Snapshot: technology dispute remedies in Italy

Remedies and enforcement

What interim remedies are available and commonly sought in technology disputes in your jurisdiction?

In software litigation, where copyright comes into play, the rights’ holder can rely on a number of actions for preliminary relief against the infringer. These remedies can be granted through urgent proceedings, provided that the case is prima facie well grounded and the applicant would suffer serious and irreparable harm if the infringement is not immediately stopped. Among these are:

• injunctions, also imposing a penalty for any further infringement, including freezing orders, disclosing the name of the subjects involved in the marketing or distribution of the infringing products, and disclosure orders related to the accounts and financial documents belonging to the infringing party (articles 156, 156-bis and 156-ter Italian Copyright Law) (ICL));
• seizure (article 161 ICL);
• withdrawal from the market of the infringing products (article 158 ICL);
• access to documents and information (articles 156-bis and 156-ter ICL); and
• publication of the decision (article 166 ICL).

Usually, claims of patent infringement in technology disputes are brought through urgency proceedings, which require the likelihood of both the validity of the enforced patent and its infringement and the urgency to obtain the requested measures. The main potentially available remedies are:

• an injunction to cease and desist from any infringing act and the prohibition to advertise, manufacture, commercialise and use the infringing goods or process (article 131(1) Intellectual Property Code IPC));
• withdrawal of the infringing goods from the market (article 131(1) IPC);
• penalty for any potential further infringement or non-compliance with the decision or for each day of delay in the execution of the court’s order (article 131(2) IPC);
• seizure of the infringing products (article 129 IPC); or
• publication of the decision (article 126 IPC).

An injunction order does not require the subsequent starting of proceedings on the merits, as the interim order could be sufficient to bring forward the effects of a decision on the merits (eg, when the patent owner, having obtained the requested injunction, does not have an interest in pursuing the infringer for damages and other remedies). Conversely, a granted seizure not followed by the filing of a claim on the merits will lose its effectiveness.

The granting of a preliminary injunction or of a seizure is not automatically subject to the lodging of a security. Nonetheless, the judge can discretionally oblige the applicant to lodge satisfactory security for compensating potential damages.

What substantive remedies are available and commonly sought in technology disputes in your jurisdiction? How are damages usually calculated?

A number of remedies are available against a copyright infringer under the ICL. For instance:

• a permanent injunction (article 156 ICL);
• monetary remedies, namely, a penalty to be paid for further infringements (article 156, ICL);
• destruction of infringing goods (article 159 ICL);
• publication of the decision (article 166 ICL);
• a recall order, withdrawing or recalling the infringing goods from the market (article 158 ICL);
• seizure (article 161 ICL); and
• a declaration of infringement and validity, comprising a decision issued at the end of the proceedings on the merits that decides whether or not the infringement occurred or whether or not the rights owned by the claimant are valid.

Additionally, for online copyright infringement, where it appears that a website is displaying infringing material, rights’ owners can seek an injunction from the court ordering the internet service provider to block the website as a preliminary injunction measure.

Regarding technology disputes concerning patents, in addition to the remedies available in urgency proceedings, the patentee can obtain a number of substantive remedies. Among those are:

• recall of the infringing goods from the market against the owner or anyone in possession of the infringing goods (article 124(1) IPC);
• destruction of the infringing goods (article 124(3) IPC) or transfer of the property of both the infringing goods and the specific means used to manufacture the infringing goods, or to implement the patented method or process (contributory infringement) (article 124(4) IPC); and
• compensation for damages suffered because of the patent infringement (article 125 IPC). Damages shall include compensation for lost profits as well as for actual damages.

How can liability be limited in your jurisdiction?

According to article 1229 of the Italian Civil Code, any agreement that excludes the debtor’s liability for intentional acts or gross negligence is null (ne dolus futurus praestetur). Indeed, such an agreement would conflict with the party’s intention to undertake an obligation, as it would give that party the freedom not to perform the obligation. The parties can limit liability for matters different from intentional acts or gross negligence by entering into an agreement between themselves. Moreover, the creditor can always accept to limit the debtor’s liability, even liability for intentional acts or gross negligence, once the non-fulfilment of the obligation has occurred.

In the case of a software licence agreement, if the licensee is a consumer (ie, an individual who buys the software for purposes unrelated to his or her profession), all clauses that exclude or limit the actions and rights of the consumer are presumed to be unfair and therefore void, pursuant to the Italian Consumer Code (Legislative Decree No. 206/2005).

Are liquidated damages permitted? If so, what rules and restrictions apply?

Article 1382 of the Italian Civil Code provides that a clause that requires payment of a specified penalty for non-performance or delayed performance has the effect of limiting compensation to that penalty, unless it was agreed that there can be compensation for additional damages. The penalty is due to the creditor regardless of the evidence of harm. In other words, if it is provided in the contract, the creditor may claim additional damages and not only the specified penalty. The purpose of the agreement for additional damages is to eliminate the creditor’s possible disadvantage in the event that the amount of the penalty is below the amount of recoverable damages.

If the penalty is lower than the actual damages, where it is not possible on the basis of the contract to claim additional damages, the penalty may be construed as a limitation of liability clause. In this regard, clauses limiting liability for fraud and gross negligence are void (article 1229 of the Italian Civil Code).

What means of enforcement are available and commonly used by successful litigants in technology disputes in your jurisdiction?

In software litigation, copyright holders can rely on several options to enforce their rights. Rights relating to software are usually enforced in the course of civil proceedings pursuant to the procedure of ordinary civil proceedings, as established in the Code of Civil Procedure and supplemented by some specific rules provided by the ICL. Criminal proceedings can also be pursued as the ICL recognises a number of copyright infringements that can amount to criminal offences. The main offences relate to selling, distributing or making available for sale copies of a copyright work, but there are also offences for the reproduction or duplication of the infringing copy. If an offence is committed by a company, and an individual officer of the company consented to committing the offence, that officer can also be liable for the criminal act. Penalties for committing a criminal offence in relation to copyright comprise fines, administrative penalties and prison (articles 171 onwards ICL).

Similarly, in technology disputes involving patent claims, a patentee can rely on several options to enforce his or her rights. Patents are typically enforced in the civil courts, through preliminary relief proceedings or proceedings on the merits. However, criminal proceedings are also available against infringers. In particular, under Royal Decree No. 1398/1930 (the Italian Criminal Code), a prosecution can be initiated under article 473 against any person who counterfeits or alters Italian or foreign patents, or uses such counterfeited or altered patents; under article 517-ter against any person who industrially manufactures or uses objects or other goods in violation of an IP right, being aware of its existence; or under article 517-ter(2) against any person who, for profit purposes, introduces into Italy, holds for sale, offers for sale with a direct offer to consumers or puts into circulation goods in violation of an IP right.