Chapter Editors: Carlo Piana, Simone Aliprandi^a

Introduction to software protection under Italian law

Body of law

Copyright protection of software is regulated in Italy by a few articles added to the general Italian Copyright Law (precisely "Legge n. 633 del 22 aprile 1941") by the Legislative Degree no. 518 date 29 December 1992. This reform transposes the Council Directive of 14 May 1991 on the Legal Protection of computer programs (91/250/EEC) into Italian national law.

Italian Copyright Law has therefore a special section (Section VI) in chapter IV, which deals with software and is made of articles 64-bis, 64-ter, and 64-quater.

Software Act: Object of protection

Computer programs (including the preparatory material) are protected by copyright and are equivalent to literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works. According to article 2, n. 8, of the Italian Copyright Law software programs are protected in whichever form they are expressed, insofar as they are original and result from the intellectual creative activity of the author. The ideas and principles on which software programs are based, including their interfaces, are excluded from protection. The notion of "program" includes also the preparatory materials of the same.

Authors/Beneficiaries

The general principle of the Italian copyright law provides that the copyrights in a work belong to the author. Article 64-ter however provides that – unless there is a different stipulation – the employer is the holder of the exclusive right to exploit the program (or the data base) made by the employee during the employee’s working hours or upon the instructions of the employer. According to the most authoritative doctrine, the exploitation rights are assigned to the client party also in case of “work for hire”, i.e., when software development has been undertaken within a development agreement and paid by the client.¹

Exclusive rights

According to article 64 bis of the Italian Copyright Law the exploitation rights include the exclusive right to perform or authorize:

(a) the temporary or permanent reproduction of the computer program by any means or under any form. Insofar as acts like uploading, displaying, execution, transmission or storage of a software program require a reproduction of the same, also those acts are subject to the authorization of the copyright holder; (b) the translation, adaptation, transformation and any other modification of the computer program, including the reproduction of the resulting program [in other words, creating a derivative work], without prejudice to the author of the author of the modification; (c) any form of public distribution, including lending the original computer program or copies thereof. The first sale within the Community [now the Union] exhausts the right to further control the distribution of such copy within the Community, with the exception of the right to control the further lending of the program or of a copy thereof.

Exceptions to Exclusive Rights

Article 64 ter of the law expressly provides that:

in the absence of any contrary stipulation, the authorization by the copyright holder shall not be required for to the activities as per subheadings a) and b) of article 64-bis, whenever such activities are necessary for the program to be used, in conformity with its purposes, by the person who legally purchased it, including for the correction of errors. Whoever is entitled to use a copy of the computer program may not be prevented by contractual means to make a backup copy of the same program where this is necessary for its use. Whoever is entitled to use a copy of the computer program may, without being authorised by the copyright holder, evaluate, study or test the operation of such program in order to identify the ideas and principles underlying each component of the same program, provided he carries out such acts in the course of operations of loading, visualization, execution, transmission or storage of the program which he/she is entitled to perform. Any contractual stipulation contrary to the provisions of this paragraph shall be void.

Moral rights

The Italian copyright system is a droit d’auter one, where moral rights are particularly strong. Worth of noting are:

• The right to be acknowledged as the author of the work (Artt. 20, 21)
• The right to oppose to modifications or alterations which are prejudicial to the honour or reputation of the author (Art. 20)
• The right to withdraw the work from distribution, when high moral reasons exist and subject to indemnification to the acquirers of the right to exploit the work.

Article 20 provides for two separate rights:

independently of the exclusive rights of economic utilization of the work referred to in the provisions of the preceding Section, and even after the transfer of such rights, the author shall retain the right to claim authorship of the work and to object against any distortion, mutilation or any other modification of, and other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation.

While the right to right to claim authorship does not raise any practical concern, the right to object against any distortion has been claimed to be a possible limit to the working of FOSS licenses, because the author could at will revoke his or her permission to modify the program, in clear contradiction with the provisions of the same license. However, this right only applies in case of serious alterations of the work, which must be “detrimental to the honor or reputation of the author”. In addition, according to Art. 22, if the author was aware of and accepted the modifications, he or she has no right to oppose to them. Finally, we argue that this provision is not applicable to software because of its rationale, which is to protect the “spirit” of the artist which lives in its artistic works, spirit that is far less arguably existing in a software work.

