PROPRIETA' INTELLETTUALE E RISARCIMENTO DEL DANNO

Abstract

The claim for damages is an effective sanction to react to infringements of intellectual property rights like patents, utility models, designs, copyrights and trademarks. Article 125 of the Italian Industrial Property Code expressly provides the obligation of the infringer to pay the rightholder damages to compensate the injury suffered. Damage claims in this field are not governed by the same principles which run for different property rights. The italian Supreme Court held that the right-holder can choose among three methods for the assessment of the damages suffered: 1. actual damages, including lost profits; 2. the royalty which is normally paid by a licensee; 3. the profits obtained by the infringer. Under the new Code the right-holder can elect two different remedies, a wrong one –with the three methods - and a restitutionary one, in which the basic principle is restitution and not wrong or tort, because the remedy is provided even though the infringement is not wilfully or negligently committed, and the infringer can deduct a portion of his general overheads allocated to the production and marketing of the infringing product. The claimant can award either damages and the recovery of profits which are attributable to the infringement and are not taken into account when calculating the compensatory damages. The claim is a restitutionary one and not only, or not always, a tort: or, as common law courts say, the award is not (or not only) for its loss but for an account of the profits made by the defendant as a result of the infringement. We cannot assume that all of the profits will be awarded, and so the problem, under a legal framework like the one designed by the european directives, is more and more how the profits have to be calculated. It can be assumed that in the future a right-holder will more often choose the restitutionary remedy to recover all the profits made by the infringer which are attributable to the infringement and which are not taken into account when calculating the compensatory damages. The right holder cannot recover the profits attributable to factors other than the protected property right. Whereas under English law the claimant must make an election between damages and account of profits, under the new italian Code, a successful claimant can award both damages and restitutionary remedy, to strip the defendant of its gains: the defendant is entitled to deduct from its profits certain costs incurred and must only account for the profits made as a result of the wrongdoing.