I. Introduction
Counterfeiting and piracy, and infringements of intellectual property in general, are a constantly growing phenomenon[1], which nowadays have an international dimension, since they are a serious threat to national economies and to competition in the Internal Market in the EU. This is so, because these phenomena lead to a loss of confidence amongst operators in the Internal Market, if they are not punished effectively, and the effect of this situation is to discourage creators and inventors and to endanger innovation and creativity.[2] Furthermore, counterfeiting and piracy also pose problems for consumer protection, particularly when public health and safety are at stake [3], and to a certain extent, go hand-in-hand with organised crime.
Indeed, these operations, which were craft activities, have become almost industrial-scale activities in the globalized economy and they offer criminals the prospect of large economic profit without excessive risk. Particularly, in the context of the Internet, the rapidity of illegal operations and the difficulty of tracking the operations further reduce the risks for the criminal. [4]
In order to combat counterfeiting and piracy effective means of enforcing intellectual property rights particularly against large scale infringements is deemed necessary.[5] For this purpose, Directive 2004/48 on the enforcement of intellectual property rights [6] was adopted. The objective of this Directive is to approximate legislative systems so as to ensure a high, equivalent and homogeneous level of protection in the internal market [7], and also to ensure that the substantive law on intellectual property, which is nowadays largely part of the acquis communautaire, is applied effectively in the Community. [8]
The proposal of the Directive of 30.1.2003 provoked controversy and heavy criticism by academics and others [9], so the final text is more moderate than the original proposal. [10] Still, critical voices sustain that the Directive supports private interests at the expense of public interest through the impositions of Mareva injunctions and Anton Pillar Orders, even in instances of accidental and non-commercial infringements of IPRs. [11]
It follows a brief overview of the basic provisions of the Enforcement Directive, which is a legal act that harmonizes the law of the EU Member States in the area of civil procedures. Subsequently, we focus on the court experience of EU Member States on important issues covered by the Directive, such as provisional and precautionary measures, and damages.
II. Overview of the Directive
1. Scope and field of application
The Enforcement Directive (2004/48) aims to provide harmonisation in the area of civil legal proceedings in order to protect intellectual property, which generates 5% of the GDP [12], and to promote creativity, to develop employment and improve competitiveness. In contrast with the TRIPS Agreement [13], criminal sanctions are not included in the field of application of the Directive, as the relevant provisions of the proposals were, after discussions with consumer groups, omitted. A simple reference is made in the preamble of the Directive.[14]
The scope of the Directive is defined in Article 2. Accordingly, the measures, procedures and remedies provided for by this Directive shall apply to any infringement of intellectual property rights as provided for by Community law and/or by the national law of the Member State concerned. National provisions may be maintained in case they are more favourable to right holders. Thus, the Directive provides for minimum harmonisation.
To clarify which rights fall within the definition of IPRs, the EU Commission issued a statement 15], according to which it considers that at least the following intellectual property rights are covered by the scope of the Directive: copyright, rights related to copyright, sui generis right of a database maker, rights of the creator of the topographies of a semiconductor product, trademark rights, design rights, patent rights, including rights derived from supplementary protection certificates, geographical indications, utility model rights, plant variety rights, and trade names, in so far as these are protected as exclusive property rights in the national law concerned.
2. General provisions
Article 3 contains safeguards against misuse of the measures, procedures and remedies established by the 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, and must be effective, proportionate and dissuasive. The principle of proportionality, which is a general principle of EU law, is further specified by the European Court of Justice, in the Promusicae case [16], which states as far as the Directive is concerned that:
“Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality (see, to that effect, Lindqvist, paragraph 87, and Case C 305/05 Ordre des barreaux francophones et germanophone and Others [2007] ECR I 0000, paragraph 28)”.
Article 4 establishes the right for right holders, licensees, collective rights management bodies representing right holders and professional bodies such as trade associations to initiative legal proceedings against pirates and counterfeiters. However, no similar rights are extended to consumers or their representatives.
