Applica la regola, posta da Jack Daniel’s Properties, Inc. v. VIP Products del 2023, per cui il Roger test (esonero da legge marchi se c’è A) vero free speech/rilevanza artistica, e B) assenza di esplicit misleading del consumatori) non si applica quando il segno altrui è usato come marchio.
REgola di buon senso, emergente pure dal nostro art. 21 cod. propr. ind. (ove però manca una previsione regolante il conflitto tra marchio ed esercizio della livbertà di espressione)
La corte segue l’orientamento dominante basato sulla infruibilità dell’esenzione da parte dell’hosting cd attivo, fatto proprio da Cass. 7708 del 2019.
Che però non convince: la correponsabilità è regolata dalla’rt. 2055 cc per cui la colpa deve riguardare le singole opere azionate. A meno di aprire ad un dolo eventuale o colpa con previsione: ma va argomentato in tale senso.
Più interessnte è il cenno alle techniche di fingerpringing , DA INQAUDRASRE APPUNTO NELLA FAttispecie di responsabilità aquiliana. Solo che per far scattare l’esenzione ex art- 16 d lgs 70-2003 bisogna provare che era “effettivamente a conoscenza”: e non si può dire che, prima della diffida, Vimeo lo era o meglio che, adottando questa o quella misura, lo sarebbe certametne stato (misure adottabili ma fino a che livello di costo, poi? Tema difficile: è come per le misure di sicurezze a carico delle banche. Solo che queste rischiano un inadempimento verso i correntisti/controparti contrattuali, mentre Vimeo rischia l’illecito aquiliano: e c’è differenza tra i due casi per la soglia di costo, se -nell’ipotesi contrattuale -nulla è stato patutito ?).
Giustamente il T. ritiene irrilevante l’argomento per cui il pubblico, che sceglie questi cibi, è attento oltre la media e non si fa ingannare.
Infatti sono acquisti fatti di solito in fretta e senza leggere i dettagli in etichetta; e comunque possono essere fatti anche da chi di solito non acquista cibi del genere, rientrando allora nel publico rilevante
Pemsel ricorda il nesso con la disciplina delle pratiche commerciali scorrette per ingannevolezza (da noi: art. 21 ss cod. cons.): concetto che non si discosta da quello della disciplina dei marchi de qua (art. 14.1.b cod. cons.).
Marcel coglie una differenza però , relativa ai materiali su cui ancorare il giudizio (le informazioni in etichetta non contano per i marchi, contano per la disciplina consumeristica). Forse esatto, alla luce dell’ampiezza del concetto di “pratica commerciale” (da noi: art. 18.1.d) del cod. cons.). Solo che anche un marchio in sè non ingannevole può diventare tale con l’uso (art. 21.2 c.p.i.): quindi la differenza potrebbe svanire.
<<The above-mentioned circumstances surrounding the application for the contested mark, as well as the chronology of the subsequent events, indicate that the EUTM proprietor’s filing strategy was used with the intention to circumvent the obligation to prove genuine use of the mark. Such conduct cannot be considered as a legitimate business activity having a justifiable commercial logic but, on the contrary, is incompatible with the objectives pursued by the EUTMR and may be considered as an ‘abuse of law’ (by analogy, 07/07/2016, T-82/14, LUCEO, EU:T:2016:396, § 52, 22/07/2019, R 1849/2017-2, MONOPOLY, § 78).
While it is true that there is no requirement for an EUTM applicant to declare or to show its intent to use a mark at the moment of its filing, there is also no justification for protecting trade marks unless they are actually used on the market according to the genuine use requirements prescribed by relevant (national/EU) law. Therefore, registrations that are intended to prevent third parties from registering or using identical/similar rights for identical/similar goods and/or services in the future (in relation to all or some of the identified goods and/or services), without any honest commercial logic, may be an indicator of the applicant’s dishonest intention (29/09/2021, T-592/20, Agate / Agate, EU:T:2021:633, § 69) and therefore considered made in bad faith.
All of these circumstances imply that the intention of the EUTM proprietor was indeed to take advantage of the EU trade mark rules by artificially creating the situation where it would not have to prove genuine use of its mark for the contested goods and services which are identical to those covered by its previous, identical EUTM registration.
Taking into account all the factual circumstances relevant to the present case, it is concluded that the filing of the application of the contested EUTM, insofar as it includes the goods and services already covered by an earlier EUTM registration, namely those mentioned above, was made without any commercial logic and thus, in bad faith.
