Transcript NATIONAL WORKSHOP ON ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS FOR JUDGES organized by the World Intellectual Property Organization (WIPO) in cooperation with the Albanian Copyright Office.

NATIONAL WORKSHOP ON ENFORCEMENT OF
INTELLECTUAL PROPERTY RIGHTS FOR JUDGES
organized by
the World Intellectual Property Organization (WIPO)
in cooperation with
the Albanian Copyright Office (ACO)
Tirana, June 14 and 15, 2012
European Union Norms on Enforcement of Intellectual
Property Rights
Dr. Mihály Ficsor
Chairman, Central and Eastern European
Copyright Alliance (CEECA)
I. GENERAL OBLIGATIONS ON
ENFORCEMENT IN THE
INTERNATIONAL TREATIES AND
THE EU DIRECTIVE
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Berne Convention and Rome Convention
• In the Berne Convention, only Articles 15, 16 and Article 36 may be
regarded as covering certain issues of enforcement. Article 15,
however, only provides for presumptions on who may institute
infringement procedures and Article 16 just on seizure of infringing
copies. It is Article 36 which addresses the other aspects of
enforcement, but it does so only in the following very general way:
(1) Any country party to this Convention undertakes to adopt, in
accordance with its constitution, the measures necessary to ensure the
application of this Convention.
(2) It is understood that, at the time a country becomes bound by this
Convention, it will be in a position under its domestic law to give effect to
the provisions of this Convention.
• Article 26 of the Rome Convention contains a provision similar to
Article 36 of the Berne Convention.
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Phonograms Convention and
Satellites Convention
• The 1971 Phonograms Convention and the 1974 Satellites Convention
differ to a certain extent from the Berne Convention and the Rome
Convention. The difference does not consist in the level of details of
the relevant obligations of the contracting parties, but rather in two
aspects. First, that these two Conventions may be characterized as
anti-piracy treaties to fight phonogram piracy and programmecarrying signal piracy, respectively. Secondly, that their quite few
substantive provisions provide for performance obligations in the
sense that they obligate the contracting parties to provide adequate
protection against the relevant piratical acts but they leave very broad
freedom to the parties how to achieve this result.
• See Articles 2 and 3 of the (Geneva) Phonograms Convention and
Article 2 of the (Brussels) Satellites Convention.
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TRIPS Agreement (1)
•
•
The detailed enforcement provisions in Part III (Articles 41 to 61) of the TRIPS
Agreement on enforcement represent an important new dimension of the
protection of intellectual property rights is composed of five sections. Article 41
contains “General Obligations”, while the rest of the articles provide for specific
obligations concerning “Civil and Administrative Procedures and Remedies”
(Articles 42 to 49), “Provisional Measures” (Article 50), “Special Requirements
Related to Border Measures” (Articles 51-60), and “Criminal Procedures” (Article
61).
As regards “General Obligations,” TRIPS Article 41 is not only the broadest but
also the most important provision of Part III. It contains the most general
obligation that enforcement procedures must be made available by any Member
"so as to permit effective action against any act of infringement, including
expeditious remedies to prevent infringements and remedies which constitute a
deterrent to further infringement."
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TRIPS Agreement (2)
Fair and equitable procedures
TRIPS Article 42 WTO Members must make available to right holders
civil judicial procedures concerning the enforcement of any
intellectual property right covered by the Agreement. It contains
provisions that do not only ensure efficient measures against infringers
but also guarantees fair procedure for all interested parties. The
Article states, inter alia, that the procedures must not impose overly
burdensome requirements concerning mandatory personal
appearances, and that all parties must be duly entitled to
substantiate their claims and to present all relevant evidence.
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WIPO „Internet Treaties”
(WCT and WPPT)
Article 14 of the WIPO Copyright Treaty (WCT) and Article 23 of the WIPO
Performances and Phonograms Treaty (WPPT) bear the title of Provisions on
Enforcement of Rights, and they contain the following identical provisions:
(1) Contracting Parties undertake to adopt, in accordance with their legal
systems, the measures necessary to ensure the application of this Treaty.
(2) Contracting Parties shall ensure that enforcement procedures are
available under their law so as to permit effective action against any act of
infringement of rights covered by this Treaty, including expeditious
remedies to prevent infringements and remedies which constitute a
deterrent to further infringements.
