Contributed By Studio Previti – Associazione Professionale
The system of privileges, in pre-unification Italy, came to an end with the recognition of the author only in the 19th century, taking inspiration from the French jurisprudence and the concept of intellectual property (IP).
After Italian unification, copyright was ratified by the Law of 25 June 1865 and with the Testo Unico of 19 September 1882, No 1012, which remained in force until 1925, replaced by the Law of 7 November 1925, No 1950 and later, in 1941, by the Copyright Act, still in force.
The Copyright Act (Law No 633 of 22 April 1941) and the corresponding regulation of 18 June 1942, No 1369, are still in force. The Copyright Act has been amended several times upon approval of new international conventions and EU directives relating to the protection of copyright and related rights.
The Italian Constitution does not provide specific copyright protection, even if constitutional protection can be inferred from the combined provisions of Articles 2, 9, 21, 33 and 42.
Provisions on copyright are also found in the Civil Code, Articles 2,575 and following.
Italy is a party to the following international treaties and conventions on the national treatment of foreign works:
Pursuant to Article 54, Law No 218/1995, the rights on intangible assets are regulated by the law of the country of use; therefore Italian law is applicable to works used in Italian territory.
The Berne Convention of 1866 establishes reciprocity and automatic recognition of copyright protection between states. Therefore, citizens of countries that adhere to the Convention who use their work in Italy, benefit from the protection of Italian copyright law.
The Italian legislature guarantees the protection of a work endowed with creative character to which the elements of novelty and originality apply. A work can be considered new when it is distinguishable from previous works, and original when it is the result of a non-trivial product of human ingenuity. Simple ideas are excluded from protection.
The Italian legislature has established that a work can be protected from the time of its creation. No particular formalities are contemplated and registration is not compulsory.
However, works can be registered on a voluntary basis with the Italian Society of Authors and Publishers (SIAE) and the Italian Ministry of Cultural Heritage and Activities (Mibact). The SIAE also manages the Public Register of Cinematographic Works, which is also managed by Mibact following the Law of 14 November 2016, No 220. This register serves primarily as a tool to record and publicise the existence of works (and thus copyright ownership) that are not required to be recorded under the Copyright Act, thus providing legal certainty from an evidence standpoint. The register also has a constitutive function regarding rights relating to registrations of engineering or similar works covered by Article 99 of the Copyright Act.
Article 103 of the Copyright Act also allows the recording of transfers of rights for the economic exploitation of works. A public register for software also exists that records and publicises the existence and ownership of rights related to computer programs. Moreover, the SIAE manages the registration of unpublished works, which can include screenplays, plots, audio-visual works, software, databases and specimens of intellectual work in general. Such registration is private and its purpose is to provide documentary proof of the existence of the work on the date of registration. The registration lasts five years and may be renewed on the expiry date for an equal period of time. Details of the registered works are available to the public.
The Ministry of Cultural Heritage and Activities and Tourism manages the General Public Register of Protected Works, which lists the works that must be recorded pursuant to Article 105 of the Copyright Act. As with the Public Register of Cinematographic Works, recording in the General Public Register of Protected Works provides evidence, unless proved otherwise, of the existence and ownership of said works. The authors and producers listed in the register are considered, unless proved otherwise, as the authors and producers of the works that are attributed to them (Article 103, Copyright Act).
Copyright applies to intellectual works with a creative character relating to literature, music, figurative arts, architecture, theatre or cinematography, whatever their means or form of expression. The list of works that benefit from protection is not exhaustive, but illustrative, which is why, in addition to all creative works that are recorded in a material form (film, paper, etc), it may also include those works, generally of contemporary art, that are intangible (eg, performance art).
Software is included in the list of works protected by the Copyright Act and is regarded as literature (Article 1(2)). In particular, the protection includes “computer programs expressed in any form, provided they are original, as a result of the author's intellectual creation” (Article 2(8), Copyright Act).
