Journal article Open Access

Risarcimento del danno da violazione dei diritti di proprietà intellettuale e retroversione degli utili. Un'analisi comparata

Federico Bruno

Thesis supervisor(s)

Caso, Roberto

The growing interest in intellectual property is closely linked to the role it plays in modern society, characterized by continuous technological and cultural progress and a knowledge-based economy. Therefore, intangible assets have become increasingly important and indispensable for the success of individuals and businesses on the market.

In order for this value to be preserved and made profitable, it is necessary that IP rights are effectively protected against counterfeiting and plagiarism. Indeed, thanks to technological innovations and easier access to information, these phenomena have reached worrying proportions, so much so as to test the adequacy of the responses of our legal system. In particular, in the general strategy of IP enforcement, a prominent role is played by infringement damages, intended as a tool by which to allow the owner of the infringed right to obtain fair compensation. However, traditionally, the institution of compensation has not always been up to this task, especially in view of the characteristics of intangible assets and counterfeiting phenomena, as well as due to a compensatory function focused too much on the damage suffered, so as to miss the other direct consequence of the harmful conduct: the profits gained by the infringer.

With the intention of making up for this shortcoming, the legislator has been inspired by common law systems, in particular the US system and the remedy of disgorgement of profits, for the introduction of the retroversion of profits, an instrument foreign to our civil tradition that allows the return of profits unlawfully obtained from the violation of IP rights. Consequently, the remedy not only plays a compensatory function, but also a preventive-deterrent and punitive-sanctioning one.

This thesis aims to critically analyze how the introduction of the retroversion of profits has led to redefine the concept of damages and, more generally, of civil liability in the field of intellectual property. Moreover, through a comparative analysis of the US and Italian legal systems, this work will try to evaluate how the retroversion of profits is applied in practice and how it has affected the determination of infringement damage awards, how these remedies interact and what results it has produced in terms of quality of protection.

First of all, the first chapter will focus on the relationship between the nature of IP rights and the adequacy of the responses provided by the civil liability regime. By retracing the doctrinal and jurisprudential paths that have prepared the ground for the advent of the retroversion of profits, the perplexities and risks that have always characterized the compensatory damages and that also involve the new remedy will be identified. Finally, through a broader understanding of the institution of the disgorgement of profits in the United States, it will be possible to identify how the Italian system has made this instrument its own by means of the provisions of art. 125 c.p.i. and 158 l.a., as amended by legislative decree no. 140 of 16 March 2006, in implementation of Directive 2004/48/CE, and how this has contributed to rediscovering the multifunctional nature of civil liability.

In the second chapter, the subject of the analysis will be the patent for invention and how its protection is achieved by means of compensatory damages and the retroversion of profits as governed by art. 125 c.p.i. After identifying the essential features of the discipline of this IP right, it will be illustrated, through comparison with the US system, how the quantification of damage awards is carried out in practice by the Italian courts and overseas, trying to outline problems and solutions, common and different. In light of this, an evaluation will be carried out regarding the innovative scope of the retroversion of profits, both in its declination of renewed attention to the profit of the counterfeiter (paragraphs 1 and 2 of art. 125 c.p.i.) and as an autonomous remedy which is independent of infringer culpability (paragraph 3 of art. 125 c.p.i.).

In conclusion, the third chapter will focus on the copyright protection and how compensatory damages and retroversion of profits are brought together under art. 158 l.a. The complexity of copyright, resulting from the peculiarities of intellectual works and rights recognized on them, is reflected in the difficulty of determining damage awards in case of infringement or plagiarism. In relation to this, the continuous references to US copyright regime will allow to observe the evolution of Italian jurisprudence, which shares with the overseas one the same problems. Finally, the intertwining of damages and retroversion of profits will allow to make an in-depth reflection on the relevance of infringer culpability and on the possible implications arising from its enhancement, in a perspective of increasing quality of the response of our legal system to infringements.

Trento Law and Technology Research Group, Student Paper Series; 73
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