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SIMONA LAVAGNINI RANKED AS “STAR INDIVIDUAL” FOR COPYRIGHT IN 2017 CHAMBERS GUIDE

17/03/2017

Chambers has just published the Guide “Chambers Global 2017” in which LGV founding partner Ms. Simona Lavagnini has been ranked as a “Star Individual” for Copyrights – Italy.


 

Chambers and Partners highlighted the praise that Ms. Simona Lavagnini has received from both clients and fellow colleagues for her skills in the field of new technologies, noting that within the copyright sector she manages complex multi-jurisdictional proceedings both of a contentious and non-contentious nature. The Guide also underlines some of the appreciations that clients have expressed in relation to the LGV founder’s quick turnaround, with exceptional comments such as: „She is the best lawyer I have never met. I can always rely on her to find the right solutions for all the issues we have here: she is outstanding“.

Ms. Lavagnini wishes to thank all clients of LGV Avvocati and the team who collaborated towards achieving this excellent result.

The link to Chamber’s web page is indicated below: http://www.chambersandpartners.com/117/893/editorial/2/1#profileEditorial_492946

FAVOURABLE TAX REGIME PROVIDED UNDER PATENT BOX DECREE ALSO APPLIES TO SOFTWARE UPDATES

14/03/2017

With resolution no. 28/E the Agency responds affirmatively with regard to a query put forward by a computer software company concerning the possibility of applying the favourable tax regime provided under the Patent Box Decree to incomes deriving from activities involving the concession of use of the product, where such activities involve implementation, update, personalization and customization of the software, considering that the norm compulsorily requires the undertaking of research and development activities.


 

Article 1, paras 37 to 45, of the Law of 23 December 2014, no. 190 (so-called “Financial Act 2015”) provides for an optional favourable tax regime (so-called “Patent Box”) for incomes deriving from use of “software protected by copyright, patents, trademarks, designs and models, as well as processes, formulae and information concerning experience acquired in the industrial, commercial or scientific field that are legally protected” with the objective of incentivizing investments in the fields of research and development. This optional regime is regulated by Decree of the Minister for Economic Development, in concert with the Ministry for Economic Development and Finances of 30 July 2015 (so-called “Patent Box Decree”).

A company specialized in software development asked the Italian Revenue Agency for clarifications with regard to the proper identification of activities that may considered favourably from a tax standpoint; in particular, the applicant asked whether it is correct to consider subject to said favourable tax regime the activities involving initial licensing, assistance and maintenance fees, realization of so-called modifications of application software developed by the above mentioned company and registered at the Special Public Register for Computer Programmes held at the SIAE.

The Revenue Agency clarified that software protected by copyright is one of the immaterial assets which allow companies to benefit from the optional favourable tax regime. That includes all computer programs in whichever form they are expressed as long they are the original product of the intellectual creation of the author. Secondly, the Agency confirmed that the activity involving concession of use of the right to utilize immaterial assets is subject to the aforementioned regime; on this point, the Agency emphasized that in order to accede to that regime, in compliance with the so-called “nexus approach”, the company must undertake activities of development, maintenance and enrichment of the software concretely carried out via the implementation, update, personalization and customization of the software. The Agency also specified that activities like staff training, basic help desk of so-called “second level”, telephone support, the periodic fee for use of application software in the cloud, etc. – which involve a purely instrumental use of the software, that fall outside the scope of its protection – do not fall within the favourable tax regime in so far as they do not represent an exclusive use of authorial prerogative.

PAYMENT OF COMPENSATION IN CASES OF UNLAWFUL ANTITRUST DAMAGE: ENACTMENT OF THE NEW LEGISLATIVE DECREE N. 3/2017

08/03/2017

On 3 February 2017 the new legislative decree no. 3/2017 came into force. The new decree implements directive 2014/104/EU and regulates claims for compensation in cases of infringement of the right to fair competition caused by a company or an association of companies. The decree introduces new and relevant elements with regard to the procedural requirement of legitimacy to commence proceedings, the payable damages, the efficacy of the AGCM decision and territorial competence.