In order for software to receive protection, the character of the creativity must be considered as the author's independent intellectual creative effort. Unlike other works protected by copyright, software protection is much more comprehensive because it not only protects the expressive form of the program, but also the set of procedures followed to achieve a given technical result.
In addition to copyright protection, according to an increasingly relevant piece of doctrine and case law, software could also benefit from patent protection. The European Patent Convention (Article 52), as well as the Italian Industrial Property Code (Article 45, Legislative Decree No 30/2005), exclude the patentability of software only if it is not considered “an invention”.
By interpreting these provisions, the possibility of patenting software that has a “technical character” is recognised. It must therefore be software intended to solve a problem and offer a solution that has technical elements to achieve a technical effect.
Since the legislature does not expressly provide patent protection for software, it is silent on possible cumulative copyright protection. However, the two protections should not be considered cumulative since, for software to be patented, it must have been disclosed.
Italian law protects databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation (Article 1(2), Copyright Act).
The protected databases are understood as being collections of works, data or other independent elements systematically or methodically arranged and individually accessible by electronic or other means. The protection of databases does not extend to their content and is without prejudice to rights relating to the said content (Article 2(9), Copyright Act). The only protection provided for databases is copyright.
Industrial design works are also subject to copyright if, besides having a creative character, they also have an inherent artistic value. In some cases, an intellectual work such as a design or a graphic work can become a protected trade mark for the exact visual representation for which it is registered. The protection offered by copyright and that offered by trademark registration can be cumulated.
Copyright is also applicable to such cases not expressly mentioned by law as fictional characters, television formats, sports events, advertising copies and product labels, museum exhibitions, websites, recipes, and maps.
The author is the person who created the work, as indicated in Article 8 of the Copyright Act, which provides for a legal presumption of authorship: the author of the work is considered, unless proven otherwise, to be the person who is indicated as such in the forms of use or who is announced as such in the acting, performance, representation and broadcasting of the work itself.
If several subjects have contributed to the creation of a work, in the Italian legal system they are considered co-owners and they will all have the right to recognition of the same moral rights and economic exploitation. The co-authors may assign to third parties the rights of economic exploitation, but not the moral rights that belong to the original creator of the work.
The licensing of the exploitation of a work in co-ownership is admissible and is subject to the general discipline dictated by the Civil Code on ordinary communion (Article 1103 Civil Code).
According to the provisions of Article 27 of the Copyright Act, save for some exceptions referred to in Article 8 of the Act, the duration of the rights of economic use is 50 years from the first publication, whatever the form in which the work was made.
According to Article 69 quater, paragraph 1 of the Copyright Act, orphan works are those in relation to which “none of the holders of the rights on such work or phonogram has been identified or, even if one or more of them have been identified, none of them has been found”.
This regulation has been incorporated into Directive 2012/28/EU on certain permitted uses of orphan works. It regulates the use of "orphan" works, ie, books, films, music etc, for which no copyright holder is identified or traced by the libraries, archives, museums and other public organisations where they are stored. In this regard, their use is subject to a prior “diligent search” by the organisations that allows the works to be effectively classified as "orphan". If a work has several owners, not all of them being identified, the organisations are allowed to use it, provided that the "known" owners give their authorisation regarding the rights they hold (Article 2, Copyright Act). Moreover, the names of the identified authors must always be indicated in any use of the orphan work.
Article 7 of the Copyright Act defines the “author of a collective work” as the person who organises and directs the creation of that work; work performance does not suffice. A person who has created a derivative work is deemed the author of that work within the limits of his or her own effort. Under Article 38 of the Copyright Act, “in the collective work, unless otherwise agreed, the right of economic use belongs to the publisher of the work itself, without prejudice deriving from the application of Article 7” while “the individual collaborators of the collective work have the right to use their work separately, in accordance with the existing agreements”.
A company cannot be considered to be the author of a work; only the holder of economic exploitation rights. However, this circumstance could disappear with the creation of works using artificial intelligence.
