Patronymic Trademarks - The Supreme Court establishes the criteria for the lawfulness of use

With a decision rendered last July , the Supreme Court put an end to a dispute that took place in courts in 2011 and related to the use of the distinctive sign "Salini", which opposed two branches of the Salini family, both active in the construction sector, which for two generations shared the same entrepreneurial history.

The question brought to the attention of the Supreme Court concerned the legitimacy of the use by both parties of the common patronymic in the same economic activity (the construction of buildings), after the foundation by one of the two cousins of his own independent construction company, Salini Locatelli S.p.A., in direct competition with Salini Costruzioni S.p.A., until then the family company.

In its appeal to the Supreme Court, the appellant argued that the rule governing limitations on the use of trademarks (Article 21 of the Italian Intellectual Property Code) - which does not allow the proprietor of a trademark to prohibit third parties from using his name and address in their economic activity - should also apply to all distinctive signs, i.e. all those elements that identify a certain business activity to the public, including the company name.

The Supreme Court ruled that - although it is in principle admittable to include the founder's patronymic in the company name - it is in any event necessary to verify in concrete that the adoption of the patronymic is not likely to cause confusion.

Under Italian company law there is companies have to indicate the surname or the initials of the entrepreneur in the company name (Article 2563 of the Civil Code); in this regard the Court of Cassation pointed out that it is necessary to adopt a stricter judgement on the conformity of the use of the patronymic with the principles of professional correctness, taking into account both the likelihood of confusion between the two signs and the danger of association between them. A judgement of this kind cannot disregard a concrete verification of the competitive relationship between the two companies concerned.

In the present case, the two companies shared the same identifying "heart" of the sign, consisting of the word "Salini", and both were active in the same construction field; in this context, the inclusion of the element "Locatelli" was not sufficient to protect the company founded subsequently from a likelihood of confusion or association with the pre-existing company.

Referring to its well-established case law on this point (see, e.g., Italian Supreme Court, judgment no. 21403 of 14 August 2019), the Supreme Court stressed that, in the conflict between two companies using the same identifying sign, the one that is first enrolled in the register of companies with that sign must prevail. This point brought to the rejection of Salini Locatelli S.p.A.'s appeal, since the Court asceirtained the existence of a concrete likelihood of confusion and association between the two competing companies.

The judges of legitimacy emphasised the pro-competitive value of the rules limiting the exclusive right (potentially perpetual) of the owner on his distinctive signs (trademark and company name, respectively), reaffirming that the right to prohibit third parties from using a similar or confusable signs is severely limited in the event that the third party uses a similar or confusable sign in his economic activity, which, however, consists of his own name and surname.

The Italian law is clear in stating that this limitation must not result in undue exploitation of the reputation of another person's distinctive sign: only those uses of another person's sign which conform to the principles of professional fairness have to be tolerated by the trademark owner. The reference to a usage in conformity with these principles means that, if someone uses another person's distinctive sign - even if it is part of his own name and surname - in such a way as to unduly enhance his own product and in such a way that it constitutes an appropriation of the merits of others, such use must be considered unlawful as not in line with professional fairness.

Therefore, the competitor's personal name can lawfully appear on the goods and be used within the entrepreneur's distinctive signs, but on condition that any parasitic connections is excluded: the use of the patronymic reproducing an earlier distinctive sign is allowed only for the purpose of identifying the entrepreneur and therefore in a descriptive and informative way. Such descriptive use must, however, be excluded where there is a risk of confusion on the market, in light of the function concretely performed by the name in the commercial activity, aming to avoid the public being misled as to the identification of the producer and the origin of the goods.

Supreme Court, sec. I, decision of July 6, 2020, n. 13921

Agriculture and Limited Companies under Italian Law

Mattia Raffelli - Partner

Gilda Lucchetti - Trainee

1)  Farming in the form of limited companies

Agricultural activity, which historically in Italy has mainly taken the form of sole proprietorships or family businesses, can also be exercised under other corporate forms. The latter, in fact, on the one hand allow the aggregate exercise of the enterprise and on the other, are able to provide greater protection of personal assets.

2)  Criticism: the right of agricultural pre-emption

Agricultural pre-emption is the right to be preferred to others for the purchase of agricultural land when the owner decides to sell it.