 

By means of decree no. 3/2017, a new set of rules has been introduced which, both with regard to the substantive and procedural law, regulates claims for payment of compensation in cases of infringement of the laws on fair competition.

To begin with, the decree regulates “the right to compensation in favour of whosoever has suffered damage deriving from an infringement of the right to fair competition”. Included within that definition – in accordance with art. 2 of the decree – are articles 101 and 102 of the Treaty on the Functioning of the European Union and articles 2, 3 and 4 of Law no. 287/1990 (concerning unlawful agreements and abuse of a dominant position), as well as any other provision, national or European, aimed at achieving the same objectives established for the above mentioned norms.

Proceedings may be commenced by any person, natural or legal, or entity without legal personality, who has suffered damage caused by an infringement of the right to fair competition. More precisely, legitimacy to commence proceedings will be accorded both to the direct and indirect acquirers of the author of the infringement. The decree, therefore, implements the principles providing for a wide legitimacy to commence proceedings, which has already been recognised by European case law.

With regard to the claim for compensation, the decree clarifies that, firstly, it includes actual damage, loss of profits and interests, but excludes so-called punitive damages which exist in certain Anglo-Saxon jurisdictions. The decree also provides that compensation must be determined on the basis of arts. 1223, 1226 and 1227 of the civil code. In this regard, the following should be observed: i) the judge may ask for assistance from AGCM by formulating specific requests concerning the tendencies followed in cases of quantification of damages; ii) the judge may also ask for assistance on the issue of existence of the damage caused by an infringement of the right to fair competition, where said infringement involves a cartel.

The rules on the order of exhibition are also particularly relevant. They seek to overcome information asymmetry which is the main impediment for the obtainment of compensation by parties that have suffered antitrust damages. Upon petition filed by the parties, the judge may order the exhibition of evidence that he or she considers relevant not only to the parties concerned as well as to other third parties, but also to the competition authority (with regard to evidence contained in the file of the proceedings). The judge may proceed in such way with reference to the competition authority only in a residual case, that is when neither the parties nor the third parties can reasonably provide evidence, and provided that the order is considered proportionate.

An additional and important novelty is represented by the evidentiary efficacy of the decisions taken by the competition authority, which have already been considered by the case law. Pursuant to art. 7 of the decree, the infringement of the right to fair competition can be considered definitively ascertained, with respect to the author, when it has formed object of a decision of the AGCM that has become definitive. Such ascertainment is binding with regard to the nature of the violation and its extent, although issues related to the causal link and existence of the damage are excluded, as they will need to be proven by the claimant and ascertained by the court.

In that regard, finally, said proceedings will fall within the non-derogable competence of the Intellectual Property Divisions and will be dealt with exclusively by the courts of Milan, Rome and Naples.

COURT COMPETENT TO DECIDE ON A CLAIM FOR PAYMENT OF DAMAGES CAUSED BY TRANSNATIONAL SALES VIA INTERNET WEB SITES? FOR THE ECJ IS THE COURT OF THE STATE IN WHICH DELIVERY OCCURS!

The European Court of Justice (ECJ) has declared that Art. 5, point 3, Council Regulation n. 44/2001, dated December 22, 2000, concerning the jurisdiction, acknowledgement, execution and implementation of civil and commercial decisions, must be interpreted – in order to ascertain the jurisdiction with reference to a claim for damages based on a breach of the rule prohibiting sales outside of a selective distribution network – in the sense that endowed with jurisdiction are the courts of the State where the damage (i.e. violation of the prohibition) has occurred. It is irrelevant that the internet websites offering goods in breach of the selective distribution network should operate in Member States different from that of the court in which proceedings have been commenced.


 

The French company Concurrence entered into an agreement with Samsung for the distribution of high range products bearing the Korean mark “Elite”. Such contract provided for a prohibition from selling those products also via the internet.

