Author: Vieri Canepele

2020 has already shown telltale signs it will be an extremely eventful, interesting year in terms of new regulations to be enforced in Europe and in some of the world’s largest markets, among which the US, as to the (predicted) threshold of liability the web giants will be accountable for in relation to the infringement of industrial and intellectual property rights.

In the pipeline for quite a few years, in 2019, the European Union approved the ‘Copyright Directive’ n. 790, meant to substantially redesign the balance of interests between the so far rather ‘unrestrained’ web and the legitimate prerogatives of copyright holders and creative talents.

After years of adjustments and rethinking, the triggering factor leading to the implementation of the normative originated from the awareness of the amount of revenues and immense wealth amassed by the various providers and the web marketplace, hence the need to frame a ‘re-distribution’ policy in the interest of the authors.

Apart from the anticipation awaiting the decree leading to the enforcement of the Union-scale legislation in the months to come, the question arises as to whether this normative may not be considered ‘outdated’ as early as today.

Firstly, thwarted by a Community and domestic jurisprudence which, after extensively dealing with this matter, eventually levied taxes from the managers of the platforms at issue to such an extent that the obligation to provide for a mechanism of ‘swift, effective complaint and appeal aimed to settle disputes concerning specific works or material infringing copyright’ provided for by the Directive already seems to have been defined either spontaneously or following Court ruling, in Italy as well.

Take for instance the so-called ‘dynamic injunction’ applying to several URLs (see the ruling of the Court of Milan of April 12th, 2018 applying to Mondadori), which provides some interesting food for thought in relation to the “dynamic” nature of an injunction in the presence of copyright infringement committed through “alias” websites.

A few websites changed the domain name subject to either a restraining or interdiction order issued by the judicial authorities while continuing to offer illegal contents through a merely formally different website.

In this case, the provider has been prohibited to carry on this type of conduct and, hence, to further upload contents already found to be infringing. While, on one side, it does not designate a generic obligation of preliminary surveillance applying to the provider, on the other side, it undoubtedly gives rise to a more specific one, applying to contents previously reported to conflict with copyright.

On the other hand, the Directive also provides for the obligation to take the necessary steps to obtain the preliminary authorization to exploit specific contents. Hopefully this might lead to hold back the piracy phenomenon, at least vis-à-vis contents which the platform can identify upfront to have a relevant commercial impact.

However, the Copyright Directive system is likely to prove outdated also in light of interests being differently balanced, designed for instance by the Executive Order the President of the United States of America Trump signed on 31st January 2020, with the aim to ensure, as per the title, the lawful performance of e-commerce, in the interest of consumers, companies and their intellectual property rights.

The decree provides for the adoption of a few (black) lists reporting the names of the importers partnering with online sale platforms and the criteria whereby said importers can acquire a record number authorizing them to carry out trade in the United States. Not only have offline and online operators the obligation to refrain from connecting with subjects bereft of such record number, they are also accountable for notifying the Department of National Security – Customs Authorities in the event they learn that certain products might land the country upon initiative of said importers.

Under penalty of exclusion from a few specific partnership programmes with the Customs Offices as well as the potential withdrawal of commercial licenses.

The new regulations target international courier services too by developing a metric system of credibility and dependability resting on statistics processed against customs controls performed so that, in the event of reiterated violations, certain couriers could undergo inspections or be even prohibited to deliver the goods on the territory.

Accordingly, not only is the liability threshold of Web Marketplace operators in relation to counterfeited products pre-empted in time but also in space, namely on a geographic scale as the former have to take steps to prevent suspect operators from even shipping goods to the USA.

One could wonder about today’s appropriateness of an ‘advanced’ protection which runs faster, exactly like the hare featuring Aesop’s fable, where the State and its Customs play a leading role, if not exclusive, compared to the more mindful yet undoubtedly ‘slower’ European one, like the tortoise, characterized by an underlyingly private-law approach.

Be that as it may, it shall be interesting to keep track of the Web giant’s next moves, during the year when, for the first time, Amazon has explicitly designated ‘fakeness’ as a serious matter to address in their yearly report to the stakeholders.

© BUGNION S.p.A. – March 2020