On May 25, 2012 the specialized section on trademarks and patents of the Court of Florence issued an interesting decision on the role and connected liabilities of the search engines in connection with their indexing and caching activities related to alleged unlawful contents disseminated on the internet.
The lawsuit was started through a request for precautionary measures filed by an Italian company against Google Inc. (hereinafter “Google”) in connection with the indexing and caching on its well-known search engine of the internet pages of a website which reported different registered trademarks of the claimant without its prior authorization. Oddly enough the litigation was conducted only against Google and it did not involve the owner of the relevant website which, as pinpointed in the decision, remained unknown.
2. The decision
The Court has dismissed the case denying the issuance of the precautionary measures requested by the claimant, asserting that: (i) the use of the registered trademarks within the relevant website did not represent an infringement of the rights of the claimant since it constituted an expression of the right of criticism of the website’s owner in connection with the activities carried out by the claimant (this point is strictly related to the factual background of the case); (ii) in any case, Google as search engine cannot be considered liable for the activities carried out by the owner of the website following the provisions of the Legislative Decree of April 9, 2003 no. 70 (hereinafter “E-commerce Decree”) through which has been implemented in Italy the Directive “ 2000/31/EC (hereinafter “E-commerce Directive”).
Despite the Court recognized that the contents hosted on the relevant website were not “unlawful” – considering that the use of the trademarks within the relevant website did not constituted an infringement of the claimant’s exclusive rights – the Court decided, in any case, to face the issues related to the liability of the search engines in connection with the unlawful contents posted on the websites which are indexed and cached through their services.
2.1 Search engines’ liability under Italian law
In this respect the decision might represent an important step forward in the ongoing debate on the issue since the Court has expressed some principles related to specific aspects of the ISPs’ liability regime under Italian law in a way that constitutes a novelty in the national case law on the matter.
In particular, the Court after having clarified that Google in the providing of the services related to the search engine can be considered as a “caching provider” and therefore subject to the provisions of sections no. 15 and no. 17 of the E-commerce Decree (which have implemented the sections no. 13 and no. 15 of the E-commerce Directive) has focused its attention on the duties and liabilities upon the caching providers in the cases like the one at hand.
Indeed, the Court has recalled that pursuant to the abovementioned sections of the E-commerce Decree, the caching providers do not have any obligation to monitor contents transmitted by internet users and they are not liable for such contents, unless they:
(i) do not modify the information/contents;
(ii) comply with the conditions on access to the information/contents;
(iii) comply with rules regarding the updating of the information/contents, specified in a manner widely recognized and used by industry;
(iv) do not interfere with the lawful use of technology, widely recognized and used by industry, to obtain data on the use of the information/content; and
(v) when they become aware of illegal activity or unlawful information (e.g. defamatory contents, intellectual property right infringements or third parties’ rights) stored or transmitted through their services they do not promptly report these violation to the competent judicial or administrative authority; or
(v.i) after having received an order from the competent judicial or administrative authority, they do not promptly remove infringing contents.
Having clarified such general rules applicable to the caching providers’ liability which constitute the backbone of the “limited liability” regime for ISPs drawn by the E-commerce Directive , the Court had the chance to clarify when and how the caching providers, as well as the other ISPs, can be deemed “aware” of the illicit nature of the information/contents transmitted through their services.
This clarification constitutes the most innovative aspect of the decision.
Indeed, while pursuant a constant trend of the Italian case law to made the ISPs aware of the illicit nature of the information/ contents stored or transmitted through their services it is sufficient a detailed notice sent by the relevant right holder, in the case at hand the Court of Florence stated that to reach this goal and therefore to activate the consequences in terms of ISP’s liability as described in the points (v) and (v.i) above it is necessary that:
(I) a competent authority has declared the illicit nature of the information/content; or
(II) a competent authority has issued and sent to the relevant ISP a specific removal order; or
(III) the information/contents caused damages to the right holder that have been ascertained by a decision of a competent authority and such decision has been communicated to the relevant ISP.
As briefly described above the main features of the recent decision, it is a matter of fact that such decision, even if issued by a first instance Court in the context of an interim proceedings, might produce significant effects in the ongoing debate on the ISPs’ liability regime under Italian law.
Indeed, the decision, by requiring the issuance of a decision by a competent authority not only to obtain the removal of the illicit contents but also for the verification of the illicit nature of the content transmitted by the relevant ISP would recognize to the latter a wider space of limited liability than the one provided by the prevailing regulations.
In this light, probably the recent decision goes beyond the provisions of the E-commerce Directive as well as of the E-commerce Decree and it would made more difficult for right holders to obtain the removal of illicit contents without the intervention of the competent authorities (i.e. the Courts).
Only the time will reveal whether the principles expressed in the analyzed decision will be followed by other Courts. For the time being it worth nothing that such decision, by strengthening the position of ISPs, constitutes an inversion of the recent trends of Italian case law and it will surely influence in depth the ongoing debate on the matter. The full text of the decision in Italian language is available here.