According to the provisions of Article 8 of Law 590/1965, the right of first refusal belongs first of all to the direct farmer (or a farm in which at least half of the partners are direct farmers) who has been renting, for at least two years, the land offered for sale. In addition, pursuant to Article 7 of Law 817/1971, where the land is not leased to a direct farmer (or a farm), the right of first refusal arises for direct farmers (or farms in which at least half of the members are direct farmers) who own neighboring land. On the other hand, agricultural partnerships in which less than half of the partners are direct farmers are excluded from the right of first refusal, irrespective of whether they are professional farmers, and joint stock companies are always excluded, even if they have direct farmers as partners.

The ratio for these rules was, in the past, the need to encourage the purchase of agricultural land by direct farmers. In fact, the legislator's aim was to improve the productive structures of agriculture. In particular, the tenant pre-emption promotes (or establishes) new ownership by bringing together in the same person the ownership of the agricultural undertaking and the ownership of the land on which it is exercised, thus favoring the continuation of the same; the neighbor pre-emption enlarges direct farming ownership by combining neighboring land, thus creating larger and more efficient agricultural undertakings from a technical and economic point of view.

The lack of agrarian pre-emption for limited companies will therefore be an element to be carefully assessed in the choice of the form of company to be adopted in the specific case.

3)  The requirements for a farm established as a limited company

As already mentioned, farms can certainly also be set up in the form of limited companies. In fact, our legal system provides for the possibility of S.r.l. (Limited liability company), S.r.l.s. (Simplified limited liability company) e S.p.a. (limited companies), may take on the status of “Farm” provided, however, that they meet the following three essential requirements:

a) exclusive exercise of farming activities and related activities;

b) compulsory indication of “Farm” status;

c) possession of certain professional qualifications.

A. Exclusive exercise of farming activities and related activities

As regards the first requirement, companies must have as their exclusive object the exercise of agriculture and related activities.

In this regard, Article 2135 of the Civil Code introduces a definition of these activities which, in brief, concern:

- the cultivation of the land;

- forestry;

- animal breeding;

- all other related activities.

The law literally specifies that 'Cultivation of land, forestry and livestock farming are activities aimed at the care and development of a biological cycle or a necessary stage of that cycle, of a plant or animal nature, using or capable of using land, woodland or fresh, brackish or sea water'.

With regard to related activities, these are defined as:

- activities aimed at handling, preserving, processing, marketing and adding value to products obtained mainly from the cultivation of land or forests or the rearing of animals;

- activities aimed at providing goods or services using mainly farm equipment or resources;

- other activities, e.g. management of agritourisms.

Connected activities, therefore, take place alongside the main activities and aim to make the agricultural undertaking multifunctional. In order to be considered connected, account is taken of both the objective element, i.e. the activity carried out, and the subjective element, i.e. that the activity must be carried out by the same entrepreneur as the main activity.

B.   Compulsory indication of “Farm” status

The first paragraph states that the name or company name of companies whose object is the exclusive pursuit of the activities referred to in Article 2135 of the Civil Code must include the words "Farm". It should be pointed out that this is obviously not a new type of company: the companies that can be set up are still those referred to in the Civil Code, which, in the case of the exclusive exercise of agricultural activities, must bear the indication "Farm" in the name or company name.

C.   Possession of professional qualifications

As to the third and last requirement, pursuant to Article 1 of Legislative Decree no. 99/2004, at least one director must be a professional farmer (or a direct farmer if he also meets the requirements for being a professional farmer). In view of the possibility that, in limited companies, the administration may also be entrusted to non-members, this could lead to the case of an agricultural company in which none of the partners is an agricultural entrepreneur or direct farmer. Even in the case of a single-member company, the presence of at least one director with the above-mentioned requisites allows the company to qualify as a farm and gain access to the related benefits.

It should also be noted that the qualification of professional agricultural entrepreneur (in Italian, I.A.P.) can be conferred by the director to only one company, in order to avoid the creation of fictitious administrative offices, with the sole purpose of obtaining the benefits due to farms.

4)  The procedure for setting up a farm in the form of a limited company

The farm can therefore be set up in the form of a limited company if the three above-mentioned requirements are met.

Particular attention must therefore be paid to the figure of the qualified director.

First of all, a "professional agricultural entrepreneur (I.A.P.) is a person who, possessing professional knowledge and skills within the meaning of Article 5 of Regulation (EC) No 1257/1999, dedicates at least fifty per cent of his total working time, either directly or as a partner in a company, to the agricultural activities referred to in Article 2135 of the Civil Code and who derives at least fifty per cent of his total income from such activities".

Normally, if you are a direct farmer you also meet all the requirements to be considered a professional farmer, but this is not necessarily the case, because the legal requirements for these two professions operate on two different levels.