Works Created by Employees
In the case of the creation of works by employees, there is an exception to the general rule that the creator has the right to be recognised as the author and to benefit economically from the fruit of their intellectual activity, expressly establishing the principle that if the inventive/creative product is created in the context of an employment relationship, the relative right of economic use is the employer's right (Article 2590 Civil Code; Article 64 of the Industrial Property Code, Legislative Decree No 30/2005), unless otherwise provided for.
Works Created by the Self-Employed
The ownership of the rights of economic use of the original inventions/supplies of self-employed workers are now contained in Article 4 of Law No 81/2017, which refers to the discipline dictated by the law on copyright, and which provides that “except in the case where the inventive activity is provided for as the object of the contract of employment and compensated for this purpose, the rights of economic use relating to the original contributions and inventions made during the execution of the contract are due to the self-employed, according to the provisions of Law No 633 of 22 April 1941 and the Industrial Property Code of Legislative Decree No 30 of 10 February 2005”.
Works Created by Institutional Researchers
Article 65 of the Industrial Property Code provides that when the employment relationship takes place with a university or with a public administration having among its institutional purposes research objectives, the researcher is the exclusive owner of the rights deriving from the patentable invention of which he or she is the author.
According to Article 12 of the Copyright Act, the author has the exclusive right to economically use the work in any form, whether original or derivative, with regard to the exercise of the exclusive rights indicated in Articles 13 to 18 of the Copyright Act, such as:
Economic rights have a limited duration and lapse 70 years after the death of the author of the work; this also applies to works published posthumously. In the case of anonymous or pseudonymous works, save for some exceptions, the rights to economic exploitation lapse 70 years after the first publication date. Specific rules apply to the duration of collective works under Article 26 of the Copyright Act.
The duration of the copyright is not the same for all works and varies according to the lifetime of the author. During the lifetime of the author, the proceeds go only to the author; 70 years after the author's death, the proceeds go to the heirs (because the author is deceased). Only economic rights expire after 70 years. These rights are limited to their duration and in that sense cannot be recovered, except for those rights that remain with the author because they are inalienable, such as moral rights.
Economics rights are alienable. The transfer of copyright is governed by the general rules of freedom of contract. All rights to economic exploitation can be transferred. Only moral rights are inalienable and non-transferable.
The law regulates the transfer of the rights (the so-called assignment of copyright) by providing some general rules as per Articles 107 to 114 of the Copyright Act.
Economic rights are interdependent among the rights; the author can therefore decide to transfer one or more economic right, while maintaining the others. The transfer contract must be interpreted restrictively; each right must be explicitly granted by the author to the buyer.
After the death of the author, if the author has not otherwise arranged (by testament), the right to use the work must remain undivided among the heirs for a period of three years from the author's death.
However, the judicial authority, at the request of one or more co-heirs, will allow the division to be carried out without delay for serious reasons.
The rationale of the rule is to allow for continuity of management immediately after the death of the author, while waiting for the heirs to decide how best to manage these rights. After this period, the heirs may establish by common agreement that the right remains in communion for the duration that will be set by them, within the limits indicated in the provisions of the Civil Code and the Code of Civil Procedure.
The author who has reached 16 years of age has the capacity to carry out all legal acts relating to the works created by them and to exercise all the resulting actions (Article 108, Copyright Act).
The Copyright Act regulates the transfer of economic use of copyright with some general rules set out in Articles 107 to 114. Some rules that specifically apply to publishing contracts (see Articles 119 and 120, Copyright Act), which are of an imperative nature, are applicable to any contract for the sale of the rights of economic use.
In order to be enforceable against third parties, the transfer contract must be in writing (Article 110, Copyright Act) and must be signed by the holder of the rights.
The principle of exhaustion is linked to the right of distribution of the protected work, which has as its objective the distribution of the original of a work and includes the exclusive right to introduce it in a territory. This right is exhausted when the work has been put on the market by the author or by third parties with the consent of the author.
