Can trade mark law help protect one’s privacy (and stop the spread of embarrassing WhatsApp audio messages)?

Italian actor Raoul Bova

The use – and abuse – of IP rights to achieve objectives other than protecting what those rights were originally meant to do is not new. In all of this, however, the interplay between IP and privacy is arguably an emerging and still underexplored area.

A story that brings together one of the most popular Italian actors, gossip, privacy protection, and trade mark law has just emerged from the summer heat.

The key issue it raises is the following: can a trade mark registration serve to prevent the spread of voice messages that a celebrity sent to a model with whom he entertained an affair?

Let’s start with the facts – the “romantic” side of things – before turning to the IP initiatives that the actor’s lawyers have been taking to protect his privacy.

The Raoul Bova summer story

Raoul Bova is one of the best-known actors in Italy, having starred in dozens of successful films (including international productions Under the Tuscan Sun and The Tourist) and TV series like the long-running hit Don Matteo, where Bova plays the part of a Catholic priest with a 'calling' for solving crimes.

On the personal front, in 2013, Bova began a relationship with Spanish actress and model Rocío Muñoz Morales, with whom he now shares two children.

A few weeks ago, however, the fairy tale came to an abrupt end, when the news broke that Bova had met with model Martina Ceretti at a hotel in Milan (not necessarily just to discuss the next plot twist in Don Matteo, explains Merpel), after exchanging Instagram DMs for a couple of years (and then they say that courtship and love letters are dead?).

That is not all, however. Together with the story, WhatsApp audio messages that Bova sent Ceretti after their night together also surfaced.

These audio messages have been the subject of mockery in Italy, as Bova addressed Ceretti using expressions like “Buongiorno essere speciale dal sorriso meraviglioso e dagli occhi spaccanti” (the adjective 'spaccante' / 'spaccanti' does not exist in Italian, hence the mockery), which roughly translates as “Good morning special being with a wonderful smile and piercing eyes”.

Since then, there has been no day that has passed without a plot twist, ranging from attempts to blackmail Bova to the actor’s claim that he had been already single for two years when all this happened, from his Spanish partner denying that to questions of their children’s custody, and then the hiring by Bova of his former mother-in-law (one of the best-known divorce lawyers in Italy), who had penned an open letter years ago calling him a “genero degenerato” (“degenerate son-in-law”), as his lawyer.

Obviously, over the past few weeks, there have been several legal initiatives launched by Bova to stop the spread of inter alia his audio messages, including through criminal law actions, requests to the Italian Data Protection Authority, and now …. also IP law.

The ‘OCCHI SPACCANTI’ trade mark applications

Indeed, as Corriere della Sera reported today, on 5 August last, Raoul Bova filed two trade mark applications for goods and services in classes 3, 16, 18, 25, 29, 30, 31, 32, 33, 35, 38, and 41 with the Italian Patent and Trade Mark Office (UIBM):

• ‘OCCHI SPACCANTI’, Italian word trade mark application No 302025000125731 (under UIBM’s review), and
• ‘BUONGIORNO ESSERE SPECIALE DAL SORRISO MERAVIGLIOSO E DAGLI OCCHI SPACCANTI’, Italian word trade mark application No 302025000125824 (published).

As explained by Corriere della Sera, the applications are motivated by Raoul Bova’s desire to stop the spread of his own WhatsApp audio messages.

IPKat-approved 'OCCHI SPACCANTI'

Despite that the application for ‘BUONGIORNO ESSERE SPECIALE DAL SORRISO MERAVIGLIOSO E DAGLI OCCHI SPACCANTI’ has been published already by the UIBM, thus passing the ex officio assessment based on absolute grounds for refusal, will (and should) the actor succeed in (1) getting his registrations and, above all, (2) enforcing them?

Both questions might be answered in the negative, at least in a general sense. Let’s see why.