Below, without any claim to completeness, is the sequence of the most significant requirements for setting up a farm in the form of an ordinary and/or simplified limited liability company:

1)   Setting up of the farm in the form of an ordinary and/or simplified limited liability company;

2)   opening a VAT number;

3)   opening of a certified e-mail address;

4)   registration of the company in the ordinary section of the Companies' Register and in the REA (Economic and Administrative Register) of the province where the company's registered office is based;

5)   acquisition by the company of an established farm and/or setting up of a farm by the company, by means of renting the rustic fund and/or loaning it for use;

6)   submission of the application for “Inizio attività” at the Companies' Register of the province where the company's registered office is based, with simultaneous registration of the company in the “Special Farm Section”.

Finally, the most important task following the setting up of the company, the opening of the VAT number and the other tasks not included in the above list (such as the choice of the applicable VAT regime) will obviously consist in the acquisition or ex novo setting up of a farm.

The stop of Dismissals: what the 2021 Budget Law could provide for.

Roberto Ninno - Senior Counsel

Carlotta Pecora - Trainee

Since the beginning of the Covid-19 pandemic, the main measures in the field of employment have concerned the issue of social measures and the stop of dismissals. In reading the draft of the 2021 Budget Law drawn up by the Italian Senate, it seems predictable that 2021 will also see new .

These issues are inevitably linked, because of in view of the granting of a further 12 weeks of social measures, the stop of dismissals will also be extended until 31st March 2021, so thereby there will be:

• prohibition of individual dismissals on justified grounds.

• prohibition of collective redundancies.

• suspension of ongoing dismissal procedures.

The assumption behind the extension of the stop of dismissal seems to be exactly based on the possibility to activate the social shock absorbers provided by Italian law (i.e. CIGO, CIGS, CIGD, FIS) for employees: those allow the employee to keep his job and – on the other hand - the employer to be assisted by the State in paying his employee’ remuneration.

However, nowhere in the Law it’s written something about the case where the employer didn’t use or activate the social shock absorbers but considers that there is a justified grounds for dismissal of one of his employees: by the way, just because of the silence of the Law, it could be inadvisable activate dismissal procedures or proceding with ongoing dismissal procedures during the state of emergency.

Until today, from the beginning of the Covid-19 pandemic, a several legal provisions have imposed a stop to new and ongoing dismissal procedures based on justified grounds: from the “Cura Italia” Decree (cfr. Art. 46 of Decree-Law No. 18/2020), to the “Rilancio” Decree (Decree-Law No. 34/2020) to the “Rilancio 2” Decree (former August Decree Law No. 104/2020) and up to the issuance of the “Ristori” Decree (Decree-Law No. 137/2020 of 28 October 2020).

Therefore, until 31 March 2021, employers can’t:

• start the collective dismissal procedure provided for Law no. 221/1991.

• start the dismissal on justified grounds procedure provided for Article 3 of Law no. 604/1996.

However, there are also cases in which the prohibition shall not apply:

• definitive termination of the undertaking's activity, resulting from the liquidation of the company without any continuation, even partial, of the activity;

• bankruptcy, without provisional operation of the undertaking, or its cessation is ordered;

• company collective agreement entered by the most representative trade unions at national level, as an incentive to terminate the employment relationship.

In addition, there will remain outside the block dismissal for misconduct and dismissals for justified subjective reasons, including a disciplinary dismissal, as well as dismissals for reaching the maximum age limit for receiving the old-age pension.

The exclusion also includes:

• redundancies for use of the quota 100 pension;

• redundancies due to exceeding of the compulsory retirement period;

• dismissals of domestic employees’, since in such cases the termination is ad nutum.

The foregoing is in the draft of 2021 Budget Law; we just have to wait for the end of the year and for any further new and final measures on the issue of dismissals.

3d Printing and Fashion. A Focus on IP.

Gianpaolo Todisco - Partner

3D technology and opportunities created by the introduction of 3D printers is disrupting the standard supply and manufacturing schemes of traditional industries like healthcare, art and even food.

The combination of advancements in printing technology, the more and more powerful personal computers, the growth in online commerce, and the rising market demand for 3D printed objects has caused a recent flare of 3D printing technology.

As 3D printers have become increasingly accessible to the public, websites and online platforms that enable the sharing of CAD files have grown in popularity as these websites enable the sharing of applications that enable the consumer to directly manufacture an object from a source file.

The availability of 3D printing to end consumers and the ability to create objects is also impacting on the fashion world as consumers are today beginning to enjoy certain fashion products which are 3D printed.