There is no know case in Italy dealing with the application of moral rights to software. Many Authors are inclined to think that, as there is no specific exception for software and as the rules on moral rights are of general application, these rules apply also to software. But this rather formal argument does not seem convincing,as there are other specific provisions in the copyright law whereon the generic principles do not apply, such as the sui generis database rights. Besides, because the copyright provisions in the Italian Copyright Law are formally an implementation of a Directive for the harmonization of the internal market, it is arguable that such an impediment to the harmonization – which could prejudice the exploitation of software works – can only be based on grounds that supersede the European legislative powers and should be interpreted restrictively.

Article 22 provides that these moral rights are non transferable and Art. 23 provides that they have no limitation in time, and can be exerted by the heirs after the death of the author.

A further moral right is the right to withdraw the work from distribution when high moral reasons exist (Art. 142). This provision has the same rationale as the one of Art. 20, and again reflects the fact that an author can have very serious moral involvement with his or her own works, so that the distribution of said works can be highly prejudicial to his or her reputation or be otherwise sensitive concerning the morality of the author. It is therefore arguable that the right to withdraw the work does not apply to software for the same reasons we put forward for Art. 20. At any rate, the need to indemnify the rightsholders (including licensees) who would be damaged by the withdrawal and the cumbersome procedure provided for it by the law, relegates this hypothesis to the realm of intellectual exercises, without practical bearings.

Term of protection

The same term as for works of literature and art applies: 70 years as of January 1 following the death of the author². In case of co-authorship the death which occurs the latest is taken into account.

Copyright assignment

Copyright assignment is not expressly regulated by Italian Law for any copyrightable subject, except for works created under an employer/employee relationship, as mentioned above. By the way, this is not considered a case of assignment, but a case where the rights to exploit the work are vested in the employer by virtue of the law. We have also already mentioned that in case of work for hire the copyright of the resulting work is to be attributed – according to circumstances and unless different stipulation exist – to the contracting entity, as this is the normal working of the rules of contracts (contratto d’appalto). In case of unpaid contributors, without an express agreement, the copyrights will be vested in the authors, as the general rule applies.

Moral rights cannot be assigned and any contrary provision is null. All other rights can be assigned and transferred without limitation (Art. 107 of Italian Copyright Law), save for certain express provisions in terms of the publishing agreement. The only requirement is that the agreement must be proved in writing (Art. 110).

Special Measures

The Italian Copyright Law refers to the general copyright principles regarding the measures to enforce software copyrights. Besides these general measures, a specific criminal sanction has been created for those who bring into trade or possess for commercial purposes a copy of a computer program. Art. 171 bis, subsection 1 of the Italian Copyright Law provides that:

whoever unlawfully duplicates computer programs for purposes of gain, or imports, distributes, sells, detains for commercial purposes or leases the said programs, for the same purposes and being aware or having reason to be aware of the fact that such copies were not authorized, shall be punished by imprisonment for between three months and three years and by a fine of between 500,000 and 6,000,000 Liras [1 euro = 1936.27 Liras]. The same punishment shall be not less than imprisonment for six months and a fine of 1,000,000 liras if the offence is serious or if the program which was unlawfully duplicated, imported, distributed, sold, detained for commercial purposes or leased had been previously distributed, sold or leased on media bearing the mark of the Italian Authors’ and Publishers’ Association pursuant to this law and to the relevant Regulations as per Royal Decree no. 1369 of May 18, 1942.

Unprotected software and public domain software

The Italian Copyright Law establishes that in order to be protected, a work must have at least a minimal creative character, which is made of two components: novelty and originality. This applies also to software, although as a matter of fact – excluding utterly simple computer programs or very basic scripts, as well as interface definition files – it could be hard for a judge to rule that a software application fails to have sufficient creative character.

A public domain status exists ex lege when the copyright expires, i.e., 70 years after the last author’s death. At the time of writing, for software this occurrence is only speculative and therefore there is no guidance coming from any decided cases. But as far as voluntary dedication to the public domain before expiration is concerned, this should be possible. With a caveat: in theory, nothing prevents a rightsholder from relinquishing his or her rights, but as we have seen, some of the moral rights are actually not waivable. Therefore it is impossible to have a truly public domain status for a copyrighted item in Italy. If for the purpose of analysis we redefine "public domain" as "free from any exploitation rights", then a public domain status is achievable by an act of dedication to the public domain made by the rightsholder.

