksy has the opportunity to appeal within two months of the ruling, but the legal discipline on the matter makes it clear that the Writer risks losing the protectability of all other works if he chooses not to disclose himself.

Smart Contract and Blockchain: what they are, how they work and their compliance with GDPR.

According to the definition of art. 1321 of the Civil Code, a contract is "the agreement between two or more parties to establish, modify or terminate a legal asset relationship". A smart contract is instead a "piece of code" - a software - that executes an agreement between its parties if certain conditions are met.

On the basis of these simple definitions it is easy to note that while contracts in the legal sense of the term require the parties to play an active role - i.e. the performance of specific actions for the fulfilment of obligations - smart contracts are "self-executing" because, once the conditions are met, the outcome of the desired transaction is automatically obtained on the basis of the terms incorporated in the code. It is therefore possible to see that in a smart contract - unlike what might happen in a legal contract - a delay or failure to fulfil obligations is technically impossible.

On the basis of these considerations it can be argued that in a smart contract it is not necessary that there is a prior trust between the parties and that there is a third party who is entrusted with the power to coercively impose performance in the event of a breach. All this is possible because the trust component - at the heart of the legal contract - is replaced by the implicit transparency of the Blockchain infrastructure on which the smart contracts are placed and operate.

Blockchain: transparency and lack of authority

The Blockchain can be defined as a set of blocks linked together in an immutable way and that record information using a cryptographic system. This infrastructure allows parties with no previous contractual (and therefore trusted) relationships to carry out transactions securely and without the supervision or control of a centralized authority.

The development of blockchain technology has contributed to the spread of smart contracts by enhancing some of their fundamental characteristics.

Being stored in the public system and distributed, transactions that take place in Blockchain can be verified and validated by all participants in the network. From this it follows that the security of the system is greatly increased, since any change, alteration, deletion of a transaction should be replicated in each distributed registry. Therefore, the smart contacts implemented on Blockchain are virtually unchangeable and are not subject to any external interference.

These mechanisms also allow unknown parties to carry out transactions without the need for a trusted third party on which network participants should otherwise rely to perform and enforce mutual obligations. The lack of a centralized third party also leads to a reduction in transaction costs, as no fees are retained by any intermediary (e.g. financial institutions).

Using smart contracts implemented on blockchain is now a reality in many sectors, including financial and insurance markets, real estate, commercial agreements and copyright management.

Leases could also benefit from blockchain technology: the lessor could provide the lessee with a digital key to be delivered in exchange for an electronic payment. The operation would be considered extraordinarily secure because only if both the electronic key and the payment are actually made available (as verified by hundreds of participants in the blockchain system) the transaction will be carried out.

Oracle: bridge between virtual and real

In most cases, the execution of smart contracts is activated through the reception of information collected from institutional sources located in the real world and which is entered into the Blockchain system through a "bridge" - called oracle.

Oracle is a structure that connects what is in the chain of blocks from what is outside it, acting as a bridge between off-chain and on-chain events. The external data used by an oracle can derive both from events in the "real" world (for example, tracking a shipment) and from the digital environment (stock market data and other public indexes).

To understand how Oracle works, it is interesting to analyze the use of smart contracts in the insurance market. A policy designed to ensure coverage of losses resulting from earthquakes could benefit from a smart contract component. In this situation, the oracle would have the function of retrieving relevant information in the real world - for example, the seismic magnitude value directly from official government sources - and feeding it into Blockchain. In this way, the amount of compensation to be paid to the insured could be determined automatically without the need for any documentation to be produced by the insured. This mechanism is also suitable for reproduction in other contexts such as delayed or cancelled flights insurance.

Blockchain, Smart Contract and GDPR

All data entered into Blockchain are pseudonymized (suitable for revealing the identity of users through a reidentification process) and therefore fall within the scope of recital 26 of the GDPR, which requires the application of the European Regulation to all information relating to identifiable persons.

Despite the provisions of the regulation, it is easy to see that the effective application of the GDPR provisions to the Blockhchain infrastructure raises a number of issues.

One of the main aspects of the Blockchain is the lack of a centralized authority: each participant has the ability to create, verify and have access to the public register of transactions and all relevant data. In a decentralised context such as that of the Blockchain, it is therefore impossible to define the roles of data controller and data controller (key figures in European legislation).

It should also be noted that the data entered in Blockchain are by nature immutable, while the GDPR assumes that any data can be modified or deleted at the request of the data subject, when he wants to exercise the right to rectification of information or the right to be forgotten, under Articles 16 and 17.

Not even the principle of data minimization can be easily applied to the blockchain system: the records in fact include data from all previous transactions that are constantly expanding and are stored in the devices of all participants in the network. This is in open contrast to the provisions of the GDPR that provide that personal data are processed only when necessary for specific purposes previously identified.

Disney and the IP protection of its characters: from Mickey Mouse to remake of the "classics"

With a brand awareness that exceeds 90% of the world's population, Mickey Mouse is still the most internationally known animated character for adults and children.

Almost 100 years after its creation, Mickey Mouse embodies the essence of the Disney company and between merchandising, remakes, games, accessories, theme parks and other services its exploitation is still worth billions of dollars.

Walt Disney's love for Mickey Mouse - which was also his main corporate asset - led him to study effective strategies to extend the intellectual property rights of his character and allow him to continue to exploit his image in an exclusive way.

Mickey Mouse and Copyright Protection in the USA

The first law protecting copyright in the USA was the Copyright Act of 1790 which guaranteed protection of creative works for 28 years.

With two subsequent legislative measures, Congress extended the protection and the protection period was extended to 42 years with the 1831 amendment and to 56 years with the 1909 amendment.

In the fall of 1928 Disney presented to the public the animated short film "Steamboat Willie" in which the character of Mickey Mouse appears for the first time. The short film - as an intellectual work - fell under the protection of the Copyright Act of 1909 and guaranteed protection for 56 years. The character of Mickey Mouse would then be protected until 1984 and then fall into the public domain. To prevent this from happening, Disney, as early as the early 1970s, began to put pressure on the U.S. Congress to amend existing copyright legislation. In 1976 the legislation was extensively amended and brought closer to European standards ensuring protection from a minimum of 56 years to a maximum of 75. Disney had thus managed to extend protection for his character for almost twenty years.