Samsung subsequently notified Concurrence of the termination of their contractual relation, claiming breach on part of Concurrence of the online sale prohibition provided under the selective distribution agreement. Concurrence, for its part, disputed the validity of such clauses claiming, in particular, that they had not been uniformly applied to all distributors, some of which sold the products at issue on various Amazon websites, without thus provoking any reaction from Samsung.

What followed, then, were two proceedings (one before the Paris Court and the other before the Paris Court of Appeal), with Concurrence losing in both cases, who then appealed to the French Supreme Court. Concurrence argued that the judgment of the Paris Court of Appeal had erroneously declared the lack of jurisdiction of the French courts over proceedings involving proceedings concerning Amazon websites operating outside of the Member State territory. In particular, according to Concurrence, the Paris Court of Appeal had wrongfully failed to ascertain whether the sales system via Amazon internet websites allowed for the shipping of products sold not only within the Member State of origin of the internet website in question, but also within other Member States, and especially in France, which would have justified the finding of jurisdiction of the French courts.

The French Supreme Court decided to suspend proceedings and referred the question to the Court of Justice of the European Union, requesting the exact interpretation of art. 5, para. 4 of Regulation no. 44/2001, with a view to ascertaining the jurisdiction conferred by that provision with regard to a case of claims for damages put forward on the basis of a violation of the prohibition of sale outside of the selective distribution network determined by the offer, on websites operating in different Member States, and concerning products forming the object of said network.

With the judgment herewith considered, the European Court of Justice held that, in such cases, the judge endowed with jurisdiction is that of the Member State in which the damage actually occurs, taking into account the reduction of the volume of sales suffered by the store and his consequent loss of profits, also noting that it is irrelevant that the internet websites in which the offer of objects falling within the selective distribution network should operate in Member states different from that of the court in which proceedings have been commenced.

ITALY RATIFIES THE AGREEMENT ON THE UNIFIED PATENT COURT

22/02/2017

On 10 February 2017 Italy ratified the agreement on the Unified Patent Court (UPC) thus becoming the twelfth Member States to ratify the agreement introducing a new system for European Patents. As of now he Agreement has already been ratified by Austria, Belgium, Bulgaria, Denmark, France, Luxembourg, the Netherlands, Portugal, Sweden and Finland. In order for the Court to become operational it is necessary that the agreement be ratified by thirteen States, including France, Germany and the United Kingdom. While ratification by France has already occurred and that of Germany appears to be a mere formality, the relations between the United Kingdom and the new Court will be more complex as a result of the Brexit vote.


 

With law no. 214 of 3 November 2016, conferring authorization on the Italian President Mr. Mattarella to ratify the agreement, new substantive measures have been introduced in our patent system, which concern the very core of patent protection and especially protection against so-called “indirect infringements”: the new 2bis paragraph of art. 66 of Legislative Decree no. 30/2005 now expressly recognises that the patent owner has the right to “prevent third parties … from supplying or offering to parties who lack the right of utilization of the patented invention the means connected to an essential element of that invention which is deemed necessary for its implementation within the territory of a State where the invention is protected, if the third party is aware of the suitability and destination of said means or should be aware whilst exercising ordinary diligence”.

It must be emphasised that indirect infringement does not necessarily require positive knowledge of the destination whereas it is enough that the third party “should have it whilst exercising ordinary diligence”. There is no indirect infringement “when the means are formed by products that are currently on the market, unless the third party does not induce the party to whom the means are supplied into committing” an infringement of the patent (as defined by the norm under consideration).

It must be noted that the provision makes no distinction between national and European patents, so that the above described principles will apply for both categories and the alterations of the substantive law will also apply to national patents.

Last month, the Justice Minister Mr. Andrea Orlando had identified a building in via San Barnaba 50 in Milan as the local headquarters of the Unified Patent Court. With the agreement now ratified, a further important step was taken towards a new patent system.