The Italian Supreme Court's Providus Judgment

I mentioned this decision (Providus S.r.l. v. Guibert Express S.a. et al.) earlier this year, following a post on the EPLaw Blog by Giulia Pasqualetto with a link to the decision in the original Italian.  The August 2022 issue of IIC:  International Review of Intellectual Property and Competition Law includes an edited English-language translation of the decision by Marco Bellia.  Providus sued Guilbert and another party, co-owners of EP 1406041 ("Security Device for Puncturable Cartridge").  Providus claimed the patent was invalid, and the defendants counterclaimed for infringement.  The trial court found for the defendants-counterclaimants, and awarded injunctive relief and an award of Providus' profits.  The Court of Appeal affirmed, and the Supreme Court (Corte Suprema di Cassazione) affirms the Court of Appeal.  Specifically, the Supreme Court holds that a recovery of profits under article 125(3) of Italy's Industrial Property Code (IPC) is available even in the absence of (1) proof of compensable harm such as lost profits, and (2) fault on the part of the infringer.  In reaching this conclusion, the court refers to article 125(3) as introducing "a sui generis remedy, of a restitutory nature, inspired by a combined logic, in part compensatory and in part dissuasive and a deterrent."  The court states further that this provision goes beyond what would strictly be necessary to comply with IPRED article 13; the latter requires only that member states take into account, in awarding damages for actual prejudice  caused by a knowing infringer, "all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer," and permits (but does not require) member states to award damages or profits for innocent infringement.  The court rejects the argument that article 125(3) should be read in light of article 158 of the Italian Copyright Law, which more closely tracks article 13 of IPRED.

As I stated in my earlier post on this case, while the Court's decision may well be correct as a matter of statutory interpretation, I think it is problematic (that is, potentially over-deterrent) to award the infringer's profits in the absence of fault.