Despite this undisputed success, Disney's battle to continue to exploit exclusively its characters did not stop. Already in the early '90s the company started lobbying for copyright extension: this time not only the copyright of Mickey Mouse was at stake but also that of Minnie, Donald Duck, Daisy, Goofy and Pluto that would fall into public domain by the end of the first decade of the 2000s.

In the late 1990s, Congress made a further proposal to extend the term of protection under the Copyright Act.

The proposal provided for the extension of copyright for companies from 75 to 95 years.

Mickey Mouse and his band: new design for the extension of protection and trademark registration

In 1998 the reform was approved and the Copyright of Mickey and his colleagues was extended for another 20 years.

The date foreseen at the moment for the expiry of Mickey Mouse's copyright is 2024.

However, it should be noted that the Copyright expiration date is only that of Mickey Mouse with the design of the first version of Mickey Mouse, i.e. of Mickey Mouse as represented in "Steamboat Willie" and not that of later versions.

In the decades the Disney designers have taken great care to change the proportions of his physiognomy and to add accessories to the character (for example yellow gloves, different colors in clothing), to modernize the line and make it more in line with the changed taste of the time.

Nowadays children recognize Mickey Mouse in his current version or in those just before, but they will find it difficult to identify the same character in the Mickey Mouse of "Steamboat Willie".

In addition to the considerations made about the copyright of Mickey Mouse it is good to remember that the mascot is also protected as a registered trademark and guarantees Disney the possibility to use it in an exclusive and unlimited way all over the world with the only burden of providing for its renewal.

The remake of the "Classics" Disney

Starting in 2010 Disney has reproposed its "Classics" (which are adaptations of works by other authors whose rights have expired in many cases) presenting more modern versions of the most beloved cartoons ever.

It is reasonable to assume that Disney, proposing new versions of the classics, wanted to achieve multiple goals. Among them there is certainly that of attracting a large audience in the cinemas with the certainty of meeting the taste of a large group of fans - composed of adults and children - who already knew the story and were fans of the protagonists. Moreover, with the approaching copyright expiration - as it had happened with Mickey Mouse - the remake was the perfect opportunity to modernize the design of many characters and revisit them in a modern key (in some cases the animated drawings have been replaced by real actors).

In doing so Disney had the opportunity to replace old productions with new ones and to enjoy a new and entire period of protection for his creative works. In this way the company also had the opportunity to continue to use its characters for the vast assortment of merchandising or to license the rights of exploitation.

The "remake" strategy also allowed Disney to remove from the classics the script parts no longer in line with the times (for example sexist jokes about the role of the woman in the family context, family models in contrast with the evolution of society, scenes in which the protagonists were under the effect of harmful substances).

The story of Disney shows how to protect the intellectual property assets of a company is the foundation of a planetary success that has lasted for almost a century. Structuring effective IP protection must therefore be the basis of the corporate strategy of any company that wants to establish itself as a leader in its field for years to come.

The protection of descriptive marks in the US and Italy: the Booking.com and "Divani&Divani" cases.

Marta Cagnoli

At the end of June, the U.S. Supreme Court ruled on the "Booking.com" case and issued a ruling intended to affect the registration of trademarks related to generic terms in the United States.

The Court recognized the trademark "Booking.com" - owned by Booking Holdings Inc. - as a trademark, despite the generic term "booking". In the past, the Patent and Trademark Office had not granted registration of the Booking.com trademark on the grounds that the trademark was "generic", although a specific qualification could be inferred from the presence of the ".com". Instead, on June 30, 2020, the Court overturned the Office's decision and underlined the importance of consumers' perception of the trademark and that Booking.com is not perceived by consumers as a generic trademark.

According to US law a company cannot claim ownership of the name of an entire product category because this would constitute an act of unfair competition against competitors and because it would lack the fundamental characteristic of distinctiveness. In the case of Booking, however, the judges of the Supreme Court found the lack of confusion on the part of consumers, who in referring to Booking.com do not refer to a generic aggregator of hotels but to a specific provider that they identify through the Booking.com brand and which guarantees a certain level of quality and reliability.

This ruling marks the beginning of a new jurisprudential orientation in the USA and a victory for all companies that have invested in the awareness of weak brands that use generic terms. To better understand the scope of the device and the requirement of distinctiveness, it is good to refer to two brand categories that have been developed in jurisprudence: the weak brand and the strong brand. Weak trademarks are those that are conceptually linked to the product because the word that identifies the trademark corresponds to the generic term of the product or is substantiated by the words generally used to refer to the product in question.

The strong brand, on the other hand, is not conceptually linked to the product and is not immediately referable to it. The degree of protection granted to the strong trademark or the weak trademark changes in the different legal systems, but in any case the weak trademark is granted a lower level of protection than the strong trademark.

In 2015, the Italian Supreme Court also ruled on the distinctiveness of the weak registered trademark "Divani&Divani" owned by Natuzzi Spa and overturned the previous ruling issued by the Court of Appeal. The Court of Appeal in its judgment had not considered that, even if the trademark "Divani&Divani" was a weak trademark, this - with the passing of the years and following its commercial use - had acquired a strong distinctive capacity and the use of a trademark of the same name by a competing company operating in the same product area would inevitably generate confusion among consumers.

The Supreme Court on the other hand, found that, although "Divani&Divani" was a trademark using generic and commonly used words, lacking the character of originality, it had acquired a "secondary meaning" (see ruling of the Supreme Court no. 4294/1974, no. 2884/1985, no. 18920/2004, no. 10071/2008) and was endowed with the distinctive character necessary for it to be recognized by consumers. These two judgments show how a trademark initially weak and devoid of distinctive character can be converted into a strong trademark as a result of its intense commercial use and advertising campaigns that raise awareness among the relevant public and make it distinctive and bearer of secondary meaning.

Privacy Shield for EU - US data transfer has been ruled invalid by the European Court of Justice

Andrea Antognini - Of Counsel

The ”Privacy Shield” is an agreement between the European Commission and the U.S. Secretary of Commerce that allowed the transfer of data from EU to U.S. and followed the declaration of invalidity of the “Safe Harbour Pact” , the previous agreement between EU and US for the transfer of data.

The decision issued by the European Court of Justice on July , 16, 2020  will have serious political consequences for the  EU-US relations and for US providers and European companies.