3. Evidence
The Directive contains novel regulations for the gathering of evidence. It provides that national courts can order the disclosure and deliverance of evidence by the opposing party (Article 6 (1)). In case of infringements committed on a commercial scale, a court can require the disclosure of financial and commercial documents, subject to the protection of confidential information (Article 6 (2)).
It is argued that the provisions of Art. 6 (1) are extremely wide and run the risk of being used by right holders to engage in fishing expeditions to hunt for evidence even before the nature of any potential infringement has been established. [17]
Moreover, Art. 6 (2) creates a powerful means that could be used against average European consumers for engaging in infringements on a commercial scale [18], that is, when used for file-sharing activities in peer-to-peer networks. It is notable that in a Memo concerning the proposal of the Directive, the EU Commision mentioned that “the proposed Directive would not introduce tougher sanctions against individuals downloading the odd track for non-commercial purposes, though it would not stop Member State authorities from introducing and applying tougher laws”.[19] So, it is left to EU Member States to apply this procedure to file-sharing, which constitutes, according to legal doctrine, an infringement on a commercial scale, because of the huge number of digital copies produced in PCs of users.
A court can also order provisional measures to preserve relevant evidence before the commencement of proceedings (Art. 7). Interlocutory evidence can be issued against an infringer and against intermediaries, whose services the infringer is using. Courts can order the seizure and delivery-up of infringing goods. In case where any delay in proceedings might cause irreparable harm, a court can proceed without the other party being heard, but notice has to be given to the opposing party without delay after the execution of the measures at the latest, and the court shall review the terms of its interim orders upon a defendant’s request. The measures to preserve evidence, however, may be subject to the lodging by the applicant of adequate security or an equivalent assurance to ensure compensation for any prejudice suffered by the defendant. These provisions derive from the English case of Anton Piller KG v. Manufacturing Process Limited (1976, Ch. 55). It is notable that the European Court of Human Rights ruled that an Anton Piller order is in accordance with law. However, since it is granted without the defendant’s being notified or heard and is capable of producing damaging and irreversible consequences for him, it is essential that this measure should be accompanied by adequate and effective safeguards against arbitrary interference and abuse. [20]
4. Right of information
Information concerning third parties and the origins of goods can be obtained from a defendant by a discovery order. The information sought has to relate to the origin of infringing products or the distribution networks used by the defendant, including information about names and addresses of possible suppliers and downstream customers, as well as information about the quantities and the price of infringing goods. Persons required to provide information, e.g., are the possessors of infringing material and the users and the providers of services on a commercial scale as well a any person involved in the manufacture, production, or distribution of goods, or the provision of services. However, the defendant may invoke the privilege against self-incrimination, which is recognised by the European Court of Human Rights in the cases Funke v. France and Ernest Saunders v. United Kingdom.
The Directive provides, further, for so-called Mareva injunctions. According to article 9, judicial authorities may issue against the alleged infringer and intermediary, such as an Internet Service Provider, an interlocutory injunction to prevent any imminent infringement and to order the seizure or delivery of the goods suspected of infringing any intellectual property. If evidence shows that infringing acts are committed on a commercial scale, the precautionary seizure of property and the freezing of bank accounts can be ordered.
Without prejudice to the damages due from an intellectual property rights infringement case, the judicial authorities may order various measures such as the recall of infringing goods, their disposal or destruction as well as preventive measures such as an injunction and pecuniary compensation (Articles 10-12).
5. Damages
Regarding damages, Article 13 states generally that damages should be appropriate to the actual prejudice suffered by the right holder as a result of the infringement. It is thus made clear that the proposal of the Commission to allow the plaintiff to claim double licence fees as regular damages is not introduced in the final text of the Directive.