Analysis of FOSS under Italian Law

Copyrights

Although FOSS can be written by one person or be owned by one legal entity³, after some time software is the result of the work of several authors who can make claims to it. The question is whether later additions create a collaborative work (a work created by collaborating authors), or whether the original software is the end work and every contribution created during the further development of the software, a derivative work. The legal consequences are different.

Qualification of FOSS

There is no way to determine whether a FOSS work is a collective work, a complex work or else, and each version of the software can be classified differently according to how the work was made. Many combinations can ensue. The simplest scenario is the one in which the software was made by author A, taken by author B and then by author C. A, B and C having each one modified and extended the software. This is a collective effort, but technically it consists of a series of derivatives, each one being technically copyright of each author, who relies on the upstream permission in the chain of development. Most of the times the scenario is more complex, as the contributions of the authors are committed into the release by means of a code management system through which concurrent development is made.

Whereas the first version of the software, if written by several people, can in many cases be qualified as a collaborative work where the different contributions are indistinguishable, this seems much less the case for the later versions, which are based on the original work, without any “consultation” between the authors. These later versions will be qualified as derivative works. Therefore, in terms of the legal consequences, a distinction needs to be made between the rights of the original co-authors and the rights of people who do the subsequent development of the original work.

According to a reliable legal theory in Italy, a collaborative work can be a "complex work", in other words a work in which "[...] the individual contributions have their own autonomy, which enables their separate exploitation, and nevertheless they are shaped in a way that, as a final result of the cooperation, they end up being essential elements of an organic ensemble, where the individual contributions express themselves as a whole, originating an unitary artistic effect". This definition is made for artistic works (such as movies, where the individual contributions are different by nature, like the work of the director, of the director of photography, of the screenplay writer, etc.). Despite the fact that in software programming contributions tend to be of the same nature, it is very likely that also in software cooperative efforts will be qualified as a “complex work”.

Rights of the original co-authors

Unless the components of the software can be clearly distinguished and separated (which can be the case, of course), software made collaboratively is considered an “indivisible work"⁴. This concerns works for which it cannot be concluded clearly what the individual contribution of every author is, e.g. when two authors write a text together. In the case of indivisible works the authors are free to regulate the exercise of the copyrights by agreement. This freedom goes very far. The co-authors can agree how the program is made public (e.g. as “FOSS”) and how decisions regarding the copyrights are made, e.g. by normal or special majorities, or give one of them the right to make all decisions regarding this work (limited to acts of ordinary administration).⁵

If the co-authors have not reached an agreement as to how decisions are made (insofar as the law allows them to regulate the co-authors’ decision-making process) the rules laid down by Art. 1105-1110 of the Italian Civil Code apply. The main rule is that any act that does not involve disposing of the copyright and that does not prevent the co-owners to exert their rights is allowed, but acts of “extraordinary administration” must be voted according to the majorities laid down by the law or agreed upon by the parties. Parties disagreeing can oppose the decisions of the majority in Court. ⁶

FOSS and derivative works under the Italian Law

Italian law does not expressly mention "derivative works", but it deals with "creative elaborations". It may be only a nuance, a reflection of the nature of the Italian law in the droit d’auteur system, but it is worth noting.

Art. 4 of the Italian Copyright Law provides that

Without prejudice to the rights in the original work, elaborations of a creative character of any such work, such as translations into another language, transformations into any other literary or artistic form, modifications and additions constituting a substantial recasting of the original work, adaptions, reductions, abridgements and variations which do not constitute an original work, shall also be protected.

The assignment of copyrights

Assignment of copyrights in FOSS licensing does not pose any particular challenge nor has it major deviations from the general working of assignments. The virtual absence of all-Italian collaborative and distributed FOSS projects makes it difficult to predicate any characteristic of the use of assignment of copyrights for lack of examples. A field where all-Italian FOSS projects exist is in the public administration sector, which is however governed by certain specific rules (such as the reuse principle and compulsory clauses in ad-hoc software development) that it would require a much larger and separate discussion.