The decision

In accordance with the General Data Protection Regulation (hereinafter referred to as the 'GDPR'), the transfer of data outside the EU can take place only if the third country can ensure  an adequate level of protection.

The European Commission can find that a third country ensures an adequate level of protection because of its national legislation or because it is part of an international agreement  (such as the Safe Harbour Pact which was declared invalid in Decision 206/1250 and it was related to  the export of data from EU to USA).

In the absence of an adequacy decision, a transfer of data can take place only  if the data controller, established in EU, provides adequate safeguards, which may result from standard contractual clauses adopted by the Commission (Decision 2010/87), and if the data subjects have enforceable rights and effective remedies.

In the absence of an adequacy decision or adequate guarantees, the GDPR shall ultimately determine the conditions under which such a transfer may take place.

The level of protection required in the context of a non-EU data transfer is equivalent to level of guarantee within the EU Member States.

The assessment of this level of protection concerns both what is contractually agreed between the parties (data exporter established in the Union and the recipient of the transfer established in an extra EU country) and the access for extra EU public authorities to the data, as well as other elements of the legal system of the country where data are transferred.

Specifically, the legislation governing the US surveillance programmes do not minimize the processing of data of EU data subjects and  do not limit the power of US authorities establishing adequate guarantees for European citizens who may potentially be subject to US mass surveillance.

For all these reasons, the Court – with the Decision 2016/1250 – declared the Privacy Shield Agreement invalid.

The Court also held that, in the absence of a valid adequacy decision adopted by the Commission, the Data Protection Authority must suspend or prohibit a transfer of personal data to a third country when it considers that the conditions required are not met.

The Court stated that the Decision 2010/87 on standard contractual clauses for the transfer of personal data to entities established in third countries was valid. It is certain that the reasons for the deletion of the Privacy Shield will also have effects on the standard contractual clauses.

Therefore, US providers who have used the legal basis of the Privacy Shield for data transfer from the EU to the US will have to adopt a different solution, such as standard contractual clauses.

The Italian company, as data exporter, and the data Protection Authority, will have to make a complex assessment of the adequacy of the guarantees offered by the party importing the data and the regulations in force in that country, with relevant liability profiles.

Practical implications

Impact on business activities

• Decision 2016/1250 does not cover necessary data transfers to the USA (e.g. sending e-mails to a person in the USA, booking travel in the USA).

• Can European companies continue to use US providers? At the moment the answer appears to be no, as all major providers are subject to potential US government oversight.

• Can companies continue to use US providers based in the EU? In such cases, European companies are responsible for ensuring that "intra-Group" personal data flows to the US are GDPR compliant. Companies will now need to carefully review such data flows and determine whether to retain data in Europe or any other country that provides better privacy protection, instead of being transferred to the US.

Impact on consumer rights

Users are free to send their personal data directly to a third country, for example when using a Chinese or US website. However, consumers may not directly share other people's data (e.g. friends, colleagues) with a US provider unless they have obtained  free, specific, informed and unequivocal consent.

The Data Protection Authority’s Report: activities overview and prominent issues in 2019 and 2020

Marta Cagnoli

On 23 June 2020, the Italian Data Protection Authority (DPA) presented the report on its activities during the year 2019.

During the course of such year, the DPA supervised the application of Regulation 679/2016 (GDPR) and intervened on issues relating to the protection of fundamental rights in the digital age, the ethical implications arising from the use of artificial intelligence and the use of new surveillance systems, as IoT tools.

In light of the peculiar situation arising from the covid-19 pandemic, in its report the Authority has also expressed its views on specific issues relating to the first half of 2020.

Figures

In 2019, the DPA adopted 232 collegial measures and responded to 8000 complaints, including in relation to telephone marketing, consumer credit, employment law matters, and IT security, and carried out 147 inspections, both in the public and private sector.

The DPA also responded to 15,800 questions from citizens who asked for clarifications regarding the requirements related to the entry into force of the GDPR and issues related to unwanted promotional activities such as telephone calls, text messages, video surveillance in the public and private sector and banking data.

Platforms

With regard to online data breaches, in 2019 the DPA sanctioned Facebook Ireland Ltd for €1 million, following the investigation on the "Cambridge Analytica" case, which also involved data of Italian citizens.

In the same year, the authority strengthened its activities aimed at protecting the "Right to be Forgotten" and promoted an international debate to redefine the role played by Internet Service Providers in this specific context.

In 2020, the DPA also raised concerns about TikTok, a Chinese platform that has become extremely popular among millennials all over the world and which allows users to share videos and images. The Italian Authority requested and obtained the establishment of a “task force” at European level to investigate this platform.

Activities in the field of cybersecurity

In 2019, 1443 data breaches were notified and the DPA commented on the inadequacy of cybersecurity measures enacted by public administrations and private companies that collect data online. The Authority has also provided guidelines against ransomware and other malicious software.

Ransomware

Ransomware are computer programs that encrypt data, making them no longer accessible, and that request the payment of a "ransom" in order to re-obtain possession of the contents stored on the device. In its recommendations, the DPA pointed out that these malware are often installed on users' devices through free gaming or other apps, which users download being completely  unaware of the potential threats hidden thereunder.

Digital Assistants

The DPA has also examined the risks associated to the use of digital assistants. These are programs which interpret human language through algorithms and artificial intelligence and are therefore able to interact as a "human user", responding to various types of requests (such as finding information on the web, searching for a certain route, making an online purchase, adjusting the temperature or home lighting, closing or opening home locks).

The DPA observed that these digital assistants collect and process a huge amount of data, while users are often unaware of how data are processed and of the identity of the data controller.

Privacy and Marketing

The DPA intervened against "aggressive" telemarketing activities by applying significant penalties (including penalties amounting to euro 27.8 million and euro 11.5 million respectively) to companies that have utilized data without the data subject’s prior consent.

Privacy and Right to Report

The Authority intervened on several occasions to condemn the gruesome details published by some newspapers and television stations in relation to certain news, in order to ensure appropriate protection for the victims of crimes, and especially minors.

Privacy and Work

The DPA defined the necessary safeguards required in relation to the collection of employees’ fingerprints in order to contrast absenteeism in public administrations. The Authority affirmed that the collection of biometric data is an extremely sensitive proceeding, due to the nature of the data processed. Specifically, in the event the collection of fingerprints is coupled with the use of video-surveillance technologies, such procedure appears to be in contrast with the principle of proportionality.