According to Article 17 of the Copyright Act, the exclusive right of distribution has as its objective the placing on the market or in circulation, or otherwise making available to the public, by any means and in any way, of the original work or of copies thereof, and also includes the exclusive right to introduce reproductions made in non-EU countries to the territory of the European Community countries for distribution purposes.
The right of distribution of the original or copies of the work is not exhausted in the European Community, except in cases where the first sale or the first act of transfer of ownership in the EC is carried out by the rights-holder or with his or her consent. This does not apply to making works available to the public so that everyone can access them from the place and at the time chosen individually, even if making copies of the work is permitted.
Beside rights to the economic exploitation of the work, the author is entitled to a series of faculties that constitute his or her moral rights (which are inalienable and non-transferable). These are the right of paternity (ie, the right to be identified as the author of the work); the right of disclosure; the right to publish unpublished works; the right to the integrity of a work; and the right to removal of a work.
There is no time limit on moral rights. At the death of the author the right of paternity and the right to the integrity of the work can be asserted, without a limitation on time, by the spouse and children and, in their absence, by the parents and other direct ascendants and descendants. Each of them can act without the consent of the others.
According to Article 23 of the Copyright Act, in the absence of such ascendants and descendants, the right can be asserted by brothers and sisters and their descendants. Finally, for reasons of public interest, the action can be promoted by the Ministry of Culture.
According to Article 22 of the Copyright Act, moral rights are inalienable. However, the author who has known and accepted modifications of his or her work is no longer allowed to act to prevent their execution or to request their removal. With the death of the author, his or her moral right is extinguished. However, according to Article 23 of the Copyright Act, a similar right arises for the relatives. After the death of the author, the moral rights of the author contemplated in Article 20 of the Copyright Act, compete with those of the children of the author and other relatives, in the order indicated in Article 23 of the Copyright Act.
The moral copyright law, which can be relied on without time limit, as stated in Article 23 of the Copyright Act, is therefore considered to have, in a certain sense, the character of perpetuity.
Article 6 of EU Directive 2001/29/EC implemented the anti-circumventing rules, stating that member states shall provide adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective. Under Article 6, member states shall also provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes, of devices, products or components or the provision of services which: (i) are promoted, advertised or marketed for the purpose of circumvention of, or (ii) have only a limited commercially significant purpose or use other than to circumvent, or (iii) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures.
For the purposes of this Directive, the expression "technological measures means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject matter, which are not authorised by the rights holder of any copyright or any right related to copyright as provided for by law or the sui generis right provided for in Chapter III of Directive 96/9/EC. Technological measures shall be deemed 'effective' where the use of a protected work or other subject matter is controlled by the rights holders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject-matter or a copy control mechanism, which achieves the protection objective."
According to Article 2, the General Data Protection Regulation does not apply to the processing of personal data by the competent authorities for the purposes of prevention, investigation or prosecution of crimes, or execution of criminal sanctions, and also does not affect the application of Directive 2000/31/EC, in particular, the rules concerning the responsibility of intermediary service providers as referred to in Articles 12 to 15 of the same Directive.
Civil actions against copyright infringement 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 achieve – 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 can be requested 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 they 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 Directive on the enforcement of intellectual property rights (2004/48/EC) ("the IPR Enforcement Directive").
Italian Legislative Decree No 35/2017, implementing Directive 2014/26/EU, establishes the collective and independent bodies and entities that manage copyright and related rights.
The collective management of related rights is entrusted to several entities operating in the field of music and audio-visual works, collecting and allocating remunerations pursuant to Articles 73 and 73-bis of the Copyright Act, and remuneration for private copying pursuant to Article 71 sexies of the Copyright Act.
Collective management organisations are owned and controlled by their members and are organised on a non-profit basis, while independent management entities are neither owned nor controlled by rights-holders and are organised on a for-profit basis.
