ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
Furthermore, it is possible to bring claims relating to trade secrets that do not directly rely on misappropria - tion but are based on other legal principles, such as breach of fiduciary duty or tortious interference. • Employees have a fiduciary duty under Article 2105 of the Civil Code to act loyally towards their employer, prohibiting the disclosure or misuse of confidential information, including trade secrets (see 2.2 Employee Relationships ). • Article 2596 of the Italian Civil Code permits agree - ments that limit competition, provided they are confined to a specific area, activity and duration not exceeding five years, to protect confidential information post-relationship. • Moreover, employers may face legal action for unfair competition if they induce disloyal employ - ees to disclose trade secrets, as prohibited by Arti - cle 2598 of the Italian Civil Code. The trade secret owner can seek an injunction to stop unlawful use, compensation for damages, and publication of the judgment to restore their reputation. • Additionally, under Article 2043 of the Civil Code, the employer who encouraged the violation can be held liable for tortious acts if their intentional or negligent behaviour caused concrete harm to the competitor. In this context, it is crucial to prove the causal link between the wrongful conduct and the damage suffered, thereby ensuring effective protection of trade secrets and fair competition in the market. • Finally, the general principles of good faith and fair dealing in the performance of contracts and the duty of solidarity arising from so-called social con - tact ( contratto sociale ) also come into play. These claims often complement trade secret misap - propriation cases and provide additional legal rem - edies. 1.14 Criminal Liability In Italy, criminal penalties can be imposed for trade secret misappropriation if the misappropriation involves theft, illegal acquisition, or use of trade secrets. The relevant provisions for criminal penalties are found in the Italian Criminal Code ( Codice Penale ). Articles 622 and 623 of the Italian Criminal Code gov -
ern crimes related to the disclosure and unlawful use of professional and business secrets. Article 622 imposes a criminal sanction on anyone who, having gained access to confidential informa - tion within the context of employment or a position of trust, discloses or uses it without authorisation, caus - ing harm to the owner of the secret. This crime is pun - ishable by up to one year of imprisonment or a fine. Article 623 imposes a more severe penalty on anyone who knowingly steals, discloses or uses a trade secret in violation of confidentiality or fiduciary duties. This offence is punishable by up to two years of imprison - ment, along with a potential fine. It is worth noting that under the Criminal Code trade secret protection is alternatively granted when: • knowledge of confidential information is obtained through professional relationships (by reason of one’s state or office, or profession or art), the con - fidential information is disclosed without due cause for personal or a third party’s profit, and this disclo - sure causes damage to the trade secret owner; or • knowledge of confidential information is unauthor - ised, the confidential information is disclosed with - out due cause for personal or a third party’s profit, and this unauthorised disclosure causes damage to the trade secret owner. In addition, there is a specific rule that punishes the disclosure of scientific and industrial secrets through “technological” means (see Article 623, paragraph 3 of the Criminal Code), which states that anyone who, having become aware, by reason of their state or office, or their profession or art, of trade secrets or news intended to remain secret, concerning scientific discoveries or inventions, reveals them or uses them for their own or others’ profit, shall be punished by imprisonment of up to two years. Moreover, if the act relating to trade secrets is committed using any com - puter tool, the punishment is increased. The aforementioned aggravated offence is of grow - ing practical relevance, considering the widespread adoption of AI-based tools capable of systematically extracting, processing and transmitting large volumes of confidential data at scale. Where a perpetrator uses
91
CHAMBERS.COM
Powered by FlippingBook