Similarly, the DPA considered that a broad and generalized introduction of biometric survey systems for all public administrations would not appear to be justified under the GDPR.

Privacy and Justice

In relation to the "Exodus case" -  in which the communications of hundreds of citizens not involved in police investigations were tapped due to an error in the functioning of an electronic tapping device - the Italian Authority proposed measures to ensure increased safeguards in relation to the use of tools potentially threatening the citizens' freedom.

Privacy and Health

With regard to health data, the DPA intervened several times on the procedures for the collection and processing of health data in the context of the pandemic. The authority stated that, even in an emergency context, the principles of the GDPR must nonetheless be complied with.

The DPA also provided its opinions and indications regarding the "Immuni" app  (i.e., the app chosen by the Ministry of Economic Development to provide contact tracing technology to Italian health authorities). The DPA expressed its views on the methods for carrying out serological tests and for the collection of health data of employees and customers.

The several actions put in place by the DPA show the continuing efforts to monitor the application of the new European regulation, and to prevent and sanction violations that may pose a threat to individual freedoms.

Cars, Sneakers and Social Media: Ferrari vs. Philipp Plein

Marta Cagnoli

The origin of the lawsuit between Ferrari and Philipp Plein dates back to  August 2019, after the publication of some posts on Plein’s personal Instagram profile.

Specifically, the German designer published some pictures and videos showing one of his Ferrari with a pair of sneakers (the “Moneybeast” model, on sale for almost €5000) resting on the trunk of the car.

Only few days after such publication, Ferrari's lawyers warned Plein inviting him to remove the above mentioned contents, within a 48-hour term, as they constituted illicit use of the Ferrari’s trademark.

Ferrari therefore accused Philipp Plein of having exploited the notoriety of Ferrari’s brand to advertise its products and to confuse consumers, leading them to assume the existence of a partnership between Ferrari and Plein’s brand in relation to such specific model of shoes.

Ferrari also believed that the posts published by Plein were offensive, since they also “objectified” the female bodies of the models included in the pictures. Therefore, the posts were considered not in line with the values promoted by Ferrari, which did not intend to be associated with such type of content.

In response, Plein approached Ferrari's CEO directly, stating to be a dissatisfied customer and that he did not intend to proceed with the removal of the posts.

The Court of Milan was called to rule on the matter and, in June 2020, ordered Philipp Plein to delete all the posts in which the Ferrari trademark had been unlawfully represented and to pay €300,000 as compensation for damages.

In order to make a conscious use of social networks, every user must be aware that a picture  posted online could constitute an infringement of intellectual property rights of third parties.

While this concept should be familiar to every user, influencers and public figures with a significant social media following should be required to pay specific attention to these issues when posting content that depicts trademarks or other IP-protected contents without the express permission of the owner.

Philipp Plein's personal Instagram profile has more than 2 million followers. As such, the posts violating the Ferrari trademark were potentially able to reach a huge number of users.

The assessment of an infringement of third parties’ trademarks in connection with posts published on social media is based on whether such publication has a commercial or advertising purpose.

The Court of Milan held that the Instagram posts published by Plein had a clear commercial purpose (despite the fact that the pictures had been posted on the designer's personal profile and showed a car owned by him) and that Plein’s products would be perceived as more exclusive and desirable thanks to the connection with the Ferrari brand. 

Cloud Computing: infrastructure features and legal profiles.

Marta Cagnoli

The European Network and Information Security Agency (ENISA) defines Cloud Computing as the infrastructure that a Provider makes available to the user to enable him/her to access resources, spaces, software or development environments accessible through remote servers owned by third parties.

In terms of volume, the Cloud Computing market is growing significantly every year. In Italy alone, the estimated sales for cloud computing for 2020, exceeds 2.5 billion euros.

The success of Cloud technology is due to the flexibility of a systema that does not require complex configurations and substantially simplify the management and use of company resources without requiring major economic investments.

  Types of Cloud Computing

There are 3 different types of Cloud structures:  

• Infrastructure as a Service (Iaas): this is the hardware infrastructure that is the basis of every Cloud system. The provider provides the user with hardware without having to manage it himself. An example of IaaS is the storage space made available by the provider.

• Platform as a Service (Paas): these are conceived as "bridge" platforms between an IaaS structure and a SaaS structure in which the Provider makes the structure available but it is up to the user to install and implement the software. This type of Cloud is normally aimed at developers who use the Paas to exploit specific automation features and avoid having to write ad hoc code.

• Software as a Service (SaaS): this is the most widely used Cloud structure and offers a service that is easily accessible even to non-professionals. The end user, in fact, does not need any technical expertise and can use the swrvices provided by the Provider through any device. The Provider that provides a SaaS service via the web provides users with a series of application services that can be directly used by end customers.

SaaS infrastructures are systems that allow the use of spreadsheets via the web or applications that allow the insertion of e-commerce forms to websites that originally did not foresee them.

Cloud Computing Models

Private Cloud Computing: this is a Cloud structure that is created by the Provider to meet the specific needs of individual customers and is intended for their exclusive use. Large companies sometimes opt for a private Cloud model in order to maintain greater control over exported data: in the internal Cloud, in fact, the data stored remains in the organizational structures over which the user has full and exclusive control. By adopting this system, the wealth of personal and sensitive data is processed directly within the organization itself. In the Private Computing system it is possible to negotiate the contract that governs the relationship between the company using the service and the Provider.

• Ibrid Cloud Computing: this is the model often used by public administrations and represents a middle way between Private Cloud Computing and Public Cloud Computing. Using a hybrid Cloud model allows the user to delegate to a public Cloud system the services or applications that involve the processing of non-sensitive data, while certain processes involving sensitive data and requiring enhanced security measures remain managed solely within the organization.

• Public Cloud Computing: is the infrastructure owned by the Cloud Provider whose use is not dedicated to a single user but to a multiplicity of indeterminate users. In Public Cloud Computing you do not have the possibility to negotiate terms and conditions of use because you are faced with an "as it is" service. In fact, the user can have access to the service by adhering to a standardized contract prepared unilaterally by the Provider.

Cloud Contracts as atypical agreements

Cloud contracts are characterized by not having its own structure, but it can be defined using two different typical negotiating schemes: the service contract and the license agreement.

