ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
1.5 Reasonable Measures Under Italian law, trade secrets must be subject to reasonable measures by their holder to maintain their confidentiality, as this is one of the key criteria for legal protection. The reasonableness of the measures is assessed on a case-by-case basis, considering the nature of the information, its economic value, the industry stand - ards and the context in which the information is han - dled. Courts typically evaluate whether the measures were sufficient to effectively limit access to the trade secret and whether they demonstrated a genuine intent to preserve its confidentiality. The types of measures already recommended by Article 32 of the General Data Protection Regulation (GDPR) can serve as a good starting point, particu - larly with the appropriate adoption of internal codes of conduct. For example, Italian courts have stated that limiting access to sensitive information, which is properly identified and marked, to employees or con - tractors on a need-to-know basis and requiring them to sign NDAs or confidentiality clauses are considered reasonable measures. On the other hand, leaving sensitive information in easily accessible locations (such as unprotected fold - ers on shared drives or unlocked offices), and sharing trade secrets with a broad audience without imposing confidentiality obligations or ensuring secure channels of communication, have been deemed unreasonable or insufficient measures. The concept of reasonable measures in protecting trade secrets is inherently relative and depends on whether the measures reflect the importance of the information, the risks of disclosure, and the norms and common practices within the specific industry. 1.6 Disclosure to Employees Generally speaking, in Italy the disclosure of a trade secret to employees or subcontractors does not jeop - ardise its protection, provided the security measures mentioned in 1.5 Reasonable Measures are duly observed and the disclosure is limited to specific employees in proportion to their specific role and
tasks within the enterprise, subject to the previously mentioned security measures. 1.7 Independent Discovery In accordance with Article 3 of the Trade Secrets Direc - tive, independent discovery (paragraph a) or obser - vation, study, disassembly or testing of a product or object that has been made available to the public or that is lawfully in the possession of the acquirer of the information who is under no legally valid obligation to limit the acquisition of the trade secret (paragraph b), are considered lawful. In contrast, Article 4.3, letter (c) specifies that the “breach of a contractual or any other duty to limit the use of the trade secret” is unlawful. Article 5.3 of the Copyright Directive 2009/24 states that “[t]he person having a right to use a copy of a com - puter program shall be entitled, without the authorisa - tion of the right holder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do”. Furthermore, Recital 14 clarifies that “[a] person hav - ing a right to use a computer program should not be prevented from performing acts necessary to observe, study or test the functioning of the program, provided that those acts do not infringe the copyright in the program”. This principle is fully confirmed by the ECJ decision of 2 May 2012, C-406/2010. The Italian provisions contained in Article 64-ter of the Italian Copyright Law are fully compliant with the foregoing, stating: “The person who has the right to use a copy of the computer program may, without the authorisation of the rights holder, observe, study or test the operation of the program, for the purpose of determining the ideas and principles on which each element of the program itself is based, if he performs such acts during operations of loading, displaying, executing, transmitting or storing the program which he has the right to execute. Contractual clauses agreed upon in violation of this paragraph and para - graph 2 shall be null and void”.
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