There isn’t a central agency in Italy, but there are national copyright collection societies.
The Italian Society of Authors and Publishers (SIAE) is the competent authority for copyright. It handles the intermediation of exclusive rights for economic exploitation (music, theatre, television), as well as the collection and allocation of remuneration rights, such as private copying pursuant to Articles 71 sexies and adherence to the Copyright Act; the resale right pursuant to Articles 144 and following of the same Act; the right to rent, pursuant to Article 18b, and to remuneration, pursuant to Article 46b; remuneration for reprography pursuant to Article 68; and remuneration for loan pursuant to Article 69.
SIAE is subject to transparency obligations, in compliance with Legislative Decree No 35/2017, which opened the market to other collecting societies. SIAE has maintained the exclusive right to issue the stamp and collect the resale fee.
Synchronisation – for example, the combination of images and a musical work – constitutes a more complex act than simple reproduction and requires the explicit individual consent of the author of the work.
The synchronisation right is specifically protected in Article 12(2) of the Copyright Act, which provides for the exclusive right of the author to make economical use of the work in any form, original or derived.
Not every use of a protected work implies an infringement. Italian law provides for specific exceptions and limitations to copyright, commonly defined as “fair use”, such as the reproduction of single works for personal use and the reproduction and public disclosure of articles of an economic, political or religious nature.
Pursuant to Article 70 of the Copyright Act, citation or reproduction of a protected work is permitted if made for critical and discussion purposes, within the limits of such purposes and provided they do not constitute competition with the economic use of the work. It is also permitted if carried out for the purposes of teaching or scientific research. Its use must also be for illustrative and non-commercial purposes.
Article 70 paragraph 1-bis of the Copyright Act adds that the free publication through the internet of low resolution or degraded images and music, for educational or scientific use, and only if such use is not for commercial purposes, is allowed. The limits to the didactic or scientific use referred to in this article are defined by decree of the minister of cultural heritage and activities, after consultation with the minister of education and the minister of university and research, and after consulting the competent parliamentary committees.
The exception for private copying is provided for in Article 71 sexies of the Copyright Act. The private reproduction of music and video in any medium, made by an individual exclusively for personal use, is allowed, provided it is non-profit and without direct or indirect commercial purposes.
Article 71 septies of the Copyright Act introduces a fee in favour of copyright-holders as a private copying exception. This fee is financed by means of a levy on the selling price of the equipment and media which allow copies of works protected by copyright to be made.
According to Article 107 of the Code of Cultural Heritage and Landscape, the Ministry for Cultural Heritage and Activities, the regions and other territorial public bodies may allow the reproduction of cultural properties, without prejudice to the provisions concerning copyright.
Works of Sculpture and of Relief
It is generally forbidden to reproduce cultural properties when it involves producing casts from the originals of works of sculpture and works of relief in general, regardless of the material from which such works are made. Such reproduction is permitted only in exceptional circumstances and in compliance with the procedures established by ministerial decree. On the other hand, with the permission of the superintendent, casts from already existing copies, as well as those obtained using techniques that exclude direct contact with the original, are permitted.
Copyright applies to intellectual works with a creative character also relating to architecture. Architectural works and projects are protected by copyright, nationally (Copyright Act) and internationally (Berne Convention for the Protection of Literary and Artistic Works), provided they are creative and original.
The author of the architectural work and the project is the owner of the rights of economic exploitation and moral rights of the work, like other authors of works of human ingenuity.
As for the ownership of the rights, the general principle applies that if the project is carried out in collaboration, ie, with the indistinguishable and inseparable contribution of several persons, the rights belong in communion to all the co-authors.
In terms of property rights, the general principle that all forms of economic exploitation must be authorised by the author applies.
In terms of moral rights and the modifiability of the work, Italian law states that in works of architecture the author may not oppose modifications that may become necessary during the course of construction or the work already completed. However, if the work is recognised by the competent state authority as having an important artistic character, it is up to the author to study and implement such modifications.