However, in the national legislation of EU Member States such a possibility exists. Notably, in German practice and case law, a 100% surcharge on top of the normal tariff is regularly due for certain infringements of copyright law asserted by collecting societies. The rationale for this is that collecting societies have to undergo increased efforts and expenses to monitor the market. [21]
Also, double licence fees are regulated in Greek Copyright Law. In accordance with Article 65 (2) of Law 2121/1993 Copyright, Related Rights and Cultural Matters, “a person who by intent or negligence infringes copyright or a related right of another person shall indemnify that person for the moral damage caused, and be liable for the payment of damages of not less than twice the legally required or normally payable remuneration for the form of exploitation which the infringing party has effected without license”.
The Enforcement Directive in Art. 13 provides for two methods to be applied by the courts for computing damages. The first method would be to take into account all aspects of the economic consequences resulting from the infringement 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 right holder by the infringement. In EU Member States, before the adoption of the Directive, the calculation of damages followed a different system and in particular, compensation for actual damages was separated from recuperation of the infringer’s profits. [22] It is suggested that this provision is intended to provide for a better opportunity of courts to grant higher damages than on the basis of previous national legislation.
As an alternative, damages may be set 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. This is an indication that in spite of the general confinement of sanctions to the actual prejudice suffered, the Directive does not discourage double licence schemes such as those referred to above, if justified.[23]
Particularly, in the case were the infringer did not knowingly, or with reasonable grounds know, engage in infringing activity, the Directive includes a non mandatory option. In such case, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.
III. The Implementation of the Directive 2004/48 in the EU Member States. Some examples
Germany
The Enforcement Directive (2004/48/EC) was implemented in Germany with the law on amelioration of the enforcement of intellectual property rights of 7th July 2008 (“Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums”), which entered into effect on 1 September 2008. This Law brought amendment of the existing laws on industrial property (Trademark Act, Patent Act etc.) and of the Copyright Act. It is notable that not all parts of the Directive required implementation. The new elements in the law were the right of information vis-à-vis third parties (Art. 8 of the Directive), the relaxation of burden of proof, i.e. the imposition of an obligation of the opposing party to present evidence, in accordance with Art. 6 of the Directive. Regarding damages, the legislation on IPR was amended to codify the existing law and bring it in line with Art. 13 of the Directive.
The Patent Act contains in section 139 (1) an action for injunction, which does not presuppose fault on the part of the infringer. An action for compensation can be filed if the infringer acted intentionally or negligently. The calculation of damages, according to section 139 (2), takes place on the basis of the actual damage suffered including lost profit, or on the basis of the appropriate licensing fee, which the infringer would be liable to pay to the right holder if he had a license. Under section 140a it is provided that the destruction of goods in possession of the infringer can be ordered, while paragraph 3 provides that “any person who exploits a patented invention contrary to Sections 9 to 13 can be sued to recall products, which are the subject matter of the patent or to finally remove them from all distribution channels. The first sentence shall also apply, if the products are manufactured directly by a method, which is the subject matter of the patent.”
Further, the patent Act includes verbatim transposition of the provisions of the Enforcement Directive on information under Art. 8 (140 b Patent Act), on provisional and precautionary measures under Art. 9 (140 c and 140 d Patent Act).
Similar provisions are included in the Copyright Act in sections 97 ff. Regarding damages, there are two relevant provisions. Firstly, section 97 (2) provides that “whoever acts an infringement intentionally or negligently, is liable for compensation of damages to the injured party. In assessing the damages, the profit that the infringing party has obtained from the infringement can be taken into account. An alternative is to calculate the damages on the basis of the appropriate licensing fee, which the infringer would be liable to pay to the right holder if he had a license. And also, authors can require the compensation of moral damages, when and insofar this is equitable.
Section 100 of the Copyright Act transposes the provision of Article 13 (1) lit. b of the Directive, according to which the damages can be set as a lump sum. The German Copyright Act states that if the infringing party does not act intentionally or negligently, he is entitled to compensate the injured party, instead of the actions of sections 97 and 98, in case the exercise of these provisions would bring a disproportionate damage and the injured party can be satisfied. The calculation of damages in this case is based on the appropriate fee in case a license would be acquired.