Moral rights

Moral rights could play a dangerous role in FOSS, which for instance prohibit field-of-use restrictions. In discussion groups one can find arguments in favour of applying moral rights to object against military- or nuclear power-related use of software. The Freedom to improve and adapt the software empowers anybody to change the software, but if these changes are made to port an application to unwanted uses which can affect the reputation or the morals of the original author, arguably this could trigger the use of moral rights to prohibit such modification. Reference is made to the section on moral rights above for an argument against the applicability of the moral rights to software.

Enforcing FOSS licenses

There is little doubt that a FOSS license is enforceable in Italy, apart from marginal aspects for which some doubt exist. The same reasoning as in Welte v. Skype⁷ would apply. Regardless whether the license is a contract or a bare copyright license⁸, copyright can be considered a general prohibition to use the software freely unless the rightsholder permits such use. Therefore, absent a license, nothing would permit a third party to use the work. In other words, in a FOSS license enforcement case the alleged infringer cannot invoke the nullity of the license and at the same time argue that the use was legitimate under the same license, unless there is another legal theory that permits said infringer to use the software. For instance, if the infringer claims that the obligation to release the modified source code is unenforceable because, e.g., the GNU GPL is null, and this is a condition to use the software according the same GNU GPL, this argument will fall flat on its face, because it would result in claiming that the use by the alleged infringer was not permitted at all.

But what about actually enforcing an obligation: in the above example, actually enforcing the disclosure of the modified source code if the alleged infringer refused to perform such obligation (or to meet such condition). In theory, a licensee can be forced to do something which is provided for by a contractual obligation. Under Italian law, this is in general possible under article 2931 of the Italian Civil Code. To trigger such provision, a contractual obligation must exist and be a “positive” one (that of doing or giving something), whereas a condition is not sufficient. Most FOSS licenses just set conditions that must be met in order to use the software. Even copyleft clauses are laid down more as true conditions than as obligations. There are exceptions, though, to this finding. Two examples come to mind: explicit downstream patent licenses (as in the Mozilla Public License) and liability disclaimers.

Downstream patent licenses state that the contributor (sometimes the distributor, as with the GNU General Public License v.3⁹) of software explicitly grants a worldwide royalty-free patent license on the patents it owns or controls to all downstream recipient of the software. This is a positive effect of the license. However, upon a closer look we can see that more than an obligation, such automatic license directly results from the act of distribution of software under the applicable license. Without distribution, there is no patent grant.

Similarly, all licenses provide for a liability disclaimer, which again is not an obligation, but an effect of the license, or a waiver. This is a focal point and needs to be dealt with more in depth.

Waiver and liability

Typically, FOSS licenses contain very strong disclaimer clauses, which discharge the author from all liability¹⁰. The reason for this is that FOSS is often made available without any monetary compensation of any sort, as a result of which the author generates insufficient income to pay for liability insurances and legal costs¹¹.

Under Italian law there is a first issue. According to Art. 1229 of the Italian Civil Code, no disclaimer of liability can be made to the effect of excluding liability for gross negligence or willful acts. Any contrary provisions is null and void (although the rest of the agreement can remain valid). The nullity can be found ex officio without a specific request of the parties (Art. 1421 ICC), but it must be instrumental to a demand made by the parties. Therefore, the provisions of the licenses are null insofar as they unconditionally exclude all liability without making such distinction. However, the nullity does not extend to the parts of contractual language that are not affected by the nullity (art. 1429 ICC) and in any case the clauses that are null can be converted into different clauses with similar effect that the parties would have wanted if they were aware of the nullity (art. 1424 ICC). All those rules should be read in the light of the license to be quite likely an unilateral act (art. 1424 ICC).

Should the disclaimer be ineffective, could a software developer be liable for damages caused by his or her software, under Italian law, in the light of the fact that his or her software is released for free (under the FOSS license)? Apart from the cases of gross negligence and willful acts, or a liability in tort (such as releasing malicious software), the answer seems negative. It is impossible to construe a contratcual liability only based on the FOSS licensing. A license is a license, a permission, therefore no obligation to deliver anything can be construed upon it. Suppose that somebody wants to integrate the software in a larger product for a particular scope, and the software is unfit to it. The integrator is then permitted and invited to do all the modifications, including the adaptations and quality assurance activities, to make sure that the combination works. There is a considerable difference between this case and a proprietary software license. In a proprietary software licensing consideration is exchanged against the delivery of software or even just against the permission to use said software, which is to be qualified a sale (art. 1471 ICC). Being a sale it bears certain statutory warranties, including that the product is free from defects that reduce its intended use (art. 1490 ICC). The same cannot apply to FOSS, which is not "sold", but just offered to public use. If there is a separate agreement, such as a software development agreement, the relationship between the client and the developer – in particular the liability for defective software – is governed by this specific contract and not by the license.