As to the remaining contested goods and services that are not strictly identical to those covered by the EUTM proprietor’s earlier marks, the Cancellation Division considers that bad faith has not been proven, so the request for a declaration of invalidity should be rejected also as far as it is based on this ground (by analogy, 18/05/2023, R 836/2022-4, Cayenne, § 69)>>.
Sono state invece rigettate altre ragioni di nullità (mancanza di distintività ed altri motivi di malafede).
Eleonora Rosati in IPKat ci notizia della confrma d’appello EUIPO secondo cui non è intrinsecamente distintivo il marchio seriale di Prada sotto rappresentato
o perlomeno non lo è per la maggior parte dei prodotti indicxati indomanda.
E’ infatti dal pubblico perceptico come decorativo, non come indicatore dell’rigina imnrpenditoriale (giudizio dubbio, data ormai la sua notorietà, ma forse alla fine esatto) e comnque siffuso nel commercio, almeno per certi prodotti
<<24 That case-law, which was developed in relation to three-dimensional trade marks
consisting of the appearance of the product itself, also applies where the contested mark is
a figurative mark consisting of the two-dimensional representation of that product. In such
a case, the mark likewise does not consist of a sign unrelated to the appearance of the
products it covers (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige),
EU:T:2015:215, § 24 and case-law cited). The same applies to a pattern mark consisting
of the two-dimensional representation of that product.
25 That is also the case for a figurative mark consisting of a part of the shape of the product
that it represents, inasmuch as the relevant public will immediately and without further
thought perceive it as a representation of a particularly interesting or attractive detail of
the product in question, rather than as an indication of its commercial origin (21/04/2015,
T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 25 and case-
law cited). The same applies to a pattern mark consisting of a part of the shape of the
product that it represents>>
Ineressanti sono poi le consiederaozipni sul raggruppamento dei prodotti in classi omogenee al fine del giudizio di distintività a
L’ufficio esclude la confondibilità ordinaria ex art. 8.1, EUTMR per carenza di affinità merceologica (corde e packaging per imballaggio vs. ceramiche etc.)
Riconosce però la tutela allargata per ingiustificato vantaggio dalla notorietà altrui ex art. 8,.5 EUTMR
<<It has to be recalled that the contested goods have a link to the earlier reputed goods and services, as explained in section c) above. Furthermore, the earlier mark enjoys a high reputation in the European Union in connection with video games. Consequently, and according to case-law, earlier marks with a strong reputation will be recognised in almost any context, particularly as a result of their above-average quality, which reflects a positive message, influencing the choice of the consumers as regards goods or services of other producers/providers.
Furthermore, it is important to underline that the earlier trade mark is inherently distinctive in relation to the goods and services they are registered for. This fact makes it even more likely that the applicant will attempt to benefit from the value of the opponent’s sign since such a distinctive trade mark as “Lara Croft” will be recognised in almost any context. The mere fact that the applicant changed the position of two letters will in no way impede such a recognition, as the structure of the contested sign – female Christian name and last name – is still identical to the earlier right.
An unfair advantage occurs when a third party exploits the reputation of the earlier mark to the benefit of its own marketing efforts. In practice, the applicant ‘hooks onto’ the renowned mark and uses it as a vehicle to encourage consumer interest in its own products. The advantage for the applicant is a substantial saving on investment in promotion and publicity for its own mark, since it benefits from that which has made the earlier mark famous. This is unfair because it is done in a parasitic way (08/02/2002, R 472/2001 1, BIBA/ BIBA).
Furthermore, in view of the earlier trade mark special attractiveness, it may be exploited even outside its natural market sector, by merchandising (as demonstrated by the opponent). Hence, as the earlier mark has a high reputation and the commercial and as especially the merchandising context in which the goods are promoted are very close, the Opposition Division can accept the opponent’s claim that consumers of goods in Class 9 and in Class 22 make a connection between the applicant’s goods and the reputed mark Lara Croft used by the opponent.
The opponent has invested large sums of money and effort in creating a certain brand image associated with its trade mark, by creating a fictious character which attracts the admiration of the public, inciting them to be a close as possible to this character (for instance women dressed like Lara Croft in fan events), and one way of doing this is by buying merchandising goods, bearing the name Lara Croft.