However, the “do it yourself” industry is also raising many questions on the effects and the lawfulness of this new manufacturing procedure and a number of legal issues have arisen in intellectual property law driven industries like fashion.

I.                    What is 3D printing?

3D printing is a process of making three-dimensional solid objects from a digital file by placing successive layers of material until the entire object is created. Each of these layers can be seen as a thinly sliced horizontal cross-section of the eventual object. In order to create a product through a 3D printer, users make a virtual design of the object they want to print or create, and then to prepare a digital file in a compatible program suitable for printing (usually a CAD file). Users can create CAD files from scratch when the appropriate file is uploaded in the 3D printer, and then printer creates the object layer by layer.

II.          3D Printing and Fashion

Improvements in the 3D technology has increased its applicability on the fashion industry which has begun experimenting 3D printing. Recently, multinational footwear maker New Balance launched a collaboration with Formlabs to manufacture a sneaker with upgraded 3d printed forefoot. San Francisco based Continuum is a clothing company that allows customers to design 3D printed bikinis (as well as other products) by inputting their body shapes and measurements.  Adidas, the giant footwear maker, has teamed up with a company called Carbon to make its first mass-produced 3D printed midsole. Carbon specializes in resin 3D printing and Adidas has tons of experience making sports and running shoes.

Consumers will be soon in a condition to manufacture their owns clothing at home. Is this something new? Not necessarily if we consider that before prêt-à-porter was introduced, certain bespoke clothing was not manufactured necessarily by tailors but also at home by family members of end users. However this innovative manufacturing system is shifting the designers capabilities from stitching to software programming.

Indeed well-known fashion institutes and design schools around the world have 3D printers on their campuses. They are also offering courses in the field of 3D printed fashion. These learning institutions are providing students access to body scanning technologies and wearable technologies. There is a good chance that some of those students, with exposure to new technologies, will end up launching 3D printed fashion products which will accelerate the mainstreaming of this concept and leave their sewing machines in a closet.

Also, 3D printed fashion involves turning movable/flexible material into clothing. 3D printed dresses can potentially be as revolutionary as the sewing machine was almost two-hundred years ago.

When 3D printing was first used in fashion, the process was quite slow. One of the first attempts at making a 3D printed piece of clothing took seven entire days with the printer running 24 hours a day. Plus, the 3D printers in those days did not offer flexible printing material. However, technology has improved. It does not take 7 days anymore and flexible printing material is also available. The flexible material is known as TPU 92A-1 and it can be washed and ironed just like normal cloth. FilaFlex is another flexible material used to make 3D printed clothing.

Most of the 3D printed clothing is printed using the selective laser sintering process. This method of 3D printing offers the ability to make intricate designs and achieve a high level of detailing which is a requirement with fashion and clothing.

3D technology will allow young designers to introduce their products to the world. Such designers have several challenges, including having to deal with long lead times and minimum orders. With 3D technology, emerging designers can simply print orders as they are placed rather than have to scrounge to obtain enough financing for minimum orders and being stuck with unsold stock. If nothing else, 3D printing will enable them to create a sample quickly and cost- effectively. The technology also provides opportunities for those designers to test the market on a small scale by printing limited quantities of their product to determine whether their item is acceptable to the marketplace.

The impact of 3D printing on the fashion system presents several peculiar implications typical of this industry. These issues stretch from intellectual property to distribution and sustainability.

a)           Intellectual Property issues

3D printing is an emerging digital technology that may disrupt certain areas of intellectual property law despite the its positive impact on the fashion industry.

Generally speaking, authenticity is also a potential issue that could affect consumers. How would a person know for sure that the design they are buying is indeed the work of the designer that is advertised?

Moreover the ability to quickly create, reproduce, modify, copy, transfer, share, post, and download CAD files for 3D printing has created complex intellectual property issues especially as the cost of 3D printers decreases.

As the manufacturing process is made easier with 3D printing 3D printers threaten owners of IP assets as fake goods can be manufactured by private persons in their homes. Indeed, 3D printing technology, is likely to create negative economic effects on holders of IP rights and their IP driven business models. The situation is not particularly visible yet, but as the technology improves and the prices for equipment and consumables goes down, 3D printing may become a mass phenomenon3D printing will potentiate the number of instances of infringement and overlap with other IPRs while exceptions, invalidity and exhaustion will be likely general infringement defenses.

This section will analyze the effect of 3D printing on three main intellectual property assets: Trademarks, Models and Copyright. 

