ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
an AI system or any automated digital tool to access or exfiltrate trade secrets, the aggravated penalty under Article 623 (3) of the Criminal Code will apply. Alongside criminal proceedings, a trade secret owner can pursue civil claims under the CPI or Civil Code, seeking compensation for damages and requesting injunctions to prevent further misuse, thus allowing for a comprehensive approach to trade secret protection. 1.15 Extraterritoriality It is possible to bring a claim based on trade secret misappropriation that occurs in another country, but the requirements for such a claim depend on several factors, including jurisdiction and applicable laws. Specifically, in cases where the misappropriation of trade secrets occurs in another country, the first issue is jurisdiction – namely whether an Italian court has the authority to hear the case. Generally, a claimant must demonstrate a connection between the alleged misappropriation and Italy, and this connection can be established through: • the defendant’s activities in Italy, such as conduct - ing business, selling goods or otherwise interacting with the Italian market; • the harm caused in Italy – for instance, if the trade secret misuse negatively impacts an Italian busi - ness or causes damage to Italian assets or reputa - tion; and/or • agreements with jurisdiction clauses (if there is a contractual agreement that designates Italian courts as having jurisdiction over disputes related to trade secret protection, this can also create a basis for pursuing a claim in Italy). Even if a claim is brought before an Italian court, the court must determine which country’s laws apply, analysing the conflict of laws rules. As a member of the EU, Italy follows the EU Trade Secrets Directive (Directive (EU) 2016/943), which harmonises trade secret protection across member states. However, if misappropriation occurs outside the EU, Italian courts may apply Italian law if the harm is significant in Italy or if the parties have strong ties to
Italy, or they may apply the laws of the country where the misappropriation took place.
2. Misappropriation of Trade Secrets 2.1 The Definition of Misappropriation In Italy, the requisite elements for a claim of trade secret misappropriation are: • the existence of a trade secret, defined by its con - fidentiality, economic value and the owner’s efforts to protect it; and • unlawful access to the trade secret, which does not necessarily require actual use but simply unau - thorised access. Therefore, a trade secret owner does not need to prove the actual use of the trade secret by the defendant, but must establish that the defendant gained access to the trade secret without permission. The absence of permission implies that the trade secret holder has to prove that the defendant gained access against their will through unlawful means, such as breach of contract, espionage or theft. In the CPI, there is a prohibition against the acquisition, disclosure to third parties, or misuse of trade secrets, unless they have been independently obtained. Fur - thermore, the CPI states that the use or disclosure of a trade secret is also considered unlawful if a person knew or, under the circumstances, should have known that the trade secret had been obtained directly or indirectly from a third party who used or disclosed it unlawfully. 2.2 Employee Relationships In Italy, the elements of a trade secret misappropria - tion claim remain consistent, regardless of whether the alleged misappropriation involved an employee or another party. Employees are bound by a duty of loyalty under Article 2105 of the Italian Civil Code, which prohibits them from disclosing or misusing their employer’s confi - dential information during their employment. Breach of this duty occurs when an employee steals trade secrets or uses them for personal gain, independently
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