A liability cannot be construed on the basis of the product liability rules either, because the product liability would invariably arise from a defect in a physical good. This includes defects of a product that arise from incorporated software. But in this case, without a contractual link other than the license, the developer cannot reasonably be considered a "provider" under Italian product liability law. At any rate, any limitation of the product liability would be outright null in case product liability law was applicable (art. 124 of the Italian Consumers Code).

A liability based on tort would also be hard to find, and the onus would be entirely on the plaintiff. Art. 1227 of the Italian Civil Code provides that damages are not due insofar as they could be avoided using the ordinary diligence. But, more than that, it must be proved that the damage has been caused by an unlawful act (that is an act against the law and against the proper conduct that should be expected by an average subject). Now, the "exchange" between the developer and the user is of the kind "I give you the Freedoms, but code is all what you get, not a product, mind that I don’t guarantee anything". It is generally understood that because the exchange is gratuitous, the avoidance of liability flows naturally from said act (again, except the case of gross negligence) unless a warranty is expressly given – as provided by Art. 798 of the Italian Civil Code for defects of the thing which was donated, which stipulates that without an express pact the liability only arises from a willful act. All this makes particularly difficult to construe a solid case for tort liability of large proportions, especially because Art. 1225 of the Italian Civil Code limits the maximum liability to the one that could have been reasonably expected when the obligation arose.

Liability for lack of title is also a possibility. The releasing of software as FOSS by an upstream provider is an act upon which third parties might rely upon for their own downstream re-distribution. If there is a hole in the chain of title, this could result in the lower end of the chain being damaged, e.g. because of resulting litigation. Can this distributor of software demand to be indemnified by its upstream software provider which has "obfuscated" the real status of the copyright title of that particular piece of code? Such indemnification is hard to construe because there is no contractual link between the party requesting indemnification and its upstream provider. What remains, in the absence of express warranties and representation, is a non contractual liability. Certainly the licenses have no warranties and representation, rather the contrary. As we have seen in the paragraph above, a non contractual liability seems unlikely.

Any downstream developer or integrator must do its own due diligence or require other kinds of warranties and representations from its upstream — or better, do both. Indeed, providing certain levels of indemnification for FOSS is a business case for some companies.

The copyleft principle

Principle

A characteristic found in different (but not all¹²) FOSS licenses is the so-called "copyleft" principle. FOSS licenses which incorporate the copyleft principle¹³, lay down by contract that everyone in the chain of consecutive users, in return for the right of use that is assigned, needs to distribute the improvements he makes to the software and the derivative works he makes under the same conditions to other users, if he chooses to distribute such improvements or derivative works. In other words, software which incorporates copyleft FOSS, needs to be distributed in turn as copyleft FOSS. It is not possible to incorporate copyright protected parts of copyleft software in a proprietary licensed work.

Often in the common parlance "copyleft" is referred to as "virality" of the license. This wording has a pejorative implication and is misleading as to how the copyleft principle operates. The copyleft clauses imposes a condition such as "if you want to do X, then you must do Y, else you can’t do X", while this working has been mistaken with "if you do X, then you are obligated to do Y, else we I can force you to do Y ". In other words, the result of distributing derivatives of copyleft software under an incompatible outbound license, in violation of the copyleft clause, is only an infringement of the upstream license. It does not cause per se any re-licensing of the infringing work in copyleft software, unless the infringer wants to cure the violation by relicensing. In other words, the copyleft licenses are no more "infective" than proprietary ones.

We have discussed above about the difference between the effects of an obligation and of a condition in the section on enforcement and we make reference to said discussion for further details.