1)           Trademarks

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. For certain authors, Trademark law is the most important form of protection for fashions and accessories being the most effective communication devices.[i]

Generally speaking, a trademark identifies the owner of the brand and prevents confusion among consumers. Needless to say, the fashion industry uses various types of trademarks. Traditionally fashion has used word marks to identify the goods of the manufacturers in the industry where it is common to find either personal names or fantasy names. The evolution of distinctive signs in recent decades has resulted in a variety of source identifiers other than traditional signs (eg, word and stylized trademarks). As a result, the legislature across the European Union and worldwide has broadened the capability for objects, actions, events and patterns, among others, to be registered as trademarks.

We therefore now commonly find that the Fashion Industry commonly files for the protection of pattern trademarks (which can be represented by an image that shows the pattern and how it is repeated) and position trademarks (which consist of a specific placement of a trademark on a product). However, where 3D printing seems to have a deeper impact, is on the three-dimensional trademarks, which are signs consisting of the shape of the goods.

However, many jurisdictions (like the EU) impose some limitations on registering shape marks. According to Article 4 (1)(e) of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks,  signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; and (iii) the shape, or another characteristic, which gives substantial value to the goods, should not be registered. It means that the functional shape cannot be registered as a trademark under EU law.

As 3D printers mainly serve functional purposes, it appears that the protection sought by fashion designers under an EU three-dimensional trademark would fine severe obstacles in obtaining the registration of the shape of a product manufactured with a 3D printer. We have to remember that recently Nestle lost a battle before the Court of Justice of the European Union (CJEU) for registering its Kit Kat’s four finger shape because the shape was functional and not distinctive.  Similarly, Lego’s three-dimensional red eight-stud brick shape could not be registered as a trademark, because the shape of the brick is necessary to obtain a technical result.

As many of the 3D prints will be functional shapes, these are excluded from the trademark registration but in that minority of the cases where a 3D print is distinctive but does not serve a functional purpose, it may be registerable.

However three-dimensional trademark find another obstacle when the registration is sought for fashion products.  In order to be registered as a 3D mark, the shape must also not have any aesthetic or functional purpose. If this is so, the possibility of protecting a product manufactured with a 3D printer under trademark law narrows down dramatically and the designer should then seek protection through a patent of industrial invention, utility model, or by registering models.

On trademarks, one last note is mandatory when we look from the prospective of a “do it yourself” manufacturer who creates products with a 3D printer. Needles to say that the 3D printing manufacturer generally has no right to use the trademark owned by a third party on the product manufactured with a 3D printer. However, he will always be able to claim general defenses to the trademark infringement. Under EU Law, these are generally “defensive” defenses like exhaustion, fair use, absence of genuine use and acquiescence, in addition to “counterattack” defenses like invalidity and revocation.

2)           Designs and Models

A design is defined as "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation".

Designs may be protected if:

• they are novel, that is if no design identical or differing only in immaterial details has been made available to the public;

• they have individual character, that is the "informed user" would find the overall impression different from other designs which are available to the public. Where a design forms part of a more complex product, the novelty and individual character of the design are judged on the part of the design which is visible during normal use.

Registered and unregistered Community designs are available under EU Regulation 6/2002, which provide a unitary right covering the European Union. Protection for a registered Community design is for up to 25 years, subject to the payment of renewal fees every five years. The unregistered Community design lasts for three years after a design is made available to the public and infringement only occurs if the protected design has been copied.

Thus, EU Design Law simply protects the appearance of products as defined by their specific ‘features’. These features may be the result either of ‘ornamentation’ which is applied to a product (i.e. a two dimensional - 2D - image) or the product itself (a model - 3D).

Aside the Community Designs, each member State has adopted a legislation to protect designs and models at a national level.

It should be noted that under the Design regulation, the exclusivity granted has certain limitations. The most relevant limitations are found in Article 20 of the Design Regulation  which are: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; and (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.

As far as the fashion industry is concerned, a notable case under the Dutch case law is the Nadia Plesner decision from the Court of the Hague.

Here the court balanced the fundamental right of Louis Vuitton to peacefully enjoy its property right (i.e. design right) against the artistic freedom. The court found that an artist was allowed to use LV’s design of a multicolor canvas as applied to one of its own expensive handbags as part of a drawing called Simple Living where the LV-bag was being carried by a malnourished African child (together with a ‘Paris Hilton-dog’). By the same token, even the use of the same drawing as the motive on a T-shirt was allowed for. The artist explained that the bag was used as a symbol and as part of an attempt to draw attention to what she believed was a problematic difference in attention given to celebrities and to the famine which was going on in Darfur.

