Intellectual property rights enforcement

The European Parliament and the Council of the European Union adopted a directive on the enforcement of intellectual property rights last April 29. The directive obliges member states to provide for measures, procedures and remedies that are effective, proportionate for the enforcement of intellectual property rights (IPR), dissuasive in nature and to be applied in such a manner as to avoid the creation of barriers to legitimate trade.

Member states are directed to recognise inter alia the holders of IPR, licencees and IPR collective rights management bodies and professional defence bodies as persons entitled to seek application of the measures.

It is expected that the directive will go a long way to facilitate the conduct of proceedings by creating a presumption that the author of a literary or artistic work and the holder of copyright, with regard to their protected subject matter, shall be regarded as such and entitled to institute proceedings, unless proof to the contrary is made to appear, if his/her name appears on the work in the usual manner. This means that this could relieve a cumbersome, expensive and time-consuming procedure of having in litigation proceedings to establish proof of copyright ownership or licence. It throws on the defendant the burden of proving the contrary where the name of the owner appears on the work "in the normal manner".

The directive requires that members are to ensure that, on application by a party showing reasonably available evidence to support its claims, the procedural possibility exists that the opposing party may be ordered, subject to confidential information data control, to present specific evidence in its possession. Most significantly, member states are left at liberty to provide that a reasonable sample of a substantial number of copies of a work or protected object be considered by the judicial authorities as reasonable evidence.

The EU member states shall take measures as are necessary to ensure that where appropriate on the application of a party, the competent judicial authorities shall, subject to protection of confidential information, order the communication of banking, financial or commercial documents under the control of the opposing party.

The directive also requires EU member states to ensure that, even prior to commencement of proceedings on the merits of the case, the judicial authorities be empowered to order prompt and effective measures to preserve the evidence of the alleged infringement. The party affected is entitled to be given notice without delay at the latest after execution of the measure and to have a review with the right to be heard within a reasonable period whether the measures are to be modified, revoked or confirmed. Applicant may be ordered to provide adequate security consequent to seizure of the evidence and is to institute proceedings within a period to be established by a member state.

The judicial authorities shall have the power to award damages in the event that applicant fails to institute proceedings or if it is subsequently found that there is no IPR infringement.

Member states are enjoined to ensure that, at the request of an applicant who demonstrates reasonably that he/she is the right holder, the judicial authorities may issue, in the case of an alleged defaulter, an interim or interlocutory injunction intended to prevent any imminent infringement. Such precautionary measure may also be issued against a third party intermediary whose services are used to infringe copyright.

The courts are also to be empowered to order the seizure or delivery up of goods suspected of infringing IPR so as to prevent their entry or movement within the channels of commerce. In terms of the directive, the courts are also to be vested with authority to order disclosure of information relative to the bank accounts of the alleged defaulter and seizure of such bank accounts.

The appropriate measures may be taken without delay where irreparable damage due to delay could be caused to the rights holder; this is subject to the defendant being informed of the measures of enforcement at the latest after the executive measures have been taken. As in the case of the provisions relative to the preservation of evidence, applicant is obliged to bring proceedings within a time period. There is entitlement to the affected party to a review of the precautionary measures the lodging by applicant of guarantees to ensure compensation that could be due to defendant in the event that these provisional measures lapse, are revoked or where it is subsequently established that there was no IPR infringement.

EU members are directed to ensure that in the context of proceedings concerning an IPR infringement and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of goods or services which infringe an IPR be provided. Such information is to be made available by the defaulter or by a person who was found to be in possession of infringing goods or services or who provided commercial services leading to infringing activities or who was named as being involved in the above. This shall not however prejudice inter alia legislation relative to civil and criminal proceedings, responsibility for misuse of information rights and protection of data confidentiality.

Member states are directed to provide, following a judicial decision finding an infringement, for appropriate corrective measures, particularly with regard to materials and implements principally used in the creation and manufacture of the infringing goods. These measures are to include recall or definitive removal from the channels of commerce, or their destruction.

Proportionality is to be taken into account in considering a request for corrective measures between the seriousness of the infringement, the remedies ordered and the rights of third parties. Judicial authorities are to be empowered to order, where they consider appropriate, an injunction aimed at prohibiting the continuation of the infringement.

The directive enjoins member states to legislate that, on application of the injured party, the judicial authorities condemn the infringing party to pay damages. The damages ordered by the national courts shall include all appropriate aspects including the negative economic consequences, lost profits, unfair profits made by the defaulter and where the court deems fit also moral prejudice caused to the rights holder by the infringement.

As an alternative, the courts may in appropriate cases establish damages taking as a minimum basis the amount of royalties or fees otherwise due. A reasonable award towards the legal costs is also to be made.

Member states are to include as a possible remedy appropriate measures for the publication of the decision finding infringement at the request of applicant and at the cost of the defaulter. They are also free to apply other civil and administrative measures for the infringement of IPR - in other words the measures indicated to be implemented in the directive are minimum requirements.

EU member states are to bring in force the laws, regulations and administrative provisions to comply with this directive by April 29, 2006. Three years later, each member state shall submit to the European Commission a report on the implementation of the directive.

Dr Galea is legal counsel to the Association Against Copyright Theft.

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