Enforcement
Jurisdiction
Which courts are empowered to hear copyright disputes?
The corporate chambers of the courts, instituted in regional capitals (with some exceptions), have exclusive jurisdiction over IP disputes.
Infringement
What acts constitute copyright infringement in your jurisdiction (including with regard to online and digital content)?
The Copyright Act does not set down copyright infringement instances that might constitute counterfeiting or plagiarism. In general terms, ‘counterfeiting’ is the exploitation of the economic rights resulting from the work without the consent of the author; it is the appropriation of the creative elements of a pre-existing protected work of a different individual. ‘Plagiarism’ is a variation of copyright infringement. It consists in the total or partial reproduction of the creative elements of a work belonging to others with the appropriation of its authorship. There can be counterfeiting without plagiarism, as in piracy, where the counterfeit element is accompanied by the name of the actual author, and the will to appropriate the work belonging to others does not exist.
Online works are treated as paper publications: works published on the Internet cannot be copied or benefited from without explicit consent from the author.
Is contributory infringement recognised in your jurisdiction (including liability for internet services providers and other online/digital actors)?
Article 156 of the Copyright Act specifically provides for the liability of intermediaries (ie, internet service providers) whose services are used for the purposes of infringing copyright. Therefore, those who have reasons to fear the infringement of a right to economic exploitation to which they are entitled, or wish to prevent the continuation or repetition of an infringement that has already occurred, can sue the intermediaries as defined above. Moreover, the E-Commerce Act establishes specific domains of responsibility for the various intermediaries. The Italian courts have repeatedly acknowledged the joint liability of internet service providers for infringements committed directly by users of their services.
Actions
What actions can be taken against copyright infringement (eg, civil, criminal or administrative), and what are the key features and requirements of each?
Civil actions against copyright infringement can follow the classic division between main court proceedings (proceedings on the merits) and interim actions (preliminary injunctions). The former are usually initiated so as to obtain – upon assessment of the existence of an infringement – the measures required to obtain the cessation of an infringement and any compensation for the damage suffered. Injunctions are sough in order both to enable the summary assessment of an infringement, and to adopt measures (ie, seizure and injunction) aimed at preventing the commencement or continuation of the unlawful act – this in light of the severity and irreparability of the damage that the rights holder could suffer if it were to wait for the conclusion of the proceedings on the merits. Interim actions can also be aimed at acquiring and maintaining proof of the infringement in view of the commencement of the proceedings on the merits. Interim measures can be requested both before the commencement of the proceedings on the merits (ante causam) and during the course of these proceedings.
Moreover, Italy has incorporated – within the framework of the Copyright Act – the protection instruments provided for by the EU IP Enforcement Directive (2004/48/EC).
With regards to criminal law protection, conducts limiting or violating copyright are prohibited pursuant to Articles 171 to 171nonies of the Copyright Act.
Lastly, the Italian Communications Regulatory Authority adopted, through Deliberation 680/13/CONS of 12 December 2013, the Regulation on the Protection of Copyright on Electronic Communications Networks, whereby the authority can issue, under certain conditions, injunctions against access providers (the regulation can be accessed at www.agcom.it/documents/10179/0/Documento/b0410f3a-0586-449a-aa99-09ac8824c945).
Who can file a copyright infringement action?
Only the holders of the rights allegedly infringed or their successors in title can file actions for copyright infringement. Where the rights at issue have been transferred, it is up to the transferee(s) to bring the action, even for infringements committed before the transfer.
In addition, case law has established that an exclusive licensee can file an infringement action in absence of any specific authorisation from the licensor, unless the licence agreement does not include that possibility. Non-exclusive licensees are not entitled to such prerogative and need the rights holder’s authorisation.
What is the statute of limitations for filing infringement actions?
The general rule foreseen in Article 2947 of the Italian Civil Code (five-year limitation period, unless the fact constitutes an offence) also applies to non-contractual infringements ascribable to copyright.
What is the usual timeframe for infringement actions?
Civil law preliminary injunction proceedings take about a month. Civil proceedings on the merits take about three years at first instance, while administrative proceedings before the Italian Communications Regulatory Authority typically take three weeks.
What are the typical costs incurred in infringement actions?
Costs typically stem from the gathering of evidence and from legal assistance.
How are attorneys’ fees handled? Can they be claimed in infringement actions?
In civil proceedings, the unsuccessful party (typically, the defendant) is required to pay the costs incurred by the rights holder. However, to recover its costs (for legal assistance and the gathering of evidence), the rights holder must initiate a separate action for pecuniary damages against the infringer.
Injunctions
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The Italian IP Law sets forth special interim measures, such as preventive technical consultancy, description, seizure and injunction. They can be requested before the commencement or during the course of the proceedings on the merits. For the interim measures to be issued with regard to copyright infringement, in particular as to the protection of proprietary rights, two essential circumstances are required: periculum in mora (risk – urgent and irreparable – of financial loss in case of non-issuance of the measure) and fumus boni iuris (existence of the right to be protected). Seizure and injunction (whereby the infringement is stopped) can be subject to counterclaims by the alleged infringer. The issue of interim measures can be subject to the plaintiff paying a bond.
Remedies
What remedies are available to owners of infringed copyrights?
Based on the claims being made in or out of court, different remedies are available. Generally speaking, remedies can be restrictive or compensatory.
Customs enforcement
What customs enforcement measures are available to halt the import or export of pirated works?
Customs actions are either ex officio or activated following an application for action (ordinary procedure). The latter requires the rights holder to submit an application for action with the customs authority aimed at protecting its works. If the application is successful, the customs authority can clear the suspect works or detain them. Moreover, the rights holder is entitled to inspecting the works subject to the customs measure. By contrast, the ex officio procedure requires the autonomous intervention of the customs authority in presence of sufficient grounds for believing that the works may infringe the IP rights of others.
Defence
What defences are available to infringers?
Infringers typically claim the enforceability of exemption from liability and the exceptions to exclusive rights set forth in Article 65 and following of the Copyright Act.
Appeal
What is the appeal procedure for infringement decisions?
As far as (civil law) preliminary injunction proceedings are concerned, the unsuccessful party is entitled to challenge the measure within 15 days of its service or notification (pursuant to Article 669terdecies of the Italian Code of Civil Procedure). As to ordinary proceedings on the merits (again in civil law), the time limit for lodging an appeal is either short or long. The former is usually 30 days from the date when notice of the first-instance judgement is served, whereas the latter runs from the publication of the judgment, for six months.
