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Drones use in enforcement strategy: a new caselaw to strike infringement down

By Emanuela Truffo.-

A right does not really exist if it cannot be enforced and to enforce a right one needs to build a case. Speaking of which, no matter the jurisdiction to be dealt with, building a case means basically gathering evidence.

Any practitioner knows very well that information turns into evidence as long as it enjoys the legal requirements set by the procedural rules approved by the lawmakers to grant a due process; in a nutshell, granting the so-called Rule of the Law.

And PBRs is not an exception. Nobody could argue that if you want to bring a case to Court you need to gather evidence proving:

- The existence and enforceability of your PBR;

- The existence of an infringement;

- The damages to be compensated.

In the largest majority of legal frameworks belonging to the UPOV system, pre-trial investigations are the main interim relief proceedings granting the chance to the PBR's owner to get access to the place of businesses and accounting books of the alleged infringer. In other words, a pre-trial investigation is the only way a PBR's owner could have legitimately and legally access to evidence paramount to bringing a case to Court.

Andreas Dress - Unsplash

New technology is day by day substituting the traditional way of investigation. Recently, the Court of Bari has opened a new path to enforce PBRs in Italy. In late fall 2021, this Court was required to decide whether or not a pre-trial investigation order could be granted ex parte relying on a drone investigation. To make a long story short, the PBR's owner deployed drones to take pictures of the vineyard where it thought its own variety had been propagated without its prior authorization.

The investigation carried out through drones was considered admissible evidence by the Court of Bari that granted an ex parte order by means of which the plaintiff got access to the defendant's vineyards.

Of course, a drone investigation is legally acceptable as long as it is carried out by a P.I. agency duly authorized by the local authority. With such authorization, we can call the deployment of drones an investigation finalized to gather evidence to be submitted to Court. Without, it is trespassing.

Relying on the ex parte order, a technical assessment was handled by an expert witness appointed by the Court. Since the pre-trial investigation concerned a PBR infringement, in its very core the technical assessment coincided with the proper sampling of biological material and the following DNA test. In order to grant each party right to get a proper defense – thus respecting the due process principle - both plaintiff and defendant were authorized by the Court to submit the samples picked by the expert witness to a DNA test hiring their own lab. In a nutshell, each sample picked up is divided in three parts.

The choice made by the Court of Bari granted the full respect of both principles of due process and rules of the law. Of course, the DNA test report filed by the Court technical expert and the parties were examined by the Court and were paramount elements to deciding the case.

After almost four months from the opening of the case, the Court of Bari issued order:

- Confirming the pre-trial investigation order thus crystallizing the evidence gathered through the technical assessment on which the plaintiff we rely on to start the action on the merits;

- Restricting the growing, harvesting and commercialization of the grapes.

Obviously, it is not the first time that drones have been used in gathering information and evidence related to the PBR infringement, in Italy or in other corners of the globe. What is very likely to open new scenarios in PBR infringement, at least in Italy, is the fact that for the first time a drone investigation has been considered as the pillar for granting an ex parte order. Basically, the pictures taken by drones let the plaintiff develop – and submit to Court – a morphological comparison between patented variety and propagated vines, thus justifying the necessity to go further in seeking a DNA test, despite doing this meant getting access to the defendant’s place of business.

Furthermore, the restrictive order granted by the Court of Bari imposes an immediate interruption of any kind of activity different from the mere “maintenance” of vines until the end of the action on the merits. In a nutshell, the defendant - unless the 1st tier interim decision is stricken down in the appeal case - will have to refrain itself from doing nothing but keeping alive its vines, until the issue of first tier decision of the action on the merits.

Another piece in the enforcement strategy puzzle. And good news, indeed.

© Emanuela Truffo – partner at Studio Legale Jacobacci E Associati

CV ET - En.doc
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