Soon after the implementation of the Enforcement Directive, two contrasting first instance decisions on the application of the new right of information have been published. Both cases concerned copyright infringement using file-sharing networks on the internet. Section 101 of the German Copyright Act (which implements the Directive) grants rights owners a right of information against third parties – for example, internet service providers – in cases of obvious infringement and, additionally, if the infringement is on a "commercial scale". The scope of "commercial scale" is unclear and the decisions differ significantly in their interpretation of the concept.
In the first case, the Regional Court of Frankenthal, the plaintiff, a company who was right holder on a computer game filed suit against an Internet Access Provider on the basis of section 101 (9) and (2)(1) Nr. 3 Copyright Act, requesting information on the personal information of three Internet users whose IP addresses were identified as making available a torrent file to other Internet users, whereas this file was a version of the computer game. The plaintiff argued that the users were acting on commercial scale, since they offered other users the file for downloading, taking also into account that the file was voluminous and the game was recently put on the market.
The Court held that that the infringers were not acting on a commercial scale. In its reasoning, the Court referred to the practice of German public prosecutors who commence criminal investigations only where a specific threshold is met, taking into account the type of protected works (e.g. individual music songs, full albums, full films) and their actual status (e.g. films before their start in cinemas). Accordingly, an infringement on commercial scale could be in case there is an offer of at least 3,000 music titles, or of files with a market value of more than €3,000. Besides that, the Court held that in the present case the requirement of an infringement on commercial scale was not fulfilled, because there was no deliberate and continuous act, as well as no intention of making a profit from the infringement.
In contrast, the Regional Court of Cologne held that offering a new music album (on a single file) via a file-sharing network shortly after release amounted to copyright infringement on a commercial scale (case no. 28 AR 4/08). In this case, the Court took into account the severity of the infringement and the potentially substantial damage to the right owner flowing from the availability of a new product to an unlimited number of individuals shortly after release.
Large number of proceedings against internet service providers for information in respect of copyright infringements by way of illegal downloads (music, audio books, films). The Court of Appeal of Cologne in its decision of 21.10.2008 held that anyone who is offering a complete music album, particularly in the release phase, acts as a supplier on commercial scale. According to the Court, this person cannot and does not want to control to what extent use of its offer is made and infringes upon the rights of the right holder to such a degree, which corresponds to commercial use of the intellectual property rights. It is also negligible that it is proven that the infringement took place only for a specific time.
Similarly, the Court of Appeal of Karlsruhe held that an infringement on a commercial scale is established, if a particularly large file, such as a complete feature film, a music album or an audio book, before or immediately after its publication in Germany is illegal made available to an indeterminate number of third parties on the Internet. [24] The Court invokes Recital Nr. 14 of the Directive, which states that acts carried out on a commercial scale are those carried out for direct or indirect economic or commercial advantage; this would normally exclude acts carried out by end consumers acting in good faith. Thus, the decisive factor is whether the infringement crosses the line of private use and this would be the case, according to the Court, when the infringer does not only download a commercially exploited work, but makes it available to a indefinite number of third persons.
In another interesting case, the Court of Appeal of Munich [25] held that the auction site eBay was responsible for contributory infringement and was responsible to provide information to the plaintiff in accordance with Section 101a of the Copyright Act, transposing Art. 8 of the Enforcement Directive. In this particular case, the plaintiff who was the publisher of a textbook of Latin language noticed that German translations from its textbook were offered in the auction site of the defendant from pseudonymous suppliers. Consequently, the plaintiff sent a letter notice to the defendant, who did not accept its allegations and refused to provide information concerning the suppliers, as this would violate data protection legislation. Hence, the plaintiff filed a lawsuit against the defendant, which was accepted.
