Software Protection

In the light of regulations which have recently come into force it should now be simpler to bring proceedings in Italy for the protection of software.

EC Directive 91/250 regarding software was implemented in Italy in 1992 by way of legislative decree no. 518 of 29/12/92. The law established that computer programmes fall within the ambit of copyright law, a fact which had previously been much debated. Computer programmes are therefore protected as "literary works" and accordingly must satisfy the criteria of being "original works" in order to receive protection. In common with all works subject to copyright protection, it is the form of expression chosen for the work and not the underlying idea/principle that is protected.

In addition to the above, regulations (issued in 1994) have recently come into force which aim to make it easier to bring proceedings in the face of infringement of copyright in software. Pursuant to the regulations a public register of computer programmes is to be opened at the premises of S.I.A.E., the Italian Institute for authors and editors.

The registration of a programme with the Institute will be optional and should be of particular interest to holders of copyright in programmes which have not as yet been widely distributed or whose programmes have been "tailor-made" to suit a particular user. Its principal aim is to act as an aid in the determination of the order of priority with regard to the creation of a particular programme. Although the evidence will be merely presumptive it should make it easier to obtain emergency interim measures in the face of infringement of copyright. Indeed, although such measures were often granted almost as a matter of course to the holders of copyright in well-known or standardised programmes, others often faced difficult problems of proof.

The register will supplement the facility which already exists for filing a specimen copy of any as yet unpublished programme (and relating documentation) with S.I.A.E..

As stated above, the new register should simplify the bringing of civil proceedings for the protection of software rights. The main procedural measures and sanctions available can be summarised as follows: - Application can be made for a number of interim measures, including by ex-parte application where there is a real danger of evidence of infringement being removed or destroyed. In most cases the court official who enforces the order will be assisted by a technical expert appointed by the court. The measures available include:
- an expert's opinion and assessment of the alleged infringement of copyright; - seizure of copied programmes (the applicant may be required to provide security); - in addition to seizure, the technical expert may take a number of steps aimed at obtaining evidence of the infringement, such as copying programme instructions, printing off the screen display, photocopying operating manuals etc.
- where unfair competition practices or the consequences thereof are alleged (e.g. the loss of customers, or damage to the reputation of the applicant's business as a result of the poor quality of copied products), then additional measures may be available to prevent irreparable damage or loss.

At the judgment stage, a number of different orders may be made, including:
- an order determining the intellectual property rights in question and prohibiting the losing party from future action in infringement thereof;
- the destruction of counterfeit copies, equipment used for making such copies etc.;
- award of compensation for loss suffered;
- publication of the decision.

Practical Pointer:
- Authors of new or custom-made software would be advised to seek early registration of their programmes in the recently created register, which should help provide important evidence of the date of creation of such programmes.