Validity

The question of the validity of the copyleft clause coincides with the question whether an author is able to validly lay down how derivative works need to be distributed. The answer to this question is affirmative. The author of the original work has no rights on the derivative work as a whole, but based on his rights on the original work she is able to permit or prohibit the distribution of the derivative work. A derivative work can therefore only be operated subject to the consent of the copyright owner of the original work.

An issue could in theory be raised against creating exclusive rights which are not provided by the law, as copyleft is sometimes accused of doing. But copyleft does not create any exclusive right that is not already granted by the law, rather it carves its permissions out of the existing exclusive right to authorize derivative works. Since the downstream recipient of the software must clear its derivatives vis à vis all upstream copyrights, this is either done generally and conditionally by using the copyleft license, or it is done otherwise. If and insofar as the conditions are accepted – and met – software is cleared. Otherwise software is not cleared, and clearance must be sought on an individual basis, as with any other kind of software distribution. That, by the way, is how dual (proprietary + copyleft) licensing works. Richard Stallman has dubbed this scheme as the "sale of exceptions [to a copyright license]"¹⁴.

Damages

According to Art. 158 of the Italian Copyright Law, damages caused by copyright violations are compensated under Italian law in accordance with the general principles applicable to unlawful acts (Art. 2056 and 2059 of the Italian Civil Code) and with the principles of breach of contractual obligations (artt. 1223, 1224 and 1225 of the Italian Civil Code). Those provisions establish that the damages shall be awarded in a measure sufficient to restore the economic (art 2056 ICC) and moral (art 2059 ICC) loss of the damaged party. The economic loss is calculated in terms of actual damage and loss of profit of the damaged party. Those damages are limited to the ones that were foreseeable at the time of the breach, unless the breach was made intentionally or with reckless negligence.

Dual damages, triple damages or other forms of punitive damages are not awarded under Italian law. Traditionally, these damages were considered radically incompatible with fundamental principles of Italian Law (so called "divieto di locupletazione"). However, with the introduction of TRIPS, a limited version of punitive damages (i.e., damages unrelated to the actual damage suffered) has been introduced for patent and trademark violations, under the name of "civil punishment" – for instance in the form of the assignment of the confiscated infringing products to the rightsholder. Similarly, in copyright violations an award of damages not directly related to the loss of profit and actual damage can be easily achieved through the use of moral damages (Art. 2059 of the Italian Civil Code expressly mentioned by Art. 158.3 of the Italian Copyright Lawy) and through an award equal to the profit unlawfully obtained through the violation (which profit can comprise the advantage coming from avoidance of production costs).

Infringements of software copyrights follow the same regime as infringements of every other copyright. The aforementioned principle is therefore applicable in case of copyright infringements of software. The same applies to FOSS.

One can assume that the damage to the copyright owner will be in any case very limited if existing, as the author has made his work freely available. This argument is not necessarily bound to succeed.

Besides establishing a reputation and recognition, an author can have other reasons to make his or her work “freely” available¹⁵. The author may also have a direct monetary advantage from the free distribution of his or her work. The simplest and traditional way is to add advertising to the software ("ad-ware"). Another way is by offering specific services related to the work (such as assistance, maintenance, customization, indemnification, etc.) or other products. In this later example, the free circulation of the work ensures the same has many users (or it achieves “mindshare“). The author can thus generate her income from the provision of services, or by licensing “proprietary add-ons¹⁶” (roughly this is the "open core"). Another business model is the so-called “dual licensing”l¹⁷. This model uses two different licenses. The first license is often a strong copyleft license. This first – free – license ensures the work is circulated quickly and reaches a wide range of users. A second license without the copyleft condition can then be obtained for a licensing fee by those who want to use the work in a wider application and at the same time avoiding that their own additions are affected by the copyleft conditions, which is e.g. the case of proprietary applications using FOSS libraries and components.