Under this framework, users of 3D printing for artistic, political or satirical or other private purposes and even for spare parts, will find some freedom of expression beyond the limited structure of EU design regulation.

3)           Copyright

Generally speaking, we all know that copyright will protect the originality of a work and the creator’s right to reproduce it. This means that if copies of an original object are 3D printed without authorization, the creator can obtain relief under copyright law.

As we mentioned, anyone with access to a 3D printer (either at home or at a local print shop) is able to produce a tangible, usable product out of a digital design files (usually CAD files). CAD files are typically protected by copyright law and, for many business concerns, represent a highly valuable intellectual property asset.

On the other hand, despite its current and future potential importance to the economy, fashion can in some jurisdictions be awarded the same level of copyright protection as other creative industries.

This type of protection is sought by fashion houses in order to extend IP rights to products protected under the design regulation (which usually up to last 25 years) to a period of time usually equal to 70 years after the death of the author.

A fashion manufacturer who creates products with a 3D printer must always keep in mind that the creating a fashion product with a 2D printer can lead to a double step copyright infringement: the software file and the artistic and creative elements of the fashion product.

b)           Supply Chain and Distribution.

Traditional manufacturing is based on the premise of identical, high-volume production. However, such structures are proving increasingly insufficient when faced with the ever-growing demand for customization, faster turnaround times and more efficient supply chains.  The traditional approach to manufacturing sees raw materials sourced and products manufactured in large centralized factories. After production, the products are shipped to the end consumer.

3D printing introduces the concept of “distributed manufacturing”, which involves a digital network of decentralized production sites, spread across locations and connected by digital technology. Driven by digital connectivity, distributed manufacturing allows manufactures to simplify and minimize their material supply chains through online, digital platforms and data sharing. Distributed manufacturing could even involve producing parts in different locations before being assembled in a central location.

Distributed manufacturing can make supply chains more efficient.

Distributed production can reduce inventory, logistics and production costs in several ways. Since goods are produced close to, or at the point of need, production can move closer to the end customer. This not only eliminates costly logistics expenditure but also allows companies to produce goods close to their respective markets. Additionally, by storing a digital inventory as opposed to warehouses of physical stock, companies can also significantly reduce inventory costs. As far of the fashion industry is concerned, a better management of the inventory and stock allows important savings and reduces waste of unsold collections and products. 

With the growing demand for customized products, manufacturers must increasingly find ways to tailor their goods to the specific needs of their customers. Traditionally, having a single, custom item designed, manufactured and delivered would mean long waiting times and higher costs for the consumer. However, distributed manufacturing, with its decentralized, “scaled-down” production, offers greater flexibility and agility to produce customized goods, adding value at a comparable price to mass-produced goods. A good example is Adidas: the sportswear giant has recently opened what it calls “Speedfactories” in Germany and the United States. These fully automated factories have been created to rapidly produce small batches of personalized sneakers, and according to Adidas, the company is able to bring its sportswear to market three times faster than with traditional manufacturing. While the majority of Adidas shoes are made in Asia, building its Speedfactories closer to consumers in both American and European markets has led to a much quicker shipping and, therefore, a better customer experience.

Distributed manufacturing offers the opportunity of rethinking traditional supply chains. Raw materials could be shipped to distributed locations instead of one centralized facility, offering greater flexibility, for example. Another opportunity is moving shipping closer to the end customer, which would impact both manufacturers and shipping companies, who may switch to an “on-demand” production service as opposed to storing physical inventories. 

Last, 3D printing will allow companies and brands to create, in real-time, items tweaked and personalized by the consumer

The Unlawful Filing of an Application for an "Incomplete" Composition with Creditors and the Liability of Managers.

Stefano Bonacina - Associate

Gilda Lucchetti - Trainee

It is increasingly common for companies in a state of crisis to file incomplete applications for the composition with creditors (also known as "uncomplete" composition).

Italian Bankruptcy Law allows entrepreneurs in a state of crisis to file an appeal containing the request for a composition with creditors, while reserving the right to submit the exact proposal, 8containing the plan and the specific documentation required by the Bankruptcy Law) within a specific time limit set by the judge. Within this deadline, which by law is between 60 and 120 days and may be extended for a period not exceeding 60 days for justified reasons, the company may alternatively file a proposal for debt restructuring or a composition with creditors. If, however, the deadline expires the debtor loses the associated benefits and may be declared bankrupt.