• Service contract: the obligation - on the part of the contractor is to provide a service for a specific consideration. If a SaaS system is taken into account, it is easy to see that its main characteristic is precisely that it makes an IT structure external to the private or corporate IT structure accessible and allows the user to use software services managed by third parties. It seems therefore simple to trace a contract with a SaaS Provider to the case provided for by art. 1665 cc.

• License Agreement: is a legal instrument that allows the use of a product (software) and establishes the manner of use of the product itself through the imposition of constraints and limits for the user.

Since Cloud contracts have common characteristics of both the license agreement and the service contract, it did not seem convenient to drastically opt for one or the other solution, but it seems more appropriate to configure the Cloud contract as an atypical contract.  In addition to the general conditions of service, Cloud contracts require some specific documentation such as the Service Legal Agreement and the Service Legal Objective.

The Service Legal Agreement is a specific document that contains the reference parameters for the provision of the Cloud Provider service and for monitoring the level of quality of service actually provided.

The Service Level Objective, on the other hand, is the document in which the parameters for measuring the performance of the provider are agreed in order to limit the emergence of disputes between the two parties on the quality and quantity of the service provided.

Cloud Provider and GDPR: how to choose a Cloud Provider

The European Data Protection Regulation (2016/679) provides that where processing is to be carried out on behalf of the data controller, the controller must only use controllers offering sufficient guarantees to implement all appropriate technical and organisational measures which meet the requirements of the Regulation and ensure the protection of the data subject's rights.

It would therefore be good practice for the data controller, before signing the contract with the Cloud Provider, to verify the latter's adherence to a code of conduct referred to in Article 40 GDPR or other certification mechanism.

The adherence to a code of conduct can in fact be assessed as a guarantee of the Provider's sufficient reliability. For example, the CISPE (Cloud Infrastructure Services Provider in Europe) code of conduct is a coalition of more than 20 Cloud Infrastructure Providers operating in the territory of the Member States and ensures compliance with GDPR and best security practices in data processing.

In addition to adhering to a code of conduct, before signing a contract with the Cloud Provider, it is important to ensure that the Cloud Provider guarantees:

Data portability i.e. the transition of data from one Provider to another in case of need (e.g. in the event that the Provider inserts a pejorative and unilateral change of the service conditions in the T&C and the customer wants to withdraw from the contract)

The adoption of data encryption tools or their pseudonymisation

The storage and processing of data within the EU as it is always preferable to rely on providers that process data within the European Union or in countries for which an adequacy decision has been made.

Dior files for protection of the Saddle Bag as a Three-dimensional Trademark.

Gianpaolo Todisco - Partner

20 years after the launch of a now iconic model, Dior has applied to the Us Patent and Trademark Office for registration of the famous 'Saddle' bag as a three-dimensional trademark.

The Saddle bag has been re-introduced from the F/W 2018-19 collection with the addition of new details, prints and materials to the saddle bag accessory.

A three-dimensional mark is a sign consisting of the three-dimensional shape of a product or its appearance and is governed by a specific regulation, both at European and Italian level, which provides for the exclusion of registrability for signs that:

1. consist of the shape, or other characteristic, imposed by the very nature of the product;

2. the shape, or other characteristic, of the product necessary to obtain a technical result;

3. the shape, or other characteristic, which gives substantial value to the product.

   With regard to the first limitation, the rationale of this rule is to prevent a renewable right, potentially unlimited in time, such as a trade mark, from monopolising forms which derive from the natural form of the product, or which in any case are devoid of distinctive character because they coincide with a standard form in the opinion of consumers.

   With reference to the prohibition to register a functional form, the rationale of the standard is to protect the market by preventing a person from becoming the owner of a perpetual right on technical solutions or functional characteristics of a product which, on the contrary, can be protected through patents for inventions.

   Finally, as regards the limit on registering a substantial form, the rule is intended to prevent the registration of a form which, on its own, is capable of determining consumer choice. That characteristic, in fact, falls within the protection of patents for design rights which, unlike trade marks, is limited in time. On this point, Italian case law has ruled that a three-dimensional trademark can be registered if the shapes for which protection is sought have a functional or aesthetic value, such that they do not configure a particular character of ornament or utility.

   In one case, registration as a three-dimensional trademark was refused on the grounds that it was possible to perceive the aesthetic element as predominant, if not exclusive, and in any case with such prominence as to determine the consumer's choice. If Dior wanted to extend the protection of the three-dimensional mark, also at Community level, this third requirement will most likely be the most difficult obstacle to overcome for the French maison. Moreover, it is worth remembering that in two judgments in 2013, the General Court of the European Union denied Bottega Veneta the registration as a three-dimensional Community trademark of two different shapes of handbag, one characterized by the particular shape of the handles and the other by the absence of closing devices. In the present case, the judges considered that the shapes for which Bottega Veneta applied for registration did not fulfil the essential function of a trademark, that is, as an indicator of the origin of a product.

Photography and fashion. Clovers obtains a favorable ruling from the Court of Milan on the unauthorized use of a photograph on a fashion collection.

Gianpaolo Todisco – Partner

Laura Bussoli - Associate

One of the gaments of the collection.

Last week the Court of Milan sentenced the company founded by stylist Antonio Marras to pay damages to the American photographer, Daniel J. Cox, for the unauthorized reproduction of a photograph of the latter on clothing.

Daniel J Cox is one of the most successful nature photographers and author of several covers of National Geographic magazine and he know as being the author of a monographic book dedicated to wolves.

The controversy arose when Fashion designer Antonio Marras used this image without the author's consent to develop its fashion collection.

The image was reproduced on a series of women's garments and presented during the woman’s 2014-2015 F/W fashion show in Milan and the collection was distributed and marketed worldwide.

After the parties unsuccessfully completed negotiations aimed at settling the case, the photographer invoked injunctive relief against unauthorized use of the image as well as compensation for damages quantified at the request of the same in the so-called price of consent.

The Court ruled that the image printed on several garments created by Marras coincided with the photograph shot by the plaintiff and met the requirements of the artistic and creative character necessary to access the "enhanced" protection provided by the Copyright Law.

Indeed, Italian copyright law grants photographs a dual level of protection, distinguishing between photographic works (or artistic photographs) and simple photographs.