This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods for which it is registered. Consequently, Article 8(5) EUTMR aims at protecting this advertising function and the investment made in creating a certain brand image by granting protection to reputed trade mark, irrespective of the similarity of the goods or services or of a likelihood of confusion, provided it can be demonstrated that use of the contested application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by using for its services a sign that is similar (or identical) to one widely known in the market and, therefore, misappropriating its attractive powers and advertising value, or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism, where the applicant is allowed to take a ‘free ride’ on the investment of the opponent in promoting and building up goodwill for its mark, as it may stimulate sales of its products to an extent that is disproportionately high for the size of its promotional investment. In its judgement of 18/06/2009, C 487/07, L’Oréal, EU:C:2009:378, § 41, 49, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark, or of the characteristics that it projects, to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from the power of attraction, reputation and prestige of the reputed mark. The applicant also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the image of that mark.
The use of the mark applied for in connection with the abovementioned goods will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The contested mark will become associated with the aura of fame that surrounds the Lara Croft brand. Many consumers are very likely to think that there is a direct connection between the goods of the applicant, and the famous Lara Croft character, as the sings are made up of identical letters, or might not even notice the difference.
Article 8(5) EUTMR exists to prevent this type of situation, where one mark takes unfair advantage of its distinctive character and repute. The applicant could take unfair advantage of the fact that the public knows the trade mark Lara Croft so well, in order to introduce its own similar trade mark without incurring any great risk and the cost of introducing a totally unknown trade mark to the market.
On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.
The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.
As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply>>.
Anteriorità opposta: ROYAL nonchè ROYAL UNIBREW (ma l’esame ha riguardato solo il primo segno)
Giustamente il BoA esclude confondibilità data la assenza di distintività di ROYAL (“segno di uso comune negli usi costanti del commercio”, se si applicasse il ns diritto, art. 13.1A cpi)
<<Overall assessment of the likelihood of confusion
45 The global assessment of the likelihood of confusion implies some interdependence between the relevant factors, in particular between the similarity of the signs and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 18/12/2008, C-16/06 P, Mobilix, EU:C:2008:739, § 46; 05/03/2020, C-766/18 P, BBQLOUMI (fig.) / HALLOUMI, EU:C:2020:170, § 69).
46 It is also settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore trade marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).
47 On the other hand, where the signs overlap in a descriptive, non-distinctive or weak element, the global assessment of the likelihood of confusion will not often lead to a finding that that likelihood exists (12/06/2019, C-705/17, ROSLAGSÖL, EU:C:2019:481, § 55).
48 The ratio legis of trade mark law is to strike a balance between the interest of the proprietor of a trade mark in safeguarding its essential function, and the interests of other economic operators in having signs capable of denoting their goods and services. Therefore, excessive protection of marks consisting of elements that are devoid of any distinctive character or have a very weak distinctive character could adversely affect the attainment of the objectives pursued by trade mark law, if the mere presence of these elements in the signs at issue led to a finding of a likelihood of confusion without taking into account theremainder of the specific factors in the case (18/01/2023, T-443/21, YOGA ALLIANCE INDIA INTERNATIONAL, EU:T:2023:7, § 117-118).
49 In the present case, notwithstanding the fact that the goods covered by the signs at issue are identical or similar, the low degree of visual and phonetic similarity and at most low degree of conceptual similarity between them, in conjunction with the weak distinctiveness of the earlier mark, rule out the possibility that the relevant public might think that the goods at issue come from the same undertaking or from economically linked undertakings.
50 For the part of the public which perceives the contested sign as a conceptual unit clearly referring to the Duke and Duchess of Sussex (namely Prince Harry and Megan Markle), no likelihood of confusion exists, as the conceptual difference between the signs counteracts any visual and phonetic similarities that exist (04/05/2020, C-328/18 P, BLACK LABEL BY EQUIVALENZA (fig.) / LABELL (fig.) et al., EU:C:2020:156, § 74 and the case-law cited).
51 For the remaining part of the public, the coincidence in an allusion to luxury and superb quality (being a result of the common word ‘ROYAL’) is sufficiently outweighed by the additional verbal element ‘SUSSEX’ at the beginning of the contested sign. There is no risk that this difference will not be noted by the consumers. As a result, there is no direct likelihood of confusion. The contested sign will not be taken for the earlier mark (05/02/2007, T‑501/04, ROYAL / ROYAL FEITORIA et al., EU:T:2007:54, § 47-49).