The benefits associated with this procedure are known. In fact, it allows the debtor to immediately obtain the benefit of the protection of its assets, by impeding the enforcement or precautionary actions on the debtor's assets.

However, the purposes underlying the filing of an application for an “uncomplete” composition with creditors are not always truly genuine and are aimed at illegally postponing the moment of the company’s bankruptcy. This modus operandi, if it is verified, may however cause the liability of the company's management body.

A recent judgment of the Court of Milan, (published on 1st  June 2020), has examined the liability of the managers, clarifying that the conduct of the director who submits an application for composition with creditors in the presence of the assumption of the state of insolvency of the company cannot be considered in itself and automatically generating liability for damages, even if the proposal for composition is, in theory, declared inadmissible or admission is subsequently revoked (articles 162 and 173 of the Bankruptcy Act). However, the directors' liability in this sense can only be incurred when the application is to be considered abusive, i.e. solely aimed, with reasonable probability, at fraudulently postponing the company's bankruptcy to the detriment of the creditors.

The damage connected with this case may, for example, be derived from the costs "unnecessarily" incurred by the company following the filing of the application for composition with creditors, filed at a specific time when, since the conditions for access to composition with creditors did not exist, the directors would have had to apply for the bankruptcy of the managed company on their own.

A previous ruling of the Court of Milan, (published on 30 October 2019) had also clarified that the adoption of delaying tactics - including the filing of an “uncomplete” appeal for composition without the production of the plan - may entail a specific liability of the liquidator for the aggravation of the company’s  bankruptcy state. In such a case, the resulting damage could be derived from the otherwise avoidable increase in the company's debt situation.

It should be noted that the early designation of the Creditors’ Trustee in the bankruptcy procedure - recently introduced into the Bankruptcy Law - has helped to reduce the number of appeals filed by those companies which, by abusing the institution and taking advantage of the suspension of any executive actions, had the sole purpose of trying to postpone the declaration of bankruptcy and thus prevent creditors from satisfying their claims on the remaining assets.

The EU Competition Authority investigates for Benetton’s abuse of economic dependence in thier franchising agreements.

Gianluca Belotti - Of Counsel

The Italian Antitrust Authority has commenced an investigation against Benetton for an abuse of economic dependence pursuant to Law no. 192 of 18 June 1998, regarding their franchising contracts stipulated with franchisees.

This is a very unusual measure which shows the Authority's attention to this type of conduct and which we would like to point out for this reason.

According to the Antitrust Authority, Benetton would have required its retailers to maintain a sales structure and a commercial organization rigorously designed according to its needs, in view of the fact that Benetton contractually guaranteed the possibility to set rules and organizational parameters suitable to stiffen the business structure of the franchisee, to the point of preventing a possible conversion of the franchsing scheme with another supplier.

The Authority censures Benetton's discretionary use of certain intrusive contractual clauses that would allow it to influence the reseller's strategic choices, such as the definition of proposals and/or purchase orders, not only in terms of timing, but also in terms of quantity.

In this way, Benetton could have significantly affected the economic activity of the franchisee, who would in fact be prevented from managing his business independently.

Benetton holds an important position in the clothing market, with a brand that enjoys a strong commercial appeal, and therefore the matter is relevant not only in terms of the individual contractual relationship, but also for the protection of (fair) competition in the market. The use of the contractual model in question by an entity that manages a significant franchising network could, in fact, have a significant impact on all the entrepreneurs which create the network in question, to the detriment of fair competition in the market.

This would, moreover, lead one to believe that, when the abusing company does not enjoy a position of national importance, the Authority would not consider itself competent, leaving the case to the civil court.

The investigation, for the moment, does not cover the possible imposition of a resale price, the lawfulness of which in franchising agreements has always been in discussion, unlike other distribution/resale contracts where it is, instead, always considered illegal.

Sustainability and Corporate Governance: the online consultation launched by the European Commission.

Mattia Raffaelli - Partner

More and more often we hear about sustainability, a term now common in the common language.

But what exactly is meant by sustainability?

In short, it indicates the impact that humanity has on the planet.

Usually associated with three major areas (environmental, economic and social) sustainability is beginning to gain more and more importance also within companies, offering the opportunity to become an integral part of a strategic vision.

Sustainability can represent, for example, a key element for companies in order to create a solid and recognizable image, allowing them to access new capital and better manage risks (think, for example, how sustainability is integrated within supply chain strategies).

The issue is also of growing interest at the political level, so much so that the European Commission launched an online consultation on sustainability in corporate governance on 26 October 2020.

One of the brakes to sustainable development has been identified, by the company law experts appointed by the European Commission, in the systems of corporate governance.

