Anticipatory interim measures and potential conflict with the Enforcement Directive: the Court of Genoa confirms compatibility with EU law pending the Court of Justice’s ruling
Pending the interpretation that the Court of Justice will provide regarding the possible conflict between the so-called anticipatory interim measures governed by the Italian Intellectual Property Code and Enforcement directive, we would like to point out a very recent measure obtained by our Law Firm, which represents the first (or one of the first) decisions issued by a Court of first instance after the matter was remitted to the Court of Justice.
As is well known, a preliminary ruling is currently pending before the Court of Justice to assess a possible conflict between Article 132, paragraph IV, of the Intellectual Property Code, which establishes, with reference to precautionary measures suitable for anticipating the effects, an exception to the rule of the necessary introduction of proceedings on the merits, and Article 95 of the Enforcement Directive, which, in the event of failure to start subsequent proceedings on the merits, provides instead for the lapse of the effects of the “interim injunction”, comparable to the injunction referred to in Italian law.
Specifically, the Court of Genova, Business Section, with order issued on January 5, 2026, rejected the petition filed pursuant to Article 669-novies of the Italian Code of Civil Procedure aimed at declaring the ineffectiveness of an injunction due to failure to initiate subsequent proceedings on the merits, all on the assumption of a conflict between Article 132, paragraph IV, of the Intellectual Property Code and Article 9, paragraph 5, of the Enforcement Directive.
The Judge of Genova therefore confirmed the full effectiveness of the precautionary injunction, which had not been followed by the proceedings on the merits, considering convincing the reasoning of the previous decision of January 5, 2024, of the Court of Milan, according to which there is no conflict with European law, as the defendant remains in full possession of all defensive guarantees both within the precautionary proceedings themselves, through the appeal pursuant to Article 669terdecies of the Italian Code of Civil Procedure, and subsequently through its independent decision to start a proceedings on the merits (guarantees which, in the case brought before the Court of Genoa, the defendant had decided not to activate).
In essence, the Court clarified that Article 132, paragraph IV, of the Italian Industrial Property Code is compatible with the Enforcement Directive precisely because it provides that each party may initiate proceedings on the merits; in this way, the losing party is guaranteed that it can assert its case in the proceedings on the merits, with the possibility of requesting the revocation of the precautionary measure that is unfavorable to it.
This is a very encouraging measure in view of the decision of the Court of Justice since, in the opinion of the author, the injunction is undoubtedly a particularly effective deflationary tool. We can only wait for the decision of the Court of Justice.
Intellectual Property on Memes
Who among us has never received an image or photograph of a character (even a well-known one), accompanied by a caption capable of making us laugh?
Well, these elements are commonly referred to as “Memes”[1] and have the capacity to spread rapidly by mass communication media.
Beyond the communicative capacity of such Memes, one might wonder whether they receive any form of legal protection or if they are in the public domain and therefore freely usable by web users. To answer this question, it is first appropriate to understand the legal framework of Memes.
As mentioned, the Meme is nothing more than an ironic re-elaboration of an original work (usually photographic) already protected by copyright. It follows therefore that Meme - if has the degree of creativity required by copyright law - can be considered a derivative work (pursuant to Article 4 of Law no. 633 of 22 April 1941[2]), i.e. a work created on the basis of a pre-existing work.
This means that the owner of the rights on the main work - hence on the photograph or image created - will have the right to rework it and create derivative works, including Memes, and exploit them for commercial purposes.
Moreover, on the basis of the above considerations, anyone who intends to create and/or commercially exploit Memes will have to previously obtain the owner's permission of the original work, thus requesting a licence against payment of a fee.
But then one has to wonder why such Memes circulate on the web and/or via Whatsapp freely and without any licence?
As far as the European Union is concerned, the answer to this question is to be found in European Directive No. 2019/790 on Copyright in the Digital Single Market, which aims to harmonise the EU copyright framework in the field of digital technologies and in particular the Internet.
In particular, Article 17, VII paragraph, of that Directive states as follows: "Member States shall ensure that users in each Member State are able to rely on any of the following existing exceptions or limitations when uploading and making available content generated by users on online content-sharing services:
- quotation, criticism, review;
- use for the purpose of caricature, parody or pastiche”
It is therefore expressly provided that Member States may use and apply - within certain limits - exceptions allowing free use of copyright protected content via the Internet.
The ratio of the mentioned article is evidently to grant a discrete freedom for web users to share digital content, also protected by copyright, with the sole condition that such use must not even indirectly have an intent / purpose of profit, but only a satirical purpose.
In Italy, the right of satire, although not expressly provided by law, has found widespread application in case law over time[3]. The Meme can, therefore, be considered as an expression of right of satire, which, however, must be exercised within a well-defined perimeter, i.e. in the total absence of profit-making purposes.
This is because the owner of the rights over the Meme holds all the rights of economic exploitation over the work itself and, consequently, can prevent anyone from making a profit from their use. Indeed, there have been several legal actions commenced by Meme’s rights holders, especially in the United States[4].
In conclusion, due to the extremely quick digital evolution and the Internet world we are now witnessing, the outlined intervention of the European legislator can only be welcomed, which aimed at facilitating the exchange of content between Internet users and safeguarding their freedom of expression.
This European directive seems to have managed for the time being in properly balancing the freedom of expression of web users and the protection of copyright. We hope, in this regard, that the national legislator will follow this direction.
[1] “Digital memes are viral content that can monopolise the attention of users on the web. A video, a drawing, a photo becomes a meme when its "replicability", which depends on its ability to arouse an emotion, is maximised.” This is the definition of “Meme” provided by “Treccani” Dictionary.
[2] "Without prejudice to the existing rights on the original work, the elaborations of a creative character of the work itself, such as translations into another language, transformations from one into another literary or artistic form, modifications and additions constituting a substantial remake of the original work, adaptations, reductions, compendia, variations not constituting an original work, are also protected."
[3] Supreme Court no. 23144/2013: [...] satire constitutes a corrosive and often merciless modality of the right to criticism and can also be realised by means of the artistic image, as in the case of cartoons or caricatures, consisting in the conscious and accentuated alteration of the somatic, moral and behavioural features of the persons depicted. It differs from the chronicle in being removed from the parameter of truth in that it expresses, by means of paradox and surreal metaphor, an ironic judgement on a fact, remaining subject to the limit of continence and functionality of the expressions or images with respect to the purpose pursued. In the formulation of the critical judgment, expressions of any kind may therefore be used, even those damaging to the reputation of others, provided that they are instrumentally linked to the manifestation of a reasoned dissent from the opinion or conduct targeted and do not result in a gratuitous and destructive attack on the honor and reputation of the person concerned."
[4] Recalled in this regard is the case of Pepe the Frog, a cartoon character created by cartoonist Matt Furie. The author sued the website Infowars and its owner in 2014 for having used the image for the purpose of creating memes with a sexist, xenophobic and even racist background. Furie was awarded $15,000 in compensation in 2019.