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 of 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 (Legislative Decree No 70/2003) establishes specific domains of responsibility for the various intermediaries. Pursuant to Article 16 of the Italian E-Commerce Act, hosting service providers enjoy a regime of limitation of liability in the event of infringement of third-party rights, as long as they have no knowledge of the illegal activity or information, and act expeditiously to remove the illegal material once made aware of its infringing nature. The Italian courts have repeatedly acknowledged the joint liability of internet service providers for infringements committed directly by users of their services.
Article 5, paragraph 3(k) of Directive 2001/29/EC identifies the conditions necessary for a parody; on the one hand, that of evoking an existing work from which it must be differentiated in a perceptible way and, on the other, that of constituting a humorous act.
The parody is not required to show its own original character but is required to be perceptibly different from the original work parodied.
The holder of the primary work cannot prevent the exploitation of his or her work unless the parodying work does not communicate messages radically contrary to the convictions of the author.
According to Article 21 of the Italian Constitution, everyone has the right to freely express their thoughts through words, writing and any other means of communication.
The press cannot be subject to authorisation or censorship.
The neighbouring rights related to copyright are the rights that the law recognises in relation to other subjects who are connected to the work of the author. These are the artists, performers, producers of phonographic supports, producers of cinematographic or audio-visual works, radio and television station staff, and so on.
These are, in particular, the rights of the phonograms producers (Articles 72–78), the rights of producers of cinematographic or audio-visual works or moving image sequences (Articles 78bis-ter), the rights related to radio and television broadcasting (Article 79), the rights of performers (Articles 80–85bis), the rights relating to works published or communicated to the public for the first time after the extinction of copyright (Article 85ter), the rights relating to critical and scientific editions of works in the public domain (Articles 85 quater, quinquies), the rights relating to sketches of theatrical scenes (Article 86), the rights relating to photographs (Articles 87–92), the rights relating to correspondence and portraits (Articles 93–95), the rights relating to portraits (Articles 96–98), the rights relating to engineering works projects (Article 99), protection of the title, headings and external appearance of the work of articles and news – prohibition of certain acts of unfair competition (Articles 100–102).
Neighbouring rights include economic rights, alienable and transmissible rights and, in some cases, also moral rights (eg, performers).
The duration of the rights is on average 50 years, but specific and different durations are provided for each type of object of the right.
The Italian government recognises the administration and brokerage activity carried out by collecting societies as free, thus allowing the birth of new companies and leaving artists and producers free to choose which company to rely on.
Various subjects operate in the market, namely SCF, which represents producers, ITSRIGHT, which represents both artists and producers, and Nuovo IMAIE, which operates in both the music and video sectors.
According to Article 71 decies of the Copyright Act, limitations and exceptions to copyright also apply to neighbouring rights.
The Copyright Act does not set down copyright infringement cases that might constitute counterfeiting or plagiarism. In general terms, “counterfeiting” is the exploitation of 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 by another individual. “Plagiarism” is a variation of copyright infringement. It consists of 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 may not be copied or used for benefit without explicit consent from the author.
In Italy, copyright infringement constitutes a violation under both private and criminal law, so the rights-holder may start different kinds of civil actions, in order to obtain preliminary injunctions and/or damage compensation, or file a complaint with judicial authorities in order to get the criminal courts involved in the case.
Moreover, Italy has incorporated – within the framework of the Copyright Act – the protection instruments provided for by the IPR Enforcement Directive and, on the administrative side, it is also possible to follow the procedures established by the Italian Communications Regulatory Authority (AGCOM) in the regulation on the protection of copyrights on electronic communications networks, in order to obtain, under certain conditions, injunctions against internet service providers.
Civil actions against copyright infringement 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 – measures ordering the cessation of an infringement and any compensation for the damage suffered. Injunctions can be requested 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 they 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.