52 The opponent claims that the contested sign will be perceived as a sub-brand of the earlier mark. However, for such an indirect likelihood of association to occur, the trade mark applied for must display such similarities to the earlier mark that might lead the consumer to believe that the sign is somehow connected with the earlier right (and therefore, that the goods covered by it have the same or a related commercial origin). This likelihood of association may occur only if the trade mark applied for shares with the earlier mark characteristics capable of associating the signs with each other (by analogy 15/03/2023, T‑174/22, Breztrev / Brezilizer et al., EU:T:2023:134, § 83; 25/10/2023, T‑511/22, HPU AND YOU (fig.) / DEVICE OF THREE HEXAGONS (fig.) et al., EU:T:2023:673, § 80). If the similarity between the signs resides only in an element that has a minimal degree of distinctiveness, such an association is not likely. For such an association to occur the signs would need to overlap in a distinctive element, or at least in the structure and/or stylisation. Average consumers do not usually take one component of a composite trade mark and compare it with another mark (even less if it is weakly distinctive).
53 The earlier mark has a low degree of inherent distinctiveness. It is apparent from the case-law, that such marks enjoy less extensive protection and, therefore, the likelihood of confusion is, in such cases, not likely (12/05/2021, T‑70/20, MUSEUM OF ILLUSIONS (fig.) / MUSEUM OF ILLUSIONS (fig.), EU:T:2021:253, § 91-92, 95).
54 Bearing in mind the above, the Board finds that no likelihood of confusion exists on the basis of the inherent distinctiveness of earlier international registration No 854 092 designating the European Union for any part of the public.
55 As a result, the claim of enhanced distinctive character and reputation of the earlier mark needs to be examined (as it might substantially affect the global assessment of likelihood of confusion)>>.
Rimanda però per l’esame dell’altro segno e della domanda basata sulla rinomanza (improbabilissima , direi, per tali sgni)
Resta da capire come secondo il diritto internazionale si possa impedire lo sfruttamento della notorietà altrui (i duchi del Succesx, Harry e Meghan), a prescindere da loro registraizoni come marchio
<<The global assessment of the likelihood of confusion
77 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
78 Furthermore, the degree of distinctiveness of the earlier mark, which determines the scope of the protection conferred by that mark, is one of the relevant factors to be taken into account in the context of the global assessment of the likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, with the result that marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24, and of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 18; see also judgment of 29 March 2023, Machková v EUIPO – Aceites Almenara (ALMARA SOAP), T‑436/22, not published, EU:T:2023:167, paragraph 96 and the case-law cited). However, in the light of the interdependence between the factors to be taken into account, the existence of a likelihood of confusion cannot automatically be ruled out where the distinctive character of the earlier mark is weak (see, to that effect, judgment of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑766/18 P, EU:C:2020:170, paragraph 70 and the case-law cited).
79 In practice, where the earlier mark and the mark applied for coincide in an element that is weakly distinctive with regard to the goods or services at issue, the global assessment of the likelihood of confusion does not often lead to a finding that such a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, exists (judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 55; of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 53; and of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 121). Where the elements of similarity between two signs at issue arise from the fact that they have a component with a low degree of inherent distinctiveness in common, the impact of such elements of similarity on the global assessment of the likelihood of confusion is itself low (see judgments of 20 September 2018, Kwizda Holding v EUIPO – Dermapharm (UROAKUT), T‑266/17, EU:T:2018:569, paragraph 79 and the case-law cited, and of 20 January 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO – M. J. Dairies (BBQLOUMI), T‑328/17 RENV, not published, EU:T:2021:16, paragraph 64 and the case-law cited).
80 In paragraphs 45 to 50 of the contested decision, the Board of Appeal found that, in the light of the identity or various degrees of similarity, from low to high, of the goods at issue, the average degree of visual similarity and conceptual identity between the marks at issue and the average degree of inherent distinctiveness of the earlier mark, the relevant public, the level of attention of which varied from average to high, was likely to believe that the goods covered by those marks came from the same undertaking or, as the case may be, from economically linked undertakings. It added, in paragraph 52 of that decision, that its assessment would not have been different if it had found that the figurative element representing a lion’s head in the earlier mark, or even that mark taken as a whole, had only a low degree of inherent distinctiveness, in the light of the dominant nature of that element in that mark and the interdependence between the various factors to be taken into account in the global assessment of the likelihood of confusion. It took the view that those assessments were not contrary, in the circumstances of the case, to the case-law of the Court of Justice and the General Court.