The orginal photograph. Copyright Daniel J. Cox. - Natural Exposures. All rights reserved.

The difference - which is not always easy in practice - is traced by art. 87 of Italian Copyright Law which define as simple photographs "images of people or aspects, elements or facts of natural and social life, obtained by photographic or similar process, including reproductions of works of figurative art and film stills" and recognize the same protection as neighboring right.

 Conversely, there is no explicit legislative definition of an artistic photographic work  in the Copyright Law and this is left to a “case by case” "practical" evaluation by judges on the basis of a series of indexes.

Artistic photographs are treated like other artistic works have access full protection (up to 70 after the death of their author), whereas simple photographs, on the other hand, enjoy limited protection (20 years from the date of photograph’s production) and the photographer is only entitled to fair compensation in case of unlawful use.

A first and fundamental point of the decision rendered in the Cox/Marras case, concerns the recognition of the artistic value of photography: in the Court’s opinion the artistic value lies "in the creative capacity of the author, i.e. in his personal imprint, in the choice of the subject to be portrayed as well as in the moment of realization and reworking of the shot, such as to arouse suggestions that transcend the common aspect of the reality represented.

The choice to portray the animal in its natural environment and in adverse climatic conditions makes the shot "the result of study and careful photographic analysis by the author" and contributes to the recognition of its artistic value according to the Court.

It is also the technique that comes in this case in relief in order to correctly frame the image within the protected and protectable photographic works: "a wise blurring of the surrounding environment, thus enhancing the expression of the represented subject ... and evoking, in this way, peculiar suggestions in the observer such as to go beyond the mere graphic representation of the animal (...) "a wise use of chiaroscuro and the use, with creative purposes, of light ". Last, the specific authoritative recognition of the artist in the United States and the publishing of the photograph in a monographic work also helped the Court understand the nature of the work.

Therefore, once the artistic nature of the work has been ascertained, the use by the defendant company for commercial purposes of the photograph, by placing it on an item of clothing included in the women's collection, in the absence of any authorization from the author, "constitutes an open violation of the author's right to compensation for damages".

It is interesting to note that the Court of Milan rejected the defendant's objections to the alleged lawfulness of the use of the photograph, since the same can be found on the Google search engine.

The Court found that - "the mere availability on the web of a photograph certainly does not constitute a presumption of absence of authoritative rights, on the contrary, the burden of ascertaining whether or not third parties have rights".

In conclusion, the Court stated that the work of the photographer Daniel J. Cox should be considered to be protected by copyright law, as a creative work in the particular field of photography, ordering the defendants, jointly and severally, to pay damages to the applicant and ordering the publication of the operative part of the judgment by and at the expense of the defendants in the periodical Vanity Fair.

Through this judgment, the Court of Milan has analyzed several legal issues which are constantly being debated experts in the world of intellectual property.

E-commerce. Does your site comply with online sales regulations?

Gianpaolo Todisco - Partner

The exponential increase in online shopping in a world marked by the Covid-19 pandemic should convince many operators to assess the legal compliance of their e-commerce sites. This also in light of the fact that the Agicom, the Privacy Guarantor and the judicial authorities are certainly more active in times of great expansion of the Internet and it is then easy to get checks by the authorities on reports of customers or competitors that can lead to the elevation of penalties often high.

For our part, we have identified five macro areas where it might be useful to think about a "legal check-up" to avoid sanctions by the competent authorities.

1. General Terms and Conditions of Business

If the owner of an online shop intends to introduce clauses in the relationship with consumers, these must always be specified in the general terms of contact. The general terms and conditions must state the general terms and conditions of sale as well as all information regarding the right of withdrawal, the method of returning the goods, delivery times and costs of the goods and shipping, in full compliance with the provisions of the Consumer Code.

2. Privacy and Cookie Policy

The Privacy Policy is a document that informs your users about the processing of their personal data, it is mandatory by law even in case of tracking visits by means of web analytics tools.

Unfortunately, many companies still pay little attention to the obligations regarding the processing of personal data but if you do not want to incur significant fines from the Privacy Guarantor it is important that your company site is in compliance with the law.

Legislative Decrees 69/2012 and 70/2012 have established the obligation to insert a banner when opening the website, which requires the user's consent to the processing of data, in order to be able to continue with the navigation. The consent will also be required when you intend to share your customer's data with third parties.

In addition, if the site uses certain types of cookies for user profiling, it is mandatory to insert a specific information banner on the nature of the cookies used.

3. Indication of company data

The owner of an e-commerce must always provide certain data such as: name, registered office, e-mail address, registration number in the REA or in the Commercial Register. For corporations, the paid-up share capital (or liquidation status) must always be indicated.

4. VAT and business register notices

Except in the case of purely occasional activities and earnings of less than 5,000 euros, the opening of an online store involves the opening of a VAT number and registration in the Register of Companies, at the Chamber of Commerce.

5. Copyright and industrial property rights.

A website (shop windows, blogs, e-commerce, portals, etc.) consists of multiple elements that can be protected:

• the domain name;

• the logo;

• the graphic configuration;

• the structural and organized conception that emerges when you navigate through your pages: comparable to the "scenography" of the site;

• the texts and images of the pages

• It is important to check whether your site complies with copyright law and does not violate the industrial property rights of third parties.

SOS Italia App. Privacy and Big Data at the time of Covid 19.

Andrea Antognini - Of Counsel

The dramatic evolution of the health crisis linked to Covid-19 in Italy has required the Government to put in place exceptional measures to deal with this emergency, including the use of new technological tools never previously used by national institutions.

On March 20, 2020, the Ministry for Technological Innovation, together with the Ministry of Economic Development and the Ministry of University and Research, issued an invitation to all operators in the Italian digital ecosystem to help simplify the management of the pandemic through the development of digital platforms and other data processing systems.

Thus the mobile app "SOS Italia" was launched, a project developed by the Italian Digital Revolution Association, in collaboration with the software house Sielte, which is expected to be soon available on the digital stores of iOs and Android operating systems.

"SOS Italia" aims to monitor and contain the spread of Covid-19 through a user-friendly interface (log in via Google, Facebook, SMS with OTP on phone number and native integration with SPID) that will allow citizens to easily find the official communications made by the Government, the rules of conduct to be adopted, the numbers to call in case of emergency and other useful information.

