(by Gaia Gusmini and Elena Martini)

With sentence no. 3512 of 15 February 2019, the IP Court of Rome ruled on a case between Reti Televisive Italiane SpA (RTI) and Mrs. V.P., on the one hand, and Facebook Inc. and Facebook Ireland Limited (together, Facebook), on the other.

The plaintiffs requested an injunction against Facebook for content created by its users in February 2010. Facebook users created an unauthorised page containing offensive videos and comments about V.P. and RTI, links to videos available on unauthorised portals (in this case, YouTube) taken from the animated series “Kilari” – broadcast in Italy by RTI on an exclusive basis on its “Italia1” channel – and a photo of V.P. in the role of “Kilari”, the protagonist of the cartoon for which the same V.P. created the title song. According to the plaintiffs, the foregoing constituted infringement of the copyrights and trademark rights of RTI, infringement of the rights to reputation of both plaintiffs, and infringement of the rights to image, name and voice of the artist V.P. Despite the numerous warning letters RTI sent to Facebook, the disputed web page was only removed at the beginning of 2012. Therefore, the plaintiffs acted to have Facebook enjoined from the behaviour in question and condemned it to pay damages, indicated by € 250,000 for each of the plaintiffs.

Facebook defended itself firstly by arguing the lack of jurisdiction of the Italian judge. On the merits, the defendants affirmed the lack of their responsibility under the Italian applicable law (i.e. Articles 16 and 17 of Legislative Decree No. 70/2003), due to their alleged status of passive hosting providers, the alleged unsuitability of the warning letters received to identify the harmful contents, and the lack of a removal order issued by a public authority. Furthermore, they denied the unlawful nature of the contested behaviour, invoking their right of criticism and satire and arguing that the mere linking of public content, even without the consent of the owner of the rights, didn’t constitute an infringement of exclusive rights. Finally, they objected the non-existence of the damages claimed by the plaintiffs.

In rejecting the defences of Facebook, first of all the Court stated that the jurisdiction belonged to the Italian judge under the criterion of the forum commissi delicti set forth by Article 5 of the Bruxelles Convention of 1968, which also applies to Countries that did not sign the convention, such as the United States of America where Facebook Inc. has its registered offices, as it is implemented in Italy by law no. 218/1995. In the case at issue, the Court stated that reference should be made to the place where the harmful event took place, namely where V.P. is resident and where RTI carries out its business, without taking into account either the place where the defendants are located or the location of the servers where the users uploaded the disputed files. In this regard, the Judge also excluded the applicability of Facebook’s terms and conditions, which exclusively govern the contractual relationship between Facebook and its users.

On the merits, in line with the consistent case law, the Court found that the right of criticism and satire exception did not apply. In fact, the expressions found in the aforementioned page go beyond “the limit of continence, as they result in completely gratuitous and destructive attacks on the honour and reputation” of the artist and of RTI, which had hired the artist.

With regard to the publication of hypertext links to third-party portals, the Court stated that the dissemination of videos taken from the title song of the cartoon “Kilari” via Facebook, in the absence of a specific authorisation by RTI, amounted to a communication to a new public (i.e. a public different from the one originally authorised by the owner of the right, according to the ECJ case law in C-161/17 commented herein) and, as such, must be considered unlawful.

Having stated the above, the Court then focused on assessing Facebook’s liability for contributing to its users’ infringements. In this respect, having noted that the defendants provided a hosting service, the Court reminded that Article 16(1) of Legislative Decree no. 70/2003 rules out the liability of the provider if the latter: a) does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; b) upon obtaining such knowledge or awareness , by communication from the authorities in charge, it acts expeditiously to remove or to disable access to the information. On this point, the Court stated that “the two hypotheses taken into account by the law are alternative, in the sense that, if at least one of the two does not occur, the provider is not exempt from liability”.

The above is in line with the Court’s recent judgement in the Vimeo case commented here on this blog, and with an interpretation clearly oriented to comply with the provisions of Directive 2000/31/EC, implemented by Legislative Decree no. 70/2003, Article 14 of which doesn’t provide for the necessity of an order by the authorities in charge. The Court therefore stated that “the provider’s actual knowledge even if acquired ex post of the illicit nature of the content uploaded on its servers is sufficient to make them liable, since it is not necessary for them to wait for a removal order issued by a public authority“. This is independent of whether the activity carried out by the provider makes it an active hosting provider (i.e. a provider that intervenes on the materials uploaded by users) or a passive one (i.e. a provider that assumes a neutral position in relation to information uploaded by users). In fact, the Court continues, “even the so-called passive hosting provider, as soon as it receives  information of the offence committed by the users of its service, must act to allow the prompt removal of the illegal information uploaded to the site or to prevent access to it, as it is required to perform its economic activity in compliance with the diligence that is reasonable to expect in order to identify and prevent specifically reported illegal activities“.  In this case, the Judge stated, it had been documented that the defendant companies had been adequately informed of the illicit content of the disputed page and had not taken the reasonably due measures to prevent it being disseminated. Based on the above, the Court ascertained ” the liability of the two defendants for contribution by negligent omission” to the infringement of all the rights enforced by the plaintiffs, except for those on the “Italia 1” trademark, as Facebook never appropriated them to sell or advertise its services or products. The Court granted the request of injunction with penalty and condemned the defendants, jointly and severally, to indemnify V.P. in the amount of € 15,000 and RTI in the amount of € 15,595, further to paying the legal fees, as well as to providing for the publication of the decision at their own costs.