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EU Enforcement Directive
Directive 2004/48/EC of the European Parliament and of the Council of
29 April 2004 on the enforcement of intellectual property rights
• Article 3. General obligation
• 1.Member States shall provide for the measures, procedures and
remedies necessary to ensure the enforcement of the intellectual
property rights covered by this Directive. Those measures, procedures and
remedies shall be fair and equitable and shall not be unnecessarily
complicated or costly, or entail unreasonable time-limits or unwarranted
delays.
• 2.Those measures, procedures and remedies shall also be effective,
proportionate and dissuasive and shall be applied in such a manner as to
avoid the creation of barriers to legitimate trade and to provide for
safeguards against their abuse.
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II. SPECIFIC ENFORCEMENT
PROVISIONS OF THE TRIPS
AGREEMENT AND
THE EU DIRECTIVE
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Evidence (1)
•
•
Evidence
TRIPS Article 43(1): where evidence that is likely to be important for one party is in the
possession of the opposing party (such as invoices, shipping documents, and other
information which may be needed for proving certain facts and establishing damages),
courts must be empowered, provided that certain conditions are met, to order that
party to produce the evidence.
Article 6.1 of the EU Enforcement Directive of 2004 includes the same sort of provision
and, in addition, this one: “For the purposes of this paragraph, Member States may
provide that a reasonable sample of a substantial number of copies of a work or any
other protected object be considered by the competent judicial authorities to
constitute reasonable evidence.” Whenever there is a relatively bigger number of
suspected infringing copies, it must not be necessary to prove the infringing nature of
all of them, or even a great number of them; it must be sufficient to prove that
infringing copies are involved on the basis of the review of a reasonable sample
consisting of a relatively smaller number of copies.
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Evidence (2)
Evidence (Contd)
•
TRIPS Article 43(2): where a party, without good reason, refuses to produce
evidence, or significantly impedes a procedure relating to an infringing action, a
WTO Members may accord courts the authority to make preliminary and final
determinations on the basis of the information presented to them, subject to the
condition that the parties must have an opportunity to be heard.
•
Article 6.2 of the EU Enforcement Directive provides for a measure in respect of
evidence that is not covered by the TRIPS norms. In the case of infringements
committed on a commercial scale, it obligates Member States to take such
measures as are necessary to enable the competent judicial authorities to order,
where appropriate, on application by a party, the communication of banking,
financial or commercial documents under the control of the opposing party,
subject to the protection of confidential information.
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Injunctions (1)
Injunctions
•
TRIPS Article 44(1): courts must have the authority to order injunctions; that
is, to order a party to desist from infringements, including the possibility to
prevent imported infringing goods from entering into domestic distribution
channels. Under this provision, the injunctions apply to infringements that
have already commenced. There is another type of injunctions that can be
used to prohibit a party from even beginning any infringing activity (see TRIPS
Article 50 below).
•
EU Enforcement Directive, Article 9.1(a) provides for such injunctions. It
includes a further provision on injunctions against intermediaries whose
services are used by third party infringers, which is particularly helpful for
fighting online piracy (for the text of the provision, see the next slide).
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Injunctions (2)
Injunctions (Contd)
•
EU Enforcement Directive; Article 9.1(a): „ Member States shall ensure that,
where a judicial decision is taken finding an infringement of an intellectual
property right, the judicial authorities may issue against the infringer an
injunction aimed at prohibiting the continuation of the infringement. Where
provided for by national law, non-compliance with an injunction shall, where
appropriate, be subject to a recurring penalty payment, with a view to ensuring
compliance. Member States shall also ensure that rightholders are in a position to
apply for an injunction against intermediaries whose services are used by a
third party to infringe an intellectual property right, without prejudice to Article
8(3) of Directive 2001/29/EC.
•
Article 8(3) of Directive/29/EC of 2001 – the Information Society (Copyright)
Directive – : “Member States shall ensure that rightholders are in a position to
apply injunction against intermediaries whose services are used by a third party
to infringe a copyright or a related right.”
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Damages (1)
Damages
TRIPS Article 45:
 courts must have the authority to order the infringer to pay the owner of rights
damages adequate to compensate for the injury the owner of rights has suffered
(the compensation must be adequate to avoid the possibility of simple “cost and
benefit” calculations by the infringers);
 must also have the authority to order the infringer to pay the expenses of the
owner of rights; this may [in fact, should] also include appropriate attorney's fees;
 WTO Members may also authorize courts to order recovery of profits and/or
payment of pre-established damages, even in cases of innocent infringement. The
system of "pre-established damages" – so-called "statutory damages" – is an
efficient enforcement means. Statutory damages make it possible to get rid of the
burden of proving actual damages and to guarantee truly adequate
compensation.
