The Court of Milan’s ex parte dynamic injunction in defence of the film ‘Tolo Tolo’
With two ex parte decrees issued last December 24 and January 13, the IP Court of Milan ruled in favour of the companies Taodue S.r.l. and Medusa Film S.p.a., i.e. the producer and the holder of the distribution rights for the well-known film ‘Tolo Tolo’, in the judgment commenced by the same to fight against certain cases of online piracy.
The cinematographic work at stake was supposed to be released in Italian cinemas on January 1, 2020. However, the official title and poster of the movie had already been published before that date on certain pirate websites without any authorisation, so as to suggest that the movie would soon have been made available on the same platforms. The two companies, therefore, sent warning letters both to the hosting service providers of the websites and to the internet access providers (IAPs) to enjoin them from making the film illicitly available to the public. However, no replies were received from the hosting providers, while the IAPs reported that they could not take action in the absence of an injunction order issued by a judicial authority.
The two companies therefore brought an action before the Court of Milan in order to obtain precautionary measures against the aforementioned IAPs, in particular aimed at ordering them to take all the most appropriate technical measures to inhibit access to the identified websites, regardless of the associated domain name, in order to effectively prevent the display of the illicitly published content.
In both cases, the Court acknowledged the existence of the fumus boni iuris requirement on the assumption that the illicit use of the title and promotional material relating to the film on the contested platforms was without any doubt “meant to imminently violate the distribution rights”, suggesting that the film would have been made available on these platforms immediately after its release, and also in light of the fact that the same websites had previously broadcast other cinematographic works in the absence of the necessary authorisation of the rights holders.
On the other side, as to the periculum in mora requirement, the Judge considered that the illicit conduct at issue was likely to cause irreparable damage with regard to (i) the possible serious undermining of the commercial success of the work, “given the importance of the première, in terms of the reception and feedback from the public and critics, in the subsequent cycle of the commercial vitality of the film”, and (ii) the serious consequent damage to the commercial image of the plaintiffs.
By granting the plaintiffs’ claims, the Court also observed that in 2019 the Italian Antitrust Authority had already ordered the same IAPs to disable access to the same websites. However, to circumvent these decisions, the websites had subsequently started to operate with different domain names. With the two decrees commented upon here, the Court therefore issued two so-called “dynamic injunctions” able to affect even the new domain names possibly adopted by the websites at hand. The Court in fact ordered the providers to prevent the access:
to websites having the domain names expressly identified by the plaintiffs;
to websites with different top-level domains (i.e. .it, .com, .eu, etc.), if these websites make available to the public the same illicit contents subject to the decrees; as well as
to any alias websites (i.e. those where the “heart” of the domain name – so-called second level domain – changes), on the further condition that it can be evidenced that these websites come from the same subjects responsible for the illegal activities covered by the decrees.
Responsibility for the identification of new domain names, hosting the disputed websites, has been entrusted to the companies, which shall provide documentation to evidence that the new websites are attributable to the same subjects.
The injunctions were granted ‘ex parte’ on the assumption that “given the need to timely intervene in order to avoid the continuation of the illicit conduct concurrently with the distribution of the films in cinemas throughout Italy, there is a particular urgency that requires the adoption of ex parte precautionary measures”.
A penalty was also granted to strengthen the injunctions: the IAPs, in fact, were ordered to pay € 5,000 for each day of delay in the enforcement of the decrees, after two working days from the notification of the decrees or of any subsequent communications related to the change of the domain names.