The applications …

First, there is the question whether the registrations should be even granted. Both of them appear problematic from the perspective of several absolute grounds, including distinctiveness and public policy (Articles 13 and 14 of the Italian IP Code). Questions of bad faith could also be raised (Article 19 of the Code).

Is a phrase such as ‘BUONGIORNO ESSERE SPECIALE DAL SORRISO MERAVIGLIOSO E DAGLI OCCHI SPACCANTI’ perceived by consumers as an inherent (let’s not forget that the audios have only recently been published, so any potential distinctiveness acquired through use appears out of the question) indicator of origin?

That appears doubtful, as the case law on phrases and slogans also tells us. It could be recalled that recently the General Court ruled that ‘RUSSIAN WARSHIP, GO F**K YOURSELF’ could not be registered as an EU trade mark due to lack of distinctiveness [IPKat here]. At the EUIPO level, that application had also been considered problematic due to public policy concerns.

Furthermore, the pending Orwell referrals before the EUIPO Grand Board (‘1984’ and ‘ANIMAL FARM’) raise the question of whether titles should even be registrable as trade marks, including as a matter of public policy.

In the case of Bova, can it be deemed contrary to public policy to use the trade mark system to protect one’s privacy and thus suppress speech that one does not want to have divulged? If we draw a parallel with copyright (at least as intended by the Court of Justice of the European Union), the answer might be yes. The Spiegel Online and Afghanistan Papers cases come to mind, and so do the remarks made by Advocate General Szpunar in his Opinions in both referrals.

That said, hope may not be completely lost for Raoul Bova.

A few years ago, for example, Swedish activist Greta Thunberg announced that she would file applications with the EUIPO to register the phrase ‘FRIDAYS FOR FUTURE’ to prevent third-party misuses. A search in the EUIPO database shows that she might have succeeded.

Last but not least, as mentioned, there might also be a bad faith angle to explore. As trade mark-focused readers know, bad faith has become somewhat ubiquitous or – as one would say in Italian – like “prezzemolo” (parsley): every filing seems to be triggered by a bad faith intention! This is due to the (inflated) construction of the notion of bad faith in the case law of EU courts, though not only.

For example, in the (in)famous Vigeland case [IPKat here and here], among other things, the EFTA Court regarded the Oslo Municipality’s attempt to register Gustav Vigeland’s artworks as an instance of bad faith, due to the attempt to suppress free speech by bringing public domain (due to the expiry of copyright) works back into IP protection through trade mark law.

… and their enforceability

Even if Raoul Bova managed to secure his ‘OCCHI SPACCANTI’ trade marks, would these registrations help him prevent the spread of his audio messages?

That is the real question, the answer to which might be in the negative. It is unlikely that newspapers and media outlets reporting on and discussing the case would use ‘OCCHI SPACCANTI’ in a trade mark sense.

Bova as Don Matteo

Sure, the registrations could be helpful in some instances, such as parasitic attempts to exploit this story to realize and sell gadgets and merchandising, or otherwise take advantage of this gossip story for commercial purposes (as Napoli FC and Ryanair did in the immediate aftermath of the scandal).

However, as said, even if the registrations were granted, this would not simply prevent the press and the public more generally from speaking about the story. As usual, a fair balance between the protection of the rightholder’s interests (in this case, not only rights granted by trade marks but also – and most importantly – Bova’s right to privacy) and the public interest would need to be struck.

In this sense, the guidance of the European Court of Human Rights in seminal decisions like Mosley v UK remains valid: respect of one’s own private life should prevail over the interest to “merely to titillate the public and increase the embarrassment” of Bova.

Although a celebrity, Bova is also entitled to his privacy, irrespective of whether he speaks to people with “piercing eyes” or more plain eyes. In my view, the circulation of his audio messages does not appear to contribute to any debate of public interest. But, to obtain some form of protection, should IP play any role at all in a legal saga that has blown out of proportion and that common sense commands to resolve quickly and in Bova’s favour? Likely not.