The District Court of Cologne delivered a case recently applying the rules of the new copyright act.[26] In this case, the plaintiff was is a major German record producer, while the defendant was the owner of an Internet connection, who was allegedly offering on the Internet copyrighted works, the song "F" and "P" of Artist "B. The claimant for an injunction and for compensation for the attorney’s fees for out-of-settlement. The claimant using a special software discovered that the album of the artist “B” was made online available through a specific IP address and filed a lawsuit against the provider to provide the claimant with information on the defendant. Consequently, the claimant complained to the defendant who contested the infringement, but conceded that that his sons have initiated the filesharing.
The Court ordered the plaintiff to cease and subsist from making available the music recordings on the Internet and condemned him in case of disobedience to pay a fine of 250,000 Euro or be subject to imprisonment of 6 months. It also condemned the defendant to pay to the plaintiff compensation for the expenses in the out-of-court procedure, issued in accordance with section 97a of the Copyright Act, which was determined in the amount of 1379,80 Euro.
GREECE
In Greece, the transposition of the Enforcement Directive took place by the amendment of the Copyright Act only. Amendments of the Trademark Act, the Patent Act and the other legislation on IPR will still have to be caried out.
The Copyright Act contains in Article 63 A provisions on evidence that correspond to Articles 6 and 8 of the Directive, while Article 64 contains provisions on injunctions and precautionary evidence, which correspond to Articles 7, 9 and 11 of the Directive. An injunction against intermediaries is provided for in Article 64A, whose services are used by third party to infringe a copyright or related right, as well as sui generis right.
The provisions of Articles 10 and 11 on damages are transposed in Article 65, which describes a coherent system of liability for damages. It states, in paras 1 to 3 the following:
“ (1) In any case of infringement or threat of infringement of copyright or related rights, the author or the right holder may claim the recognition of this right, the discontinuation of the infringement and its omission in the future. The discontinuation of the infringement may include, at the request of the applicant: a) recall from the channels of commerce of goods that they have found to be infringing rights under this law and, in appropriate cases, with regard to materials and implements principally used in the creation or manufacture of those goods, b) definitive removal from the channels of commerce, or c) destruction. The rights of the first sentence of this paragraph shall be exercised by right holders against intermediaries whose services are used by a third party to infringe rights under this law (articles 10, par. 1, and 11 of Directive 2004/48).
(2) A person who by intent or negligence infringes copyright or a related right of another person shall indemnify that person for the moral damage caused, and be liable for the payment of damages of not less than twice the legally required or normally payable remuneration for the form of exploitation which the infringing party has effected without license.
(3) Instead of seeking damages, and regardless of whether the infringement was committed by intent or negligence, the author or the right holder of the related right may demand either the payment of the sum accrued by the infringing party from the unlicensed exploitation of a work, or of the object of a related right, pursuant to Articles 46 to 48 and 51 of this Law, or the profit gained by the infringing party from such an exploitation.”
It also notable that administrative sanctions are provided for in Article 65A, while criminal sanctions are provided for in Article 66.
In a recent decision the Court of First Instance of Athens [27] ordered provisional measures and in more particular, the detailed description of infringing goods including the taking of photographs. In particular, the claimant directed an audiovisual work, i.e. a cartoon. He was also script writer and editor, while other persons contributed in the creation of the work, thus, it was a collaborative work. The claimant delivered the film to the first defendant, manager of the second defendant, in order to decide about possible way of its exploitation. However, although there was no agreement between the claimant and the defendants they undertook the production, distribution and exploitation of a DVD titled “Greek Cartoons 1945-2007” that contained 18 films, including the cartoon of the claimant. This film was stored in the DVD and was reprinted in 5,000 copies without the consent of the claimant. The film was also played in festivals, cinemas, bars, student groups and cartoon seminars, while it cannot be excluded that it was exploited also in other ways. The claimant was thus deprived of his license fee and of the fee for the public execution of the film, but also could not take part in film competitions.
