Implementation European enforcement Directive Italy

09 June 2006

Evelina Marchesoni

This article considers the recent implementation of the “Enforcement Directive” 48/2004 (“the Directive”).

The Directive came into force on 22 April 2006 and it affects the Italian Copyright Law (Law no. 633/1941) (“ICL”) and the Italian Intellectual Property Code (“IIPC”).

The primary aim of the Directive is to curtail the ever growing problem of intellectual property infringement and piracy. The most radical reforms relate to the means by which evidence is obtained, precautionary measures, damages and video piracy or “camcording”.

Evidence

The Judge is now allowed to obtain information in relation to the origin and the distribution of the infringing goods or services through the cross-examination of not only of the alleged infringing party, but also of third parties (found to be in possession of, using or supplying the infringing goods or services).

A failure properly to comply with the evidential process can lead to the imposition of criminal sanctions.

The reform has also made an express provision in the CL (Article 156) for the delivery-up of banking and financial documentation in relation to any large scale commercial infringement.

Precautionary Measures

The new Article 162 ter of CL provides for seizure of the infringing goods and freezing of the infringer’s banking accounts (all on a preventative basis).

The Judge can also order the withdrawal of the goods from the market on a temporary or a permanent basis. In the event that the Judge makes a withdrawal order on a temporary basis, he must also order appropriate changes to the infringing products to protect the intellectual property rights in question.

Damages

The Directive enables the claimant to claim moral damages in addition to economic damages. In relation to the IIPC, a claim for lost profit shall not be less than the amount which would have been payable by way of royalty pursuant to a legitimate license.

Video Piracy

The Directive also addresses the problem of video piracy or so-called “camcording” which is the illegal recording of movies in cinemas. It is now prohibited to introduce, install or use unlawfully in public places devices allowing the recording, reproduction or transmission of any original works shown there. Furthermore, the public cinemas, theatres, etc are obliged to give notice of the prohibition to the public.

It is clear that the Directive will contribute, in no small way, to the protection of intellectual property rights in Italy.