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Damages (2)
Damages (Contd)
Article 13 of the EU Enforcement Directive:
„1. Member States shall ensure that the competent judicial authorities, on application
of the injured party, order the infringer who knowingly, or with reasonable grounds to
know, engaged in an infringing activity, to pay the rightholder damages appropriate to
the actual prejudice suffered by him/her as a result of the infringement. When the
judicial authorities set the damages:
(a) they shall take into account 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, in appropriate cases, elements other than economic
factors, such as the moral prejudice caused to the rightholder by the infringement; or
(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump
sum on the basis of elements such as at least the amount of royalties or fees which
would have been due if the infringer had requested authorisation to use the
intellectual property right in question.
„2. Where the infringer did not knowingly, or with reasonable grounds know, engage
in infringing activity, Member States may lay down that the judicial authorities may
order the recovery of profits or the payment of damages, which may be preestablished.”
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Seizure and destruction
•
•
Seizure and destruction
TRIPS Article 46: courts must have the authority to order infringing goods to be disposed of
outside the channels of commerce, or, where constitutionally possible, destroyed. Also, it
must be possible to dispose of materials and instruments predominantly used in the
production of the infringing goods (subject to the principle of proportionality).
Article 10 of the EU Enforcement Directive: Without prejudice to any damages due to the
right holder by reason of the infringement, and without compensation of any sort, Member
States must ensure that the competent judicial authorities may order, at the request of the
applicant, and subject to the principle of proportionality, that appropriate measures be
taken with regard to goods that they have found to be infringing an intellectual property right
and, with regard to materials and implements principally used in the creation or manufacture
of those goods. Such measures must include: (a) recall from the channels of commerce; (b)
definitive removal from the channels of commerce; or (c) destruction. Unless particular
reasons are invoked for not doing so, these measures must be carried out at the expense of
the infringer.
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Right of information
•
•
Right of information
TRIPS Article 47: Infringers may be ordered to inform right holders of the identity of
persons involved in the production and distribution of the infringing goods and of their
channels of distribution.
Article 8 of the EU Enforcement Directive:
Member States shall ensure that…the competent judicial authorities may order that
information on the origin and distribution networks of the goods or services which
infringe an intellectual property right be provided by the infringer and/or any other
person who:
(a) was found in possession of the infringing goods on a commercial scale;
(b) was found to be using the infringing services on a commercial scale;
(c) was found to be providing on a commercial scale services used in infringing activities; or
(d) was indicated by the person referred to in point (a), (b) or (c) as being involved in the
production, manufacture or distribution of the goods or the provision of the services.
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Provisional measures (1)
Provisional measures
•
TRIPS Article 50(1): courts must have the authority to order prompt and
effective provisional measures in order to: (a) prevent infringements from
occurring, and in particular to prevent infringing goods from entering the
channels of commerce; and (b) preserve relevant evidence in regard to the
alleged infringement.
•
Paragraph (2) of the same article: courts must have the authority to order
provisional measures inaudita altera parte (also known as "ex parte"); that
is, without hearing previously the alleged infringer, where any delay is likely
to cause irreparable harm to the right holder, or where there is a
demonstrable risk that evidence might be destroyed. (This allows right holders
to surprise infringers, without giving them the opportunity to hide or
destroy evidence. In the case of computer piracy, where infringing software
can be deleted within seconds without any trace left behind, the application of
such a measure is indispensable.)
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Provisional measures (2)
Provisional measures (Contd)
Article 7 of the EU Enforcement Directive contains provisions in accordance with the
TRIPS Agreement. The measures may include the detailed description, with or
without the taking of samples, or the physical seizure of the infringing goods, and, in
appropriate cases, the materials and implements used in the production and/or
distribution of these goods and the documents relating thereto.
Those measures must be taken, if necessary without the other party having been
heard, in particular where any delay is likely to cause irreparable harm to the right
holder or where there is a demonstrable risk of evidence being destroyed. The article
also includes appropriate guarantees against the possible misuse of such a measure.