Citizens will be able to fill in a questionnaire for self-diagnosis purposes and communicate to the authorities their state of compulsory or preventive isolation, the presence of symptoms and positivity to the virus.

Each user will also be able to choose to digitize their self-diagnosis for permitted travel and receive notifications if there is a risk of infection. This will be possible because, once the subject has voluntarily downloaded the app, GPS functionality will remain active even if the user is not using the app. In this way it will be possible to create a mapping of all the places frequented by the individual and build a register of the people with whom the subject has come into contact.

Similarly to what has already been experimented in South Korea, also in Italy, therefore, a technological response is attempted, based on the use of Big Data and algorithms, to put a brake on the contagion curve. But, if, on the one hand, the technical functionalities of the application provide tools of undisputed importance for the monitoring and containment of the pandemic, on the other hand, the inevitable implications in matters of data protection are worrying.

During a national and global health crisis, the protection of the primary right to health is potentially at odds with a number of other values worthy of protection. The management of the current emergency inevitably entails the restriction by the authorities of fundamental rights, including personal freedom and the protection of personal data (privacy).

Let us look at the privacy aspects. GDPR provides for the lawfulness of data processing, even for special categories, even without the express consent of the data subject, when the processing is necessary to safeguard his/her vital interests (or those of another natural person), or when it is indispensable for the performance of a task in the public interest. On the basis of this provision, therefore, the processing of the natural person's data, including data relating to his/her health, may take place independently of the granting of consent when the purpose of such processing is to limit the dissemination of Covid-19.

With regard to the processing of telecommunications data, such as location data, national laws implementing the ePrivacy Directive must also be respected. The ePrivacy Directive allows Member States to introduce legislative measures to safeguard public security.

Legislative Decree 14/2020, which contains urgent provisions for the strengthening of the National Health Service in relation to the Covid-19 emergency, provides for the possibility that the subjects operating in the National Civil Protection Service, the offices of the Ministry of Health and the Istituto Superiore di Sanità and all other subjects in charge of monitoring and ensuring the implementation of the pandemic containment measures, may share and exchange among themselves personal data of citizens (including those relating to their state of health) that are necessary for the performance of their duties. They may also omit to provide the privacy policy (as well as instructions to data processors) or provide it only orally.

This decree also makes clear that personal data processing must in any case be carried out in accordance with the principles of lawfulness, transparency and correctness provided for in Article 5 of the GDPR, reducing their processing to a minimum (principle of minimisation).

To date, however, it is not clear how these principles will be punctually implemented and who, among the various authorities at stake, will in fact be identified as the data controller and which entities, public and private, will be responsible for the aforementioned processing.

One of the issues of greatest concern is the processing of data relating to the location of citizens and how these data can be used by the authorities.

In various interviews, the Privacy Guarantor, in the person of its president, has reiterated that the right to privacy may be subject to certain limitations in the face of a collective interest, provided that the necessary balance is ensured between the protection of individual rights and the safeguarding of collective legal assets, including by providing that any law in derogation has a defined duration and coincides with the emergency period.

Moreover, an inevitably related issue concerns the data retention time, which will also have to be limited to the aforementioned emergency period and it will have to be clarified beforehand what processing operations will be allowed at the end of the emergency period and what will happen to the data collected.

The Privacy Guarantor has clarified that "data protection can even be a very useful tool in the fight against the epidemic, when this action is based on data and algorithms, of which accuracy, quality and "human" review must be guaranteed, where necessary, as in the case of wrong automated decisions based on bias". 

In this regard, continues the Privacy Guarantor, a decree-law could combine timeliness of the measure and parliamentary participation. It goes without saying that the duration must be closely linked to the continuation of the emergency.

In the joint statement of the President of Convention 108 and the Commissioner for Data Protection of the Council of Europe there is an interesting indication on the use of preliminary tests in "sandbox", namely the advice to test the app in a safe and private environment before releasing it to the public.

The Privacy Guarantor may, if necessary, be involved in prior consultation, but in any case, the logic of processing and security measures must be verified by expert consultants able to develop correct privacy architectures and set up processing operations - by design and by default - respecting our fundamental rights.

In conclusion, privacy is not an obstacle to the massive processing of data, even sensitive data, but such operations, which affect our fundamental rights, must be effective, gradual and adequate.

The Italian Antitrust dictates guidelines on the Relationship between Clients , Agencies and Infuencers.

On March 15, the Antitrust Authority concluded a misleading advertising procedure, involving for the first time 9 micro influencers who worked in the launch of the "Pan di Stelle" chocolate cream produced by Barilla.

For some time now, the Antitrust Authority has been dealing with various issues of hidden advertising published through new media, as the recent Alitalia / Alberta Ferretti case.

Also in the Pan di Stelle case, the Antitrust Authority has not imposed any sanctions against the parties involved, accepting the commitments that Barilla and the micro-influencers are willing to take on.

The Antitrust Authority has positively assessed the commitments made by the parties involved in the proceedings, which are beginning to emerge as real guidelines, both for the companies launching the marketing campaign and for the influencers promoting the products/services covered and for the agencies mediating the relationship between customers and influencers.

The guidelines that emerge from the Antitrust Authority's decision can be summarized as follows.

As for companies:

1. These should use a contractual standard in their dealings with influencers that contain penalty clauses (such as reduction of fees and/or penalties and/or suspension of payments) against influencers in case of breech;

2. Contracts between the client and the agencies should include clauses aiming at making the agencies responsible.

As for agencies, these must carefully monitor the work of the influencers and take prompt action, also at the customer's request, to ensure compliance with the Guidelines.

With regard to micro-influencers they should:

1. include, in posts containing the image or mention of products received from brands to which they have no obligation to carry out promotional activities, hashtags such as #suppliedbybrand or #brandgift or #fornitodabrand, or other similar wording;

2. include, in posts published as part of a collaborative relationship with the brand, hashtags such as #suppliedbybrand or #advertisingbrand or #advertisingbrand;

3. refrain from publishing the content authorized and selected by the commissioning brands, unless the contract expressly provides for it with the relevant constraints. This decision sets out guidelines that give greater certainty in contractual relations between companies and influencers.

Coronavirus (Covid-19) and Repercussions on Employment.

In the infamous health emergency situation due to the spread of the Coronavirus, the Italian Government adopted a series of urgent restrictive measures to contain the epidemiological spread from Covid-2019.