81 By its fourth complaint, the applicant disputes, in essence, the Board of Appeal’s assessment that there is a likelihood of confusion in the present case. It submits that the marks at issue, although they both consist of the representation of the same concept, namely a lion’s head, create a different overall impression in the mind of the relevant public. In that regard, it relies on the fact that the representation of such a concept is banal and commonplace in the fashion sector and that the earlier mark has only a low degree of inherent distinctiveness, which, in combination with the other factors in the present case, should have led the Board of Appeal to rule out the existence of a likelihood of confusion.
82 EUIPO disputes the applicant’s arguments. However, in the alternative, should the Court take the view that the earlier mark has a low degree of inherent distinctiveness, it states, in essence, that it endorses the applicant’s claim for annulment on the basis of the single plea in law relied on by the applicant, in accordance with the case-law of the Court of Justice and the General Court which ensures that marks with a low degree of inherent distinctiveness are not overprotected (see paragraph 79 above).
83 In that regard, it must, first, be borne in mind that the Board of Appeal made an error of assessment in finding that the earlier mark had an average degree of inherent distinctiveness, whereas that degree of inherent distinctiveness could only be categorised as low (see paragraph 75 above).
84 As regards the applicant’s argument that the Board of Appeal gave undue importance, in the contested decision, to the conceptual identity between the marks at issue in the context of the global assessment of the likelihood of confusion, it must be borne in mind that, according to the case-law, the purchase of goods in Classes 14 and 25 is based, in principle, particularly on their visual aspect. Clothing and clothing accessories, the purpose of which is to embellish the appearance of the human body, are generally marketed in ‘bricks and mortor’ shops or online shops, as the case may be with the help of sales assistants or advisers and, in the light of those particular marketing conditions, the consumer’s choice is mainly made by looking at them. Consequently, the marks covering those goods will normally be perceived visually prior to or at the time of purchase, with the result that the visual aspect is of greater importance in the global assessment of the likelihood of confusion (see, to that effect, judgment of 18 May 2011, IIC v OHIM – McKenzie (McKENZIE), T‑502/07, not published, EU:T:2011:223, paragraph 50 and the case-law cited).
85 In the present case, in the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal, by finding that there was a higher than average degree of overall similarity between the marks at issue, attached more importance, in paragraph 49 of the contested decision, to the conceptual comparison of those marks than to the visual comparison, in particular in so far as it found that the differences in the stylisation of the marks were of limited importance in the overall impression created by those marks and therefore did not have sufficient impact to assist consumers in decisively distinguishing between the marks.
86 In so doing, it attached too much importance to the conceptual identity between the marks at issue, since, first, and as is apparent from the case-law cited in paragraph 84 above, the choice of the goods at issue is based mainly on their visual aspect and, secondly, the concept represented in the marks at issue, namely a lion’s head, is used in a banal and commonplace way in the commercial presentation or the decoration of goods in the fashion sector.
87 Consequently, the second part of the second complaint must be upheld and the examination of the present action must be continued by taking into account the error of assessment thus noted.
88 In the light of the case-law cited in paragraphs 78 and 79 above and the finding, made in paragraphs 50 and 51 above, that the representation of a lion’s head is a banal and commonplace decorative motif in the fashion sector, in which consumers are regularly faced with such a motif in the commercial presentation or the decoration of the goods, with the result that that motif has lost its capacity to identify the commercial origin of those goods, it must be held that, even though the marks at issue are conceptually identical, that can be of only limited importance in the global assessment of the likelihood of confusion, since the concept in common to which those marks refer is only weakly distinctive in relation to the goods at issue and can therefore contribute only to a very limited extent towards the function of a mark, which is to identify the origin of those goods and to distinguish them from those with a different origin (see paragraphs 47 and 52 above).
89 In view of the weak distinctive character of the concept which is common to the marks at issue and the weak distinctive character of the earlier mark, considered as a whole, the fact that the marks at issue are visually similar to an average degree was not sufficient to enable the Board of Appeal to find, in the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, even if the goods at issue were identical.
90 Consequently, the applicant’s fourth complaint must be upheld, inasmuch as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
91 In view of all of the foregoing considerations, the single plea put forward by the applicant must be upheld, in so far as it is based on the third complaint (see paragraph 76 above), on the second part of the second complaint (see paragraph 87 above) and on the fourth complaint (see paragraph 90 above) and the contested decision must therefore be annulled in so far as the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001>>.
