In brief: copyright infringement and remedies in Italy

Copyright infringement and remedies

What constitutes copyright infringement?

The general rule is that any unauthorised use of protected works by a third party constitutes copyright infringement.

Law No. 633 of 22 April 1941 (the Copyright Act) provides the following exceptions:

• the making of a copy of a volume or of a work or article for private use (article 68);
• the making of a copy, by the institutions for the protection of cultural heritage, of the works that are permanently present in their collections (article 68, paragraph 2-bis);
• the reproduction or communication to the public of articles concerning arguments of an economic, political or religious nature, provided that the name of the author, the source and the date of publication are specified and the reproduction and communication have not been expressly reserved (article 65);
• the reproduction and communication of summaries or quotations of works, provided that they are carried out for criticism or discussion purposes or for teaching or scientific research purposes, and that such use is not for commercial purposes (article 70). This is valid also for summaries, quotations, reproductions and communications to the public of mere abstracts of works carried out through digital means, provided that such use takes place under the responsibility of the educational institution in a secure digital environment that is accessible only to staff and students of the institution (article 70-bis);
• the reproduction of copyrighted works made by research institutes and institutions for the protection of cultural heritage for scientific research purposes to extract text and data from works and materials available in the accessible database (article 70-ter);
• the reproduction and extraction of text and data of copyrighted works contained in networks or databases that are accessed legally, provided that the copyright owners or the database owner did not expressly restrict the use of the works (article 70-quater); and
• when a copyright owner adopts technological measures to protect their work, the educational institutions and research institutes and institutions that legally acquired a sample of such work may extract a copy of it, provided that such copy does not infringe the copyright of the owner (article 70-sexies).

Does secondary liability exist for indirect copyright infringement? What actions incur such liability?

Under Italian law, there is no distinction between primary or secondary infringement or liability. The general rule is that any unauthorised use of a protected work falls under copyright infringement and any user engaging in such an act is liable for infringement. As to contributory liability, article 156 of the Copyright Act specifically provides for the liability of intermediaries (such as internet service providers) whose services are used for the purpose of infringing a protected work.

What remedies are available against a copyright infringer?

The main remedy under Italian copyright law is a permanent injunction against the infringer (article 156 of the Copyright Act). Other available remedies are:

• delivery up or destruction of the infringing products or materials (article 158);
• seizure or description of infringing products or materials (article 161);
• withdrawal or recall of the infringing goods from the market (article 158); and
• publication of the decision in the press or on the internet (article 166). 

Is there a time limit for seeking remedies?

Under Italian law, it is possible to enforce rights within the general duration of the single copyright. That said, for seeking remedies such as an interim injunction or seizure, Italian case law requires the existence of periculum in mora, which means that the applicant will suffer serious and irreparable damage if the infringement is not immediately stopped. 

Are monetary damages available for copyright infringement?

According to article 158 of the Copyright Act, monetary damages are granted to the copyright holder. The award of damages can be calculated by the court based on the infringer’s profit or on the ‘cost of consent’, or both. The cost of consent is a virtual royalty that would have been applied if the infringer had obtained a regular licence.    

Moreover, if an injunction is ordered, the court can also provide for a penalty to be paid for further infringements carried out in violation of the order.

In terms of recovering damages, according to article 2947 of the Italian Civil Code, a claimant can recover damages only for the five years preceding the beginning of the action.

Can attorneys’ fees and costs be claimed in an action for copyright infringement?

Yes, attorneys’ fees and costs can be claimed. The general principle is that the losing party bears the costs of the action as well as attorneys’ fees (article 91 of the Italian Code of Civil Procedure).

Are there criminal copyright provisions? What are they?

Specific cases where the copyright infringement constitutes a crime under Italian criminal law provisions include the following:

• The willful reproduction, transcription, offer for sale, performance, broadcast communication to the public or distribution of a third party’s work without consent, or publishing online a copyrighted work, is punishable with a fine. If the infringing acts concern a work not intended for publication, or they constitute infringement of the author’s right of paternity or of the integrity of the work, the punishment may include imprisonment (article 171 of the Copyright Act).
• The unlawful reproduction, import or distribution in Italy of computer programs or databases for profitable purposes can be punished by imprisonment and a fine (article 171-bis).
• Reproduction, broadcasting fixation on a medium (digital, audio, video or audiovideo) or disseminating of a work intended for television or cinematographic distribution, or in cases of offering for sale or hire recordings of musical, cinematographic or audiovisual works, literary, dramatic, scientific, musical or multimedia works (article 171-ter), can be punished by imprisonment and a fine.

Are there any specific liabilities, remedies or defences for online copyright infringement?

According to Resolution No. 490/2018 of the Italian Communications Regulatory Authority (AGCOM) and article 102-decies of the Copyright Act, specific procedures can be used to remove copyright-infringing material from the internet.

As to liabilities, according to article 102-sexies of the Copyright Act, online content-sharing service providers are liable for giving access to copyrighted content uploaded by their users if they did not obtain the necessary authorisation from the rightsholder, unless they demonstrate that they have:

• made their best efforts to obtain an authorisation;
• made their best efforts to ensure the unavailability of specific works and other subject matter for which the rightsholders have provided the service providers with the relevant and necessary information; and
• in any event, acted expeditiously, upon receiving a sufficiently substantiated notice from the rightsholders, to disable access to or to remove from their websites the works or other subject matter flagged by the rightsholders, and made their best efforts to prevent future uploads of the same (article 102-septies, Copyright Act).

Moreover, the AGCOM may impose administrative sanctions on the information society service providers in the event that they refuse to provide the information necessary to determine the amount of fair compensation due to the press publishers for the online use of their journalistic content (article 43-bis, Copyright Act).      

How may copyright infringement be prevented (including, for example, customs enforcement measures and any technological notable developments)?

According to Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual property rights, customs authorities must suspend the release of an imported good if they suspect that it may infringe an intellectual property right, including copyright.