Company directors, in fact, according to the results of this research, would not give sufficient importance to sustainable objectives, since they would be considered as goals that are not directly profitable and too far apart in time.

Research conducted by the EU has shown that in recent years EU listed companies are continuing to focus more on short-term shareholder benefits than on long-term shareholder benefits, often without adopting a view that shareholder welfare is not attainable without taking into account the welfare of the stake-holders.

The European Commission believes that there is a need for concrete political intervention to contribute to the lengthening of the time horizon in the decision-making processes of companies and thus facilitate the path towards a more sustainability-oriented governance.

On the website of the European Commission https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/12548-Sustainable-corporate-governance/public-consultation a public consultation has been launched with the declared objective of defining the outlines of a political intervention that can promote a cultural change deemed absolutely necessary and urgent.

The consultation will end on February 8, 2021 and has the following aims:

• Gather the views of stakeholders on the need and objectives of EU intervention, as well as on different policy options;

• Collect data that can be used to better assess the costs and benefits of different policy options

• Gather further knowledge on some specific issues, in particular regarding national frameworks, enforcement mechanisms and current case law.

A very wide public is called upon to respond: from private citizens to the business world, from NGOs to large industrial groups and the bearers of widespread interest.

But it is clear that corporate governance is the first to be called upon to respond to this invitation, to measure itself against the phenomenon of sustainability that no longer seems to be neglected. An evolution that in the intentions of the European political initiative should be planned in the long term, so that in the future it does not become an urgency.

It is no coincidence that the UN Agenda 2030 also moves in this direction, promoting one of the most important initiatives aimed at a profound cultural change, which gives an important role to the private and corporate sector for the achievement of the 17 objectives of sustainable development:

1. Zero Poverty

2. Zero Hunger

3. Good health and well-being for people

4. Equal and quality education

5. Gender equality

6. Clean water and sanitation

7. Clean and accessible energy

8. Decent work and economic growth

9. Industry, Innovation and Infrastructure

10. Reducing inequalities

11. Sustainable cities and communities

12. Responsible consumption and production

13. Climate change

14. Underwater life

15. Life on earth

16. Peace, justice and strong institutions

17. Partnership for objectives

Privacy by default in practice according to the Spanish Privacy Authority.

Andrea Antognini - Of Counsel

With few exceptions the GDPR has been adopted identicallly throughout Europe. In Spain, the Spanish Privacy Authority has had its say on the general principle of data protection by default, a concept in the abstract clear but difficult to decline in practice:

According to the Spanish Privacy Authority the data controller (the company) must, by default, process only the data necessary for each specific processing purpose. Exactly the opposite of when, in the online form, you see that the box for receiving the newsletter is "preflagged".

The Spanish Privacy Guarantor's guide [https://www.aepd.es/sites/default/files/2020-10/guia-proteccion-datos-por-defecto.pdf] offers a practical vision to help apply this principle to data processing in accordance with the provisions of the GDPR and the guidelines adopted by the European Data Protection Committee.

The addressees of this document are data controllers, DPOs but also developers or providers, insofar as they provide products and services to data controllers and seek to ensure that they comply with the requirements of the GDPR.

The concept of privacy by default imposes the need to segment the use of the set of data between different processing operations and between the different stages of processing, so that not all operations carried out as part of a processing operation are performed on all data, but only on those that are necessary and at times when it is strictly necessary.

The treatment must be minimally intrusive (minimum amount of personal data, minimum extent of treatment, minimum storage period and minimum accessibility to personal data) and without the need for intervention of the person whose data are processed.

The execution of these measures focuses on optimization, configurability and limitation strategies.

The objective of optimization is to analyze the processing from the point of view of data protection, which means applying measures in relation to the amount of data collected, the extent of processing, their storage and accessibility.

The second strategy is the configuration of services, systems or applications, which must make it possible to establish parameters or options that determine how the processing is to be carried out, and which are likely to be modified by the company and also by the user.

Finally, the limitation ensures that, by default, the processing is as respectful of privacy as possible, so that the configuration options are adequate, to those parameters that limit the amount of data collected, the extent of processing, its storage and its accessibility.

The guide also contains an operational and editable document with the measures to be adopted for the implementation of the default data protection strategies in Spanish and also includes a chapter on documentation and auditing, necessary to demonstrate compliance with the standard.

The principle of privacy by default does not derive from the result of an analysis of the risks to rights and freedoms, but are measures and guarantees that must be established every time there is a processing of personal data.

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.