No particular formalities are required on the part of rights-holder before starting such proceedings. Proceedings on the merits start with the notification to the counterparty of a writ of summons, while interim actions for preliminary injunctions start with the filing of a petition in court.
The enterprises courts are specialised divisions of the courts, instituted in regional capitals (with some exceptions); they have exclusive jurisdiction over business matters and intellectual property rights.
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 the 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.
A civil lawsuit does not necessarily take place between the original parties, since it is always possible for a third party to join it on its own initiative or on the application of any party (at the request of the same or by a court order). In this case, the effects of the judge’s decision also apply to third parties.
The Copyright Act 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 (danger of delay, ie, the risk – urgent and irreparable – of financial loss in case of non-issuance of the measure), and fumus boni iuris (the possibility to assess, based on a summary examination of the case, the existence of the right to be protected and its violation).
Experts and technical consultants are very often involved in judicial proceedings. Their role is to provide the technical analysis necessary to help the judges in their decision.
Customs actions are activated either ex officio or following an application for action (ordinary procedure), which 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 inspect the works subject to the customs measure.
The ex officio procedure requires the autonomous intervention of the customs authority in the presence of sufficient grounds for believing that the works may infringe the IP rights of others.
Pursuant to Article 156 of the Copyright Act, a rights-holder who has reason to fear the violation of a right of economic use, or who intends to prevent the continuation or repetition of a violation that has already occurred, can take legal action to ensure that his or her right is established and the continuation is forbidden. The aim of this action is therefore to claim ownership of the right against those who dispute it, even going so far as to prevent a violation that has not yet materialised but is legitimately feared. Pronouncing the injunction, the judge can ask for a sum due for each violation or non-compliance subsequently established, as well as for any delay in the execution of the orders.
With regard to criminal law protection, conduct limiting or violating copyright is prohibited pursuant to Articles 171 to 171 nonies of the Copyright Act.
AGCOM adopted, with Resolution 680/13/CONS of 12 December 2013, the regulation on the protection of copyright on electronic communications networks, according to which the authority can issue, under certain conditions, injunctions against internet providers. Under the recent Resolution 490/18/CONS, AGCOM extended the regulation with the provision of a precautionary proceeding and more efficient actions relating to the alias websites.
As far as the above-described civil procedures are concerned, orders issued in preliminary injunction proceedings may be challenged by the unsuccessful party within 15 days of its service or notification (pursuant to Article 669 terdecies of the Code of Civil Procedure). As to ordinary proceedings on the merits, the time limit for lodging an appeal is either short or long, depending on whether or not the decision is notified by one party to the other(s); thus it is 30 days from the date when notice of the first-instance judgment is served, or six months from the publication of the judgment, when this is not served by the successful party.
In appeal proceedings, a full review of the facts of the case is admissible, but, in general, the parties cannot propose new questions or file new documents, pursuant to the ius novorum limitation in Article 345 of the Italian Code of Civil Procedure.
After the appeal, it is possible to challenge the second-instance decision to the Court of Cassation, but only for procedural or law questions (except in the case where a determining fact was not considered by the previous judges).
Costs typically stem from the gathering of evidence and from legal assistance. Court costs are settled by the judge at the end of the process.
In civil proceedings, the unsuccessful party is required to pay the costs incurred by the rights-holder. However, in most preliminary proceedings, to recover its costs (for legal assistance and the gathering of evidence), the rights-holder must initiate a separate action on the merits against the infringer.
The Italian legal system essentially provides for three optional alternative dispute resolution systems – mediation, assisted negotiation and arbitration.
Mediation and assisted negotiation are very rarely considered an option. Arbitration, on the other hand, is more widely used. Considering that arbitration is generally used when a contract contains an arbitration clause, it is usually easier for the parties to face arbitration procedures in cases of violations of licence agreements. In Italy’s procedural system, arbitration is regulated by Article 806 of the Code of Civil Procedure.