Sono perplesso sia sulla banalità del segno anteriore, che sulla scarsa somiglianza tra i due segni: quindi complessivcamente pure sul giudizio del Tribunale.
Il NYT il 27 dicembre dà notizia di aver fatto causa per il saccheggio dei suoi articoli e materiali per allenare ChatGP e altri sistemi di AI e l’uso nell’output dai prompts degli utenti.
Offre pure il link all’atto di citazione. depositato presso il South. Dist. di NY il 27 dicembre 2023 , Case 1:23-cv-11195 .
Qui interessante è la decrizione del funzionamento della generative AI e del suo training, oltre alla storia di OpenAI che -contrariamente agli inizi (solo strategicamente open, allora vien da dire)- open adesso non lo è più , §§ 55 ss.: v. § 75 ss
<<90. Defendants used works authored and owned by Plaintiffs in the training of their GPT models, and in doing so reproduced these works and commercially exploited them without a license.
91. While OpenAI and Microsoft have kept the contents of their training data secret, it is likely that, in training their GPT models, they reproduced all or nearly all commercially successful nonfiction books. As OpenAI investor Andreesen Horowitz has admitted, “large language models,” like Defendants’ GPT models, “are trained on something approaching the entire corpus of the written word,” a corpus that would of course include Plaintiffs’ works.
92. The size of the Books2 database—the “internet based books corpora” that
Defendants used to train GPT-3, GPT-3.5, and possibly GPT-4 as well—has led commentators to believe that Books2 is comprised of books scraped from entire pirated online libraries such as LibGen, ZLibrary, or Bibliotik. Shawn Presser, an independent software developer, created an open-source set of training data called Books3, which was intended to give developers, in his words, “OpenAI-grade training data.” The Books3 dataset, similar in size to Books2, was built
from a corpus of pirated copies of books available on the site Bibliotik. Works authored and owned by Plaintiffs Alter, Bird, Branch, Cohen, Linden, Okrent, Sancton, Sides, Schiff, Shapiro, Tolentino, and Winchester are available on Books3, an indication that these works were also likely included in the similarly sized Books2>>.
Vedremo l’esito (magari già la comparsa di costitzione, speriamo)
Ci trovi anche il fascicolo processuale della sopra cit. NYT Times c. Microsoft-OpenAI (v. DOCKET, link diretto qui e qui nei vari Exhibit l’elenco dell’enorme quantità di articoli copiati)
– IV –
Resta però da vedere se allenare i LARGE LANGUAGE MODELS con materiale protetto ne determini realmente una “riproduzione” sotto il profilo tecnico/informatico: o meglio se tecnicamente si dia un fenomeno che possa giuridicamente qualificarsi “riproduzione”. Kevin Bryan su X dice di no ; Lemley-CAsey pure affermano la legittimità per policy reasons . Ma data la norma in vigore, si deve accertare se vi sia o meno riproduzione: in caso positivo, infatti, l’eventuale elaborazione creativa (tutto da vedere se ricorra e come vada giudicata la creatività) non può prescindere dal consenso dei titolari delle opere riprodotte.
Che queste AI richeidano di accedere a materialiper lo più protetti è com,prensibile: lo dice OpenAI (v. Dan Milmo 8 genn. 2023 nel Guardian). Ma non aiuta a risolvere detto dubbio tecnico-giuridico
Il reg. 1001 del 2017 prevede la forma scritta di entrambe le parti solo per la cessione (art. 20.3), non per la licenza (art. 25.3). Per quest’ultima basta la “richiesta” di una delle parti ai limitati fini della registrazione: la forma scritta quindi è solo per detta istanza amministrativa (non per l’atto da registrare) e basta che riguardi il consenso di una sola aprte.
Da noi v. artt. 138-139 cpi (ma non è necessaria forma scritta ad substantiam actus, nemmeno per la cessione).
Irrilevante ciò che dice la normativa secondaria d’esecuzione, che cmq non dice ciò che il T. vorrebbe
Interessante il richiamo dell’art. 27.1 sulla opponibilità , concetto giuridico spesso sfuggente.
Dato il chiaro dettato normativo sui consensi, è irrilevante ragionare sulla opponibilità. Però, se proprio residuasse del dubbio, un contratto opponibile all’acquirente lo deve essere anche nel senso di poter prescindere dal suo consenso per registrarlo.