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Provisional measures (3)
Provisional measures (Contd)
Article 9 of the Enforcement Directive implements the TRIPS Agreement concerning ex parte
searches, but it also provides for the following measures:
(a) issuing against the alleged infringer an interlocutory injunction intended to prevent any
imminent infringement of an intellectual property right, or to forbid, on a provisional basis the
continuation of the alleged infringements of that right; an interlocutory injunction may also be
issued, under the same conditions, against an intermediary whose services are being used by a
third party to infringe an intellectual property right; on the understanding that injunctions
against intermediaries whose services are used by a third party to infringe a copyright or a
related right are covered by Directive 2001/29/EC (the Information Society (Copyright)
Directive);
(b) ordering the seizure or delivery up of the goods suspected of infringing an intellectual
property right so as to prevent their entry into or movement within the channels of commerce;
(c) in the case of an infringement committed on a commercial scale, where the injured party
demonstrates circumstances likely to endanger the recovery of damages, ordering the
precautionary seizure of the movable and immovable property of the alleged infringer,
including the blocking of his/her bank accounts and other assets; and to that end ordering the
communication of bank, financial or commercial documents, or appropriate access to the
relevant information.
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Border measures (1)
Border measures – TRIPS Article 51 to 60, main elements:
 Coverage of provisions: counterfeit pirated copyright goods; footnote 14 to Article 51:
"’pirated copyright goods’ shall mean any goods which are copies made without the
consent of the right holder or person duly authorized by the right holder in the country of
production and which are made directly or indirectly from an article where the making of
that copy would have constituted an infringement of a copyright or a related right under
law of the country of importation.”
 Evidence and description to be provided by the right holders. Under Article 52, any right
holder wishing to initiate procedures to suspend release of goods by customs authorities is
required to provide adequate evidence to make a prima facie indication of an infringement
of his intellectual property right. The right holder must also provide a sufficiently detailed
description of the infringing goods so that customs officials can readily recognize them. The
obligation of the right holder to make a prima facie indication of copyright infringement, of
course, does not mean that the right holder must prove his case beyond a reasonable doubt.
 Security or equivalent assurance must be provided by the owner of rights (Article 53).
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Border measures
Border measures – TRIPS Article 51 to 60
•
Article 54: the importer and the applicant must be promptly notified of the
suspension of the release of goods.
•
Article 55: if, within a period not exceeding ten working days after the applicant
has been served notice of the suspension, the customs authorities have not been
informed that proceedings leading to a decision on the merits of the case have
been initiated by a party other than the defendant, or that the duly empowered
authority has taken provisional measures prolonging the suspension of the
release of the goods, the goods must be released, provided that all other
conditions for importation or exportation have been complied with. The time-limit
may be extended by another ten working days. If proceedings leading to a
decision on the merits of the case have been initiated, a review, including a right
to be heard, must take place upon request of the defendant with a view to
deciding, within a reasonable period, whether these measures should be
modified, revoked or confirmed.
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Border measures (3)
•
•
•
•
•
Border measures – TRIPS Article 51 to 60, main elements (contd):
Article 56: appropriate compensation to be paid by the applicant for any injury caused by
any wrongful detention of goods.
Article 57: Both the right holder and the importer must be given the opportunity to inspect
any goods detained by customs authorities, to evaluate the merits of the right holder's
claims. Upon a determination that the suspended goods are infringing, the right holder may
[in fact, should] be notified by the competent authorities of the names and addresses of
the consignor, the importer, and the consignee and of the quantity of the goods in
question.
Article 58: Where customs authorities are authorized to act upon their own initiative to
suspend the release of goods because prima facie evidence exists that an intellectual
property right is being infringed, they may call upon the right holder at any time to provide
information to assist them. (It is justified to prescribe such ex officio action of customs
authorities under these circumstances, since stopping infringing goods at the border is one
of the most efficient measures against piracy.)
Article 59 requires competent authorities to be authorized to dispose of infringing goods
outside the channels of commerce or to order their destruction in accordance with the
principles set out in Article 46.
Article 60: Small quantities of infringing goods of a non-commercial nature contained in a
traveler's personal luggage, or sent in small consignments, may be excluded from these
procedures (de minimis import).
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III. PROVISIONS IN THE TRIPS
AGREEMENT – BUT NOT IN THE EU
DIRECTIVE
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Criminal sanctions (1)
Criminal sanctions
• TRIPS Article 61: WTO Members must foresee for criminal procedures and penalties to be
applied at least in cases of willful trademark counterfeiting or copyright piracy on a
commercial scale. Members are free to provide protection for infringement against other
types of intellectual property (such as patent, layout designs) or for different levels of
infringement (such as not willful infringements or infringements not on a commercial scale).
