The IP Chamber of the Rome District Court issued an interesting summary judgment order concerning the protection of a database maker’s sui generis rights.

An Italian company providing an online searchable archive of judicial auctions – a strictly regulated activity in Italy – had applied for an urgent ex parte injunction against a local real estate consulting company, claiming that the defendant had extracted watermarked documents and pictures from the applicant’s archive, reconstituting part of its database on the applicant’s own website and on third-party portals. Before uploading the extracted contents to its own database, the defendant had also tried to remove the applicant’s watermark from them.  

The Court found that the applicant had provided sufficient prima facie evidence that the auctions online database was the result of considerable investments in financial, technical, and human resources, thus qualifying for sui generis right protection under the Italian Copyright Act.

With regard to infringement, the Court cited the Italian Copyright Act which implements, among others, Directive 96/9 on the legal protection of databases.  This prohibits the repeated and systematic extraction or re-utilisation of even insubstantial parts of a database, in conflict with the normal use of that database or where its usage causes an unreasonable prejudice to the maker of the database.

In the Court’s view, the re-use by the defendant of contents taken from the applicant’s database did indeed cause the latter an unjustified prejudice by disrupting fair competition on the real estate market; particularly, by causing confusion as to the source of the data and by allowing the defendant to appropriate the result of the applicant’s investments, thereby enjoying an unfair competitive advantage.

In support of its reasoning, the Court cited the ECJ’s Innoweb ruling (case C-202/12), where the Court of Justice provided a broad interpretation of the concept of “re-utilisation”, clarifying that it covered any act of making available to the public, without the consent of the database maker,  the results of its investment, thereby depriving it of revenue which should enable it to redeem the cost of that investment.

As regards danger of irreparable harm – which, under Italian civil procedure law, is a requisite to grant urgent remedies – the Court ruled that any conducts hindering free competition in the market, especially if characterised by the infringement of IP rights, inherently cause a not easily amendable alteration of the market and of competition in general, through the strengthening of players who operate unlawfully.

On these grounds, the Court issued an ex parte preliminary injunction, ordering the defendant to remove from its database the contents extracted from the applicant’s database and enjoining it from further acts of re-utilisation.

At the confirmation hearing, the defendant pleaded that the parties were not competitors, as the applicant made its revenues in the public sector, whereas the defendant offered its services in the private one.

This argument was dismissed by the Court on the grounds that both parties operated in the broader real estate auction market and that either could easily penetrate the other’s market, making them at least potential competitors.

The Court, therefore, confirmed the ex parte injunction and ordered the defendant to pay court and legal fees.

No appeal was lodged against the decision, which is thus final unless it is overturned in full merits proceedings.