Subsequently, the claimant filed a lawsuit against the defendants before the County Court of Athens, claiming: a) the recognition of his right holder of the film, b) the discontinuation of the infringement and its omission in the future and c) the defendants to pay to him the amount of 6,000 Euro as compensation, which is not less than twice the normally payable remuneration for this form of exploitation which the infringing party has effected without his permission (Art. 65 (2), Greek Copyright Act), otherwise to pay the amount of 6,000 Euro which the defendant accrued from the unlicensed exploitation of his work (Art. 65 (3), Copyright Act) and d) to pay the amount of 5,000 Euro for moral damages suffered by the acts of the defendants.
In the present proceedings before the Court of First Instance of Athens filed an application for provisional measures against the defendants and requested that the court issued an order for the precautionary seizure of the items in the possession of the defendants. The Court ordered instead of the seizure, the detailed description of the infringing items, including the taking of photographs (Article 64 (1), Copyright Act). The decision was issued without the defendant being heard, in accordance with Article 64 (5) of the Copyright Act, which is in line with Article 50 (2) of the TRIPS Agreement and Article 7 of the Enforcement Directive. It held that this measure is necessary, since it is possible that the defendants destroy all the material evidence and thus, the right holder would not be protected. It is notable that the description of the infringing items order by the Court can be carried out by a bailiff and not by a notary public, as it is the case in ordinary court proceedings. The claimant was allowed by the Court to use special advisors, IT-experts, to assist him.
In a pending case before the Multi-Member Court of First Instance of Athens, issued an order against the alleged infringer of copyright.[28] The court applied the provision of Article 63 A, Copyright Act transposing Article 6 of the Enforcement Directive, stating that: “On application by a party which has presented reasonably available evidence sufficient to support its claims of infringement or threat of infringement of the rights under this law and has, in substantiating those claims, specified evidence which lies in the control of the opposing party, the court may order, on application by a party, that such evidence be presented by the opposing party. In the case of an infringement committed on a commercial scale, the court may also order, on application by a party, the communication of banking, financial or commercial documents under the control of the opposing party. The existence of a substantial number of copies shall be considered to constitute reasonable evidence of an infringement committed on a commercial scale. In any event, the court shall ensure the protection of confidential information.”
The claimant in this case invoked his right according to the aforementioned provision with his pleadings in the ordinary court proceedings. The Court postponed the issuance of final decision and ordered the defendant company to present the documents under its control. It is noteworthy that the Court held that the requirement of an infringement committed on a commercial scale was fulfilled, since it was proven that there were multiple infringing copies in the possession of the defendant.
Belgium
In Belgium, the transposition of the enforcement directive took place with the amendment of the Act on civil law aspects of the protection of intellectual property rights [29] and the Act on judicial law aspects of the protection of intellectual property rights, issued on 10 May 2007.[30]
The two separate acts apply to all intellectual property rights, save for trademarks and models and designs, as these are dealt with on the Benelux level. Because Belgian legislation does not have a single intellectual property code, the implementation acts necessarily affect several national intellectual property acts, including the Patent Act, the Act on Copyright and Neighbouring rights, the Software Copyright Act, the Act on Plant breeders’ rights, the Act on Legal protection of semiconductor layouts, the Database Act and the Trade Practices Act which provides for protection of denominations of origin. Furthermore, the acts also include changes to the Judicial Code.
France
In France the Enforcement Directive has been implemented by Law 2007-1549 of October 29th 2007 known as “anti counterfeiting law”. The new law concerns designs, patents, semi-conductors, trademarks and copyright. It introduces accelerated and simplified procedures to bring matters before court, in particular in order to obtain summary orders against the alleged infringer or his intermediaries so as to prevent imminent acts of infringement or to stop such acts. The law also reinforces the measures that can be ordered against infringers, and improves the remedies that can be awarded. Moreover, the law provides for a limited number of courts to specialise in the enforcement of intellectual property: litigation relating to the application of intellectual property rules may only be brought before specific High Courts of First Instance (‘Tribunaux de Grande Instance’). The text provides that a Decree will set out these courts.
It should also be noted that the French legislator reinforces the penal sanctions incurred where the acts of infringement concern products that are dangerous for the health and security of mankind and animals. Finally, the law sanctions any violation of intellectual property rights, whether they are carried out on a commercial scale or not.