• Infringements on a commercial scale do not necessarily mean infringements for
commercial purposes. The provision for and application of criminal procedures and penalties
are also necessary where the volume (the scale) of an infringing activity, even if performed
without commercial purposes, is such as that it undermines the chance of copyright
owners to normally exploit their rights.
• The penalties must include imprisonment and/or monetary fines sufficient to provide a
deterrent, consistently with the level of penalties applied for crimes of a corresponding
gravity (such as theft). In appropriate cases, the available measures must also include the
seizure, forfeiture and destruction of infringing goods, as well as of any materials and
implements the predominant use of which has been the perpetration of the offence.
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Criminal sanctions (2)
Footnote 14 to Article 51 of the TRIPS Agreement:
For the purposes of this Agreement: (a) “counterfeit trademark goods” shall mean
any goods, including packaging, bearing without authorization a trademark which is
identical to the trademark validly registered in respect of such goods, or which cannot
be distinguished in its essential aspects from such a trademark, and which thereby
infringes the rights of the owner of the trademark in question under the law of the
country of importation;
(b) “pirated copyright goods” shall mean any goods which are copies made without
the consent of the right holder or person duly authorized by the right holder in the
country of production and which are made directly or indirectly from an article where
the making of that copy would have constituted an infringement of a copyright or a
related right under the law of the country of importation.
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Criminal sanctions (3)
World Trade Organisation (WTO), Panel Report, China – Measures
Affecting the Protection and Enforcement of Intellectual Property
Rights (China – IPRs), (WT/DS3262/R), 26 January 2009:
a “commercial scale” is the magnitude or extent of typical or usual commercial
activity. Therefore, counterfeiting or piracy “on a commercial scale” refers to
counterfeiting or piracy carried on at the magnitude or extent of typical or usual
commercial activity with respect to a given product in a given market. The
magnitude or extent of typical or usual commercial activity with respect to a given
product in a given market forms a benchmark by which to assess the obligation in
the first sentence of Article 61. It follows that what constitutes a commercial scale
for counterfeiting or piracy of a particular product in a particular market will
depend on the magnitude or extent that is typical or usual with respect to such a
product in such a market, which may be small or large. (Paragraph 7.577;
emphasis added.)
On a commercial scale ≠ for commercial purposes.
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IV. PROVISIONS IN THE EU
DIRECTIVE – BUT NOT IN THE
TRIPS AGREEMENT
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Persons entitled
Article 4. Persons entitled to apply for the application of the measures, procedures and
remedies
Member States shall recognise as persons entitled to seek application of the measures,
procedures and remedies referred to in this chapter:
(a) the holders of intellectual property rights, in accordance with the provisions of the
applicable law;
(b) all other persons authorised to use those rights, in particular licensees, in so far as
permitted by and in accordance with the provisions of the applicable law;
(c) intellectual property collective rights-management bodies which are regularly
recognised as having a right to represent holders of intellectual property rights, in so far as
permitted by and in accordance with the provisions of the applicable law;
(d) professional defence bodies which are regularly recognised as having a right to
represent holders of intellectual property rights, in so far as permitted by and in
accordance with the provisions of the applicable law.
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Presumptions
Article 5. Presumption of authorship or ownership
For the purposes of applying the measures, procedures and remedies
provided for in this Directive,
(a) for the author of a literary or artistic work, in the absence of proof to the
contrary, to be regarded as such, and consequently to be entitled to institute
infringement proceedings, it shall be sufficient for his/her name to appear
on the work in the usual manner;
(b) the provision under (a) shall apply mutatis mutandis to the holders of
rights related to copyright with regard to their protected subject matter.
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Publicity measures
Article 15. Publication of judicial decisions
Member States shall ensure that, in legal proceedings instituted for
infringement of an intellectual property right, the judicial authorities may
order, at the request of the applicant and at the expense of the infringer,
appropriate measures for the dissemination of the information concerning
the decision, including displaying the decision and publishing it in full or in
part. Member States may provide for other additional publicity measures
which are appropriate to the particular circumstances, including prominent
advertising.
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THANK YOU
FALEMINDERIT
www.copyrightseesaw.net
[email protected]
[email protected]
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