In particular, Decree n.6, provided that, in order to "avoid the spread of COVID-19, in municipalities or areas where at least one person is positive for whom the source of transmission is unknown ... the competent authorities are required to take all measures of containment" and "among the measures may be taken" among others, the "closure of all commercial activities", the "closure or limitation of the activity of public offices", "suspension of work for companies": in a word, the suspension of all potential work activities (except for essential or essential public services) both in red areas where "outbreaks" have been identified and in "yellow" areas, i.e., areas at risk of spread (Lombardy, Veneto, Piedmont, Liguria, Trentino-Alto Adige, Friuli and Emilia Romagna).

This paralysis has led to the need to resort to "relocated" forms of work to reduce the impact of the suspension of activities, so much so that, with the subsequent Prime Ministerial Decree of 25/2/2020, the Government established that "the agile working method governed by Articles 18 to 23 of Law no.  81, is provisionally applicable, until 15 March 2020, for employers with registered or operational headquarters in the Regions of Emilia Romagna, Friuli Venezia Giulia, Lombardy, Piedmont, Veneto and Liguria, and for workers resident or domiciled there who work outside those territories, to all employment relationships, in compliance with the principles dictated by the aforementioned provisions, even in the absence of the individual agreements provided for therein".

Outside of government regulations, the further measures to be used to contain the negative consequences deriving from the suspension of work activities could consist of recourse to the Wages Guarantee Fund (Cassa Integrazione Guadagni) or the Wages Guarantee Fund (Fondi di Integrazione Salariale), provided that the conditions are met.

Another measure that could be used could be to place employees on vacation or have them take time off, provided, of course, that such measures are agreed upon and not imposed on employees.

Without claiming to be exhaustive, the above suggestions are merely food for thought while awaiting the desired return of the health emergency situation.

Human Feelings as Drugs. The Court of Appeal of Milan overturns the decision.

Recently the Court of Appeal overturned a judgment rendered in September 2018 by the Court of Milan, which we discussed in this blog

The case was inspired by the alleged violation of copyright of a photograph entitled "Human Feelings as Drugs", consisting in the creation of photographs, prints and posters reproducing vials of medicines of various colors, bearing the words "empathy", "hope", "love", "peace" and "joy" with the expressive phrases of the related feeling or emotion. Artist Valerio Loi intended to realize the idea of taking "feelings like medicine", so as to "allow the patient an instantaneous awakening of perception and a reintegration within the vital flow of emotions".

The plaintiff complained about the illegal reproduction by defendant, Queriot de la Bougainville of a series of pendants - combined with necklaces and bracelets - that would have reproduced their own vials, with identical names of feelings, accompanied by the same illustrative sentences. He therefore invoked injunctive relief, damages and publication of the judgment. The Court of First Instance had reiterated that with regard to photographic works, the artistic character presupposes the existence of a creative act as the expression of an intellectual activity which takes precedence over mere material technique.

That is to say, the photographer's method of reproduction must convey a message which is additional and different from the crystallized objective representation, that is to say, it must be a subjective interpretation capable of distinguishing a work from similar works having the same subject matter.

According to case Law, the requirement of creativity of the photographic work exists whenever the author has not limited himself to a reproduction of reality, but has inserted in the shot his fantasy, his taste, his sensitivity, so as to transmit his emotions. As far as photographic works are concerned, the artistic nature of the reproduction cannot be deduced from the notoriety of the subject or object that is portrayed, since the value of the artistic work is appreciated by virtue of formal canons - which express the author's personality in an absolutely characteristic and individualizing way - since the relative judgement must be made regardless of the object or subject itself reproduced.

The Court of first instance had excluded the artistic nature of the litigious images, since it was impossible to recognize precisely those aspects of originality and creativity that are indispensable to recognize the full protection under Italian Copyright Law. According to the Court, the plaintiff did not indicate precise shots or a careful selection of lights or particular dosages of light and dark tones that the Court could appreciate. Nor did the photograph highlight a personal and peculiar imprint of the photographer.

In overturning the decision, the Court of Appeal of Milan, held that: "the presence of the creative or non-creative character in the photographic work must be verified, assessing unitarily the subject, reproduced in the photograph, and the photographic modalities with which the subject was rendered, given that the emotional suggestion of the photographic work derives precisely from the close connection existing between the subject photographed, obviously three-dimensional, and the particular modalities with which the same is rendered in the two-dimensional photographic image. On the other hand, the creativity, suitable to give the photographic work artistic value, on the one hand, does not coincide with the concept of creation, originality and absolute novelty, but refers to the personal and individual expression of an objectivity, belonging to the categories listed in the Italian copyright Law, so that the existence of a creative act, even a minimal one, is sufficient, on the other hand, is not constituted by the idea itself, but by the form of its expression, that is to say by the way in which the idea is concretized in the external world [...]" and that therefore "There is no doubt that the photographic work in question presents a relevant rate of creativity [...]".

In conclusion, the Court decided that Valerio Loi's work 'Human Feelings as Drugs' should be considered to be protected by copyright law as a creative photographic work.

How Blockchain can help the Protection of Unregistered Trademarks.

As many may know, blockchain shares the task of recording transactions among the people making them, and the underlying technology verify that all users are keeping matching records.

However, the registration of a Trademark can imply high costs if the application is filed in different jurisdictions.

Trademark law recognizes rights to unregistered trademarks, that is to say those trademarks used to distinguish products and services, but never filed nor registered.

Trademark holders are beginning to leverage blockchain technology to secure and document proof of first and continuous use.

In the trademark area, Blockchain technology seems to have at least two immediately applicable uses:

• Creating blockchain-based records as a more secure and trustworthy recordkeeping system to prove trademark use; and

• Proving the provenance and legitimacy of goods in anticounterfeiting efforts.

There is unequivocal evidence of use in case of infringement for holders of unregistered trademarks as the blockchain technology can create immutable timestamps that can provide proof of first use, continuous use filing and lock in a highly credible date on which certain information related to a trademark was captured.

This can bring to the creation of a record of unregistered trademarks on the same distributed ledger, creating a comprehensive picture of all trademarks in use and the extent of use in a particular jurisdiction.

Blockchain records can be made for trademark use in any jurisdiction, that are quick to obtain and always accessible.