ITALY
By Legislative Decree no.140 of 16 March 2006, Italy implemented the Enforcement Directive by amending law no.633/1941, which has already been the subject of so many modifications since its inception that several parties are calling for its complete re-drafting. The most notable modifications to the Italian copyright law include the presumption of ownership of the neighbouring rights, as it was already the case for author's rights; the possibility for collective and "representative" organizations to independently promote judicial actions in order to defend their members' rights; the possibility to ask judges to inhibit activities, including those by intermediaries, that can be construed as an infringement of authors' or neighbouring rights; the possibility for judges in the case of infringement "on a commercial scale"- on request of the interested party - to order banking, financial and other commercial data to be produced by the counterpart; a more detailed procedure to calculate damages.
The Italian implementation of IPRED has been severely criticized, among others by Andrea Monti of ALCEI (Associazione per la Liberta` nella Comunicazione Elettronica Interattiva - EDRi-member). In an article published on the Italian journal "InterLex", Monti considered that the Legislative Decree is too vague in its key parts - including the definition of what is an "intermediary" and the type of evidences that must be produced in order for a judicial injunction to be issued.
Netherlands
The implementation of the Enforcement Directive took place with the Act of 8 March 2007.[31] A new part has been added to Book 3 of the Dutch Code of Civil Procedure with the sections 1019a up to and including 1019i. In addition, some separate intellectual property acts, including the Copyright Act, have been amended. On the basis of the new legislation, any holder of an intellectual property right has a number of far-reaching instruments to enforce his intellectual property rights.
UK
In the UK, the Enforcement Directive was implemented with the Intellectual Property Regulations 2006.[32] This act transposes effectively the provisions of the Directive.
Particularly, as regards damages, Section 3 of the Regulation states that:
“(1) Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement.
(2) When awarding such damages—
(a) all appropriate aspects shall be taken into account, including in particular: (i) the negative economic consequences, including any lost profits, which the claimant has suffered, and any unfair profits made by the defendant; and
(ii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or
(b) where appropriate, they may be awarded on the basis of the royalties or fees which would have been due had the defendant obtained a licence.”
IV. Conclusions
The Enforcement Directive brought about significant changes in the law of the EU Member States in the area of enforcement of intellectual property rights. The already existing legal remedies in English law, know as Anton Pillar order and Mareva injunctions are new to the legal order of the other EU countries and their introduction in EU law, which resulted into transposition in the national law of the Member States, are powerful instruments in the hands of right holders. But also the provision of Art. 10 of the Directive allows right holders to enforce their rights effectively.
Important provisions are also those concerning damages in Article 13 of the Directive, which are new to most Member States, but existed in the case-law of others. These contribute to the harmonization of civil liability in case of infringement of intellectual property rights.
It is argued that the imposition of civil liability alone does not provide sufficient protection and more efficient mechanisms are needed for the enforcement of intellectual property rights. Certainly, criminal sanctions are also important, as well as provisions on administrative functions of competent authorities. Nevertheless, the harmonization of the enforcement of intellectual property law must be seen as a prerequisite for an effective system of protection of intellectual property in the fight against infringements of such rights, particularly as regards counterfeiting and piracy.
FOOTNOTES
1. According to the European Commission, counterfeiting and piracy cost the EU 8 billion Euro between 1998 and 2001. Notably, the number of optical discs and cassettes seized by EU custom officers rose from 9 million items in 2000 to nearly 40 million items in 2001; see MEMO/03/20, 2003.
2. See Explanatory Memorandum, Proposal for a Directive on measures and procedures to ensure the enforcement of intellectual property rights, COM (2003) 46 final, p. 3, 6-8, 12-13.