However, there is no straightforward theory of damages for a FOSS licensing violation. Arguably, if the program is dual-licensed, it would be easy to establish the damage as the loss of profit that the copyright holder has suffered which corresponds to what the infringer ought to pay to obtain a proprietary license. If the infringing party has obtained licensing fees as a result of the infringement, the damages could be relatively easily obtained by calculating the share of profits that have unduly been generated through the violation, using the fiction established in Art. 158 of the Italian Copyright Law. If this is not available, the judge can refer to the cost unduly avoided through the violation, as if the FOSS developer had worked for the infringer. Alternatively the cost of the next most feasible proprietary alternative to the FOSS program — that he infringer has avoided licensing thanks to the violation — can be taken into consideration. This alternative can in fact be considered an indication of the price that the infringer ought to have paid to obtain a similar licensing from the FOSS developer at the same licensing conditions (in other words, as if the product was dual licensed). The problem with this latter principle is that most of times the FOSS developer is not willing or is unable to license the software under proprietary conditions. If he or she could license, but refuses to do it on moral grounds or else, one could argue that this increases the damage instead of negating it, because the price to obtain this waiver to copyleft could be immensely high if negotiated ex-ante. If the license is not possible (e.g., because of upstream constraints, such as copyleft) again this is not a reason to negate the compensation. Obtaining through an act of "violence" the operative equivalent of a proprietary license from somebody who arguably would not agree to it because of moral motives is a morally challenging act that must be compensated by the awarding of moral damages. Moral damages can be awarded on an ex bono et aequo basis (Art. 2059, 2056 and 1226 of the Italian Civil Code), which very frequently also takes into consideration the profit made by the violator.

FOSS Cases in Italy.

No cases have been reported yet (December 2010).

Legal procedures.

In Italy the legal procedures in the field of copyright are not different in nature from the general civil cases, and a procedure for temporary relief is also available. A copyright case will be heard by one of the 11 specialized sections for industrial and intellectual property. If a case falls within the jurisdiction of a court that has no specialized sections, the jurisdiction on the whole case (even if it has other components which are not subject to this specialized jurisdiction, e.g., the interpretation of an agreement) is transferred to the specialized section on a regional basis. The court decides with a panel of three judges.

Some special investigative powers have been given to the courts, such as the power to order third parties to give informations on the origin and chain of distribution of goods¹⁸. Also the possibility to obtain the description of the infringing goods in addition to their seizure is noteworthy. A temporary or permanent enjoinder to distribute the infringing works can be obtained. The decision can order its publication in the general press at the expenses of the infringing party.

The author of the work can always join proceedings to protect his or her interest even if he or she has disposed of the economic rights on the work.

Recommended literature.

Articles:

• FLOSS: gli indirizzi europei, la normativa italiana e le leggi regionali, Chapter 3 of the book “Finalmente libero! Software libero e standard aperti per le pubbliche amministrazioni” (2007, Mac Graw-Hill) edited by Michele Marchesi, Giulio Concas, Giulio De Petra, Flavia Marzano, Pietro Zanarini
• Marco Bertani: Profili giuridici delle licenze di software libero / open source nell’ordinamento italiano, in “I quaderni di dirittodautore.it”, Anno III, n. 24, available at http://www.dirittodautore.it/quaderni.asp?mode=3&IDQ=82
• Nerina Boschiero: Le licenze F/OSS nel diritto internazionale privato: il problema delle qualificazioni, in AIDA 2004 (2005, Giuffrè)
• Marco Ciurcina, Carlo Piana: Le licenze FLOSS: stato dell’arte ed evoluzioni, Chapter 11 of the book “Il software libero in Italia” (Shake, 2009) edited by Andrea Glorioso
• Carlo Piana: Licenze pubbliche di software e contratto, in I contratti, n. 7/2006, IPSOA; available at www.piana.eu/repository/720_727.pdf
• Marco Ricolfi: Software e limitazioni delle utilizzazioni del licenziatario, in AIDA 2004 (2005, Giuffrè)
• Lele Rozza: Le principali iniziative legislative sul FLOSS, Chapter 10 of the book “Il software libero in Italia” (Shake, 2009) edited by Andrea Glorioso
• Marco Saverio Spolidoro: Open source e violazione delle sue regole, in AIDA 2004 (2005, Giuffrè)
• Vincenzo Zeno-Zencovich, Pieremilio Sammarco: Sistema e archetipi delle licenze open source, in AIDA 2004 (2005, Giuffrè)

Books:

• Simone Aliprandi: Copyleft and Opencontent. L’altra faccia del copyright (2005, PrimaOra)
• Simone Aliprandi: Apriti standard! Interoperabilità e formati aperti per l’innovazione tecnologica (2010, Ledizioni), available at www.aliprandi.org/apriti-standard
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