The Court held that – in the event that an individual who sets up the contacts and puts together the virtual friendships of a Facebook Group is an entrepreneur – the relationships with the users of such Group (who usually act in a merely social context) change and become economically and commercially important.
A Group constituted within the social network Facebook should be considered, therefore, an atypical distinctive sign to be protected against acts of unfair competition and in particular against acts of passing off (qualified by article 2598, no. 1 of the Italian Civil Code as the use of competitors’ distinctive signs with a view to giving rise to a risk of confusion with such competitors’ products and activities).
The case at hand concerned the creation of an Alfa S.r.l. Facebook Group by an employee of the latter company, in which there were references to (sports clothing) products commercialized by Alfa s.r.l., as well as a hyperlink to the company’s internet site.
After such employee had left Alfa s.r.l., the former started working for Beta s.r.l. (which was a company run by his wife that was also active in the same field of business of Alfa s.r.l.) and changed the name of the Facebook Group from Alfa to Beta, changing the hyperlink to such Group and leaving unchanged some of the references to products commercialized by Alfa s.r.l. (as well as to the latter’s trademark).
The former employee of Alfa sent, moreover, a notice in writing to all of the Group’s contacts, inviting them to visit the Beta s.r.l. website, which was specifically defined as the Alfa s.r.l. web site.
The Court held, therefore, that the aim of creating a Facebook Group is that of exploiting the potential of the Internet and of the extremely well-known social network for the purpose of creating numerous privileged interactive contacts with subjects who are interested in a given category of products (i.e. sports clothing). It followed therefrom that the sign used in connection therewith would have acquired a specific economic value and should, as such, be qualified as an atypical distinctive sign to be protected by article 2598 n. 1 of the Italian Civil Code against acts of passing off.
The Court justified its interpretation of article 2598 by stressing how the Italian Supreme Court had – with judgment no. 24620 dated December 3, 2010 – stressed the importance of the use of atypical distinctive signs (i.e. internet domain names) in an advertising context with a view to attracting consumers to the products or services of a given company operating on the internet.
The Court had to decide, finally, whether the mere fact of creating the original Facebook Group by an individual who at the time was an employee of Alfa s.r.l. entitled such employee to the rights on the same Group.
The Court found that the former employee of Alfa s.r.l. carried out the aforementioned activity in relation to the aforementioned Facebook Group exclusively in the interest of the former company.
The specific rules issued by Facebook in relation to the creation and/or amendment of the contents put on-line by the users of such group could not, in the Court’s opinion, constitute a lex specialis capable of derogating from provisions of law governing such matter.