3. The latest Commission Community Customs Report warns that the threat to consumer health and safety is increasing dramatically, with the seizure of items more than doubling in 2008 to 178 million, of which about 20 million potentially dangerous to health and safety of EU citizens, or 11% of all items intercepted; IP/09/1106 of 9.7.2009. In particular, the increase in fake medicines is of growing concern; See http://www.ip-talk.eu/?p=607 ‘Medi-Fake’ action results (February 2009) – over 34 million illegal medicines seized.
4. Explanatory Memorandum, op. cit., p. 12.
5. See Communication of 30.11.2000, COM (2000) 789 final, Follow-up to the Green Paper on combating counterfeiting and piracy in the single market.
6. OJ L 157 of 30.04.2004, p. 45 and Corrigendum, L 195 of 02.06.2004, p. 16.
7. Recital Nr. 10 of Directive 2004/48.
8. Recital Nr. 3 of Directive 2004/48; Explanatory Memorandum, op. cit., pp. 4-6, 19-21.
9. See Cornish/Drexl/Hilty/Kur, Procedures and Remedies for Enforcing IPRs: the European Commission’s Proposed Directive, EIPR 2003, pp. 447-449; Cornish/Drexl/Hilty/Kur, Proposal for a Directive on Measures and Procedures to Ensure the Enforcement of Intellectual Property Rights – A First Statement, IIC 2003, pp. 530-535.
10. See S. M. Kierkegaard, Taking a sledgehammer to crack the nut: The EU Enforcement Directive, CLSR 2005, pp. 488-495.
11. P. Meller, EU backs deal on copyright piracy, International Herald Tribune, NY 2004.
12. MEMO/03/20, 2003.
13. See Art. 61: “Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale”.
14. See Recital Nr. 28: “In addition to the civil and administrative measures, procedures and remedies provided for under this Directive, criminal sanctions also constitute, in appropriate cases, a means of ensuring the enforcement of intellectual property rights”.
15. Statement by the Commission concerning Article 2 of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights (2005/295/EC), OJ L 94 of 13.4.2005, p. 37.
16. ECJ, decision of 29.1.2008, case C-275/06, Promusicae.
17. See S. M. Kierkegaard, op. cit., p. 491-492.
18. S. M. Kierkegaard, op. cit.
19. MEMO/03/20 of 30/01/2003.
20. See Case of Chappell v. UK, decision of 30.03.1989 (Application no. 10461/83).
21. German Federal Supreme Court, 1973 GRUR 379 – Doppelte Lizenzgebühr. For the reasons not to accept this proposal see D. Amschewitz, Die Durchsetzungsrichtlinie and ihre Umsetzung im deutschen Recht, 2008, p. 89; Dreier, GRUR Int. 2004, pp. 706-707.
22. See, e.g., for UK law: Cornish & Llewely, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 2003, pp. 2-43, 44.
23. See Recital Nr. 26 of the Directive, which states that the aim of the Directive is not to introduce an obligation to provide for punitive damages but to allow for compensation based on an objective criterion while taking account of the expenses incurred by the right holder, such as the costs of identification and research.
24. OLG Karlsruhe, decision of 01.09.2009, 6 W 47/09, JurPC Web-Dok. 218/2009, Abs. 1 – 36.
25. OLG München, Urteil vom 21.09.2006, 29 U 2119/06, Haftung von eBay als Mitstörer für Urheberrechtsverletzungen, JurPC Web-Dok. 124/2006, Abs. 1 – 76.
26. Decision of 21.04.2010, Az. 28 O 596/09.
27. Decision Nr. 7842/2009, www.dsanet.gr
28. Case Nr. 5144/2009, www.dsanet.gr
29. Loi relative aux aspects civils de la protection des droits de proprietι intellectuelle, Moniteur Belge, 10 May 2007, 2nd edition, p. 25694.
30. Loi relative aux aspects de droit judicaire de la protection des droits de propriιtι intellectuelle, Moniteur Belge, 10 May 2007, 2nd edition, p. 25694.
31. Dutch Bulletin of Acts and Decrees. 2007, 108.
32. Statutory Instrument 2006 No. 1028.
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