Directive on the enforcement of intellectual property rights
Encyclopedia
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (also known as "(IPR) Enforcement Directive" or "IPRED") is a European Union directive
in the field of intellectual property
law, made under the internal market provisions of the Treaty of Rome
. The directive covers the remedies that are available in the civil courts, but not criminal offenses.
Under Article 3(1), Members States can be censured in the European Court of Justice
if their civil procedures on the infringement of intellectual property rights are "unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays". Otherwise the Directive harmonizes the rules on standing
, evidence
, interlocutory measures, seizure
and injunction
s, damages
and costs and judicial publication.
The subject-matter of the Directive is defined in Article 1. It applies to enforcement of intellectual property rights which include industrial property rights. The scope of the Directive is defined in Article 2. It applies to all infringements of IP rights in Community and national law, without precluding more stringent protection that the Community or national law may otherwise grant.
The general obligation in the Directive is to provide for remedies necessary to enforce intellectual property rights. These shall be “fair and equitable” and must not be “complicated or costly, or entail unreasonable time-limits or unwarranted delays”. They must furthermore be effective, proportionate and dissuasive and must not act as barriers to trade.
The persons who are entitled to apply for the remedies are primarily the holder of intellectual property right, but also any person authorized to use it, such as licensees and intellectual property rights. Collective rights management
and professional defense bodies may also have the right under certain circumstances.
Measures for preserving evidence are available even before the proceedings commence. Article 7 provides that such measures may be granted under the same conditions as under Article 6 and include provisional measures such as physical seizure not only of the infringing goods (such as hard drives) but also materials used in the production and distribution.
Article 6 provides that such measures may be taken without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the rightholder or where there is a demonstrable risk of evidence being destroyed. These are interlocutory, ex parte
and in personam
orders known in the English and Irish jurisdictions as Anton Piller orders. They are not used outside the UK and Ireland.
injunction
to prevent an “imminent infringement” of intellectual property rights or to prevent a continuing infringement. In the latter case, the order may be followed with a recurring penalty payment or lodging of a guarantee intended to compensate the rightholder (paragraph a). An injunction can also be issued, under the same conditions, against an intermediary, but these are covered in Article 8(2) of the Information Society Directive and are, in principle, subject to national law.
Apart from the ordinary injunctions of the previous paragraph there also exist the so-called Mareva injunction
s in Article 9(2). In common law, these are ex parte
and in personam
orders used to freeze assets (including bank accounts) to prevent abuses of process. They can be issued as worldwide injunctions, preventing worldwide dispersal. In that case, their effectiveness depends on their in personam
character, as a party who is found to be guilty of disposing of assets will be held to be in contempt of court. Like Anton Piller orders, their use is confined mostly to the UK.
Article 9(2) provides that, in the case of an infringement on a commercial scale, judicial authorities may order a precautionary seizure of “movable and immovable property” which includes freezing the bank accounts and other assets. This may only be done if the applicant demonstrates that it is likely that recovery of damages will be endangered. Further to that, documents relating to banking and other financial transaction may be communicated.
by 29 April 2006. However, a number of states have not completed the necessary steps.
The Directive has been implemented into United Kingdom
law by the Intellectual Property (Enforcement, etc.) Regulations 2006. The Directive has been implemented into Dutch law, and came into force on May 1, 2007. It has been implemented in France by the "décret 2008-624" of June 27, 2008. The Swedish parliament voted yes to implement the Directive on 26 February 2009, and it was implemented on April 1, 2009.
.
, the Dutch company Philips
, owner of patents on CD-R
technology, requested and obtained an order of precautionary seizure over all Princo’s movable and immovable property, including its bank accounts, with a view to ensuring the recovery of damages to be awarded at the end of the liability proceedings.
European Union directive
A directive is a legislative act of the European Union, which requires member states to achieve a particular result without dictating the means of achieving that result. It can be distinguished from regulations which are self-executing and do not require any implementing measures. Directives...
in the field of intellectual property
Intellectual property
Intellectual property is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law...
law, made under the internal market provisions of the Treaty of Rome
Treaty of Rome
The Treaty of Rome, officially the Treaty establishing the European Economic Community, was an international agreement that led to the founding of the European Economic Community on 1 January 1958. It was signed on 25 March 1957 by Belgium, France, Italy, Luxembourg, the Netherlands and West Germany...
. The directive covers the remedies that are available in the civil courts, but not criminal offenses.
Under Article 3(1), Members States can be censured in the European Court of Justice
European Court of Justice
The Court can sit in plenary session, as a Grand Chamber of 13 judges, or in chambers of three or five judges. Plenary sitting are now very rare, and the court mostly sits in chambers of three or five judges...
if their civil procedures on the infringement of intellectual property rights are "unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays". Otherwise the Directive harmonizes the rules on standing
Standing (law)
In law, standing or locus standi is the term for the ability of a party to demonstrate to the court sufficient connection to and harm from the law or action challenged to support that party's participation in the case...
, evidence
Evidence
Evidence in its broadest sense includes everything that is used to determine or demonstrate the truth of an assertion. Giving or procuring evidence is the process of using those things that are either presumed to be true, or were themselves proven via evidence, to demonstrate an assertion's truth...
, interlocutory measures, seizure
Seizure
An epileptic seizure, occasionally referred to as a fit, is defined as a transient symptom of "abnormal excessive or synchronous neuronal activity in the brain". The outward effect can be as dramatic as a wild thrashing movement or as mild as a brief loss of awareness...
and injunction
Injunction
An injunction is an equitable remedy in the form of a court order that requires a party to do or refrain from doing certain acts. A party that fails to comply with an injunction faces criminal or civil penalties and may have to pay damages or accept sanctions...
s, damages
Damages
In law, damages is an award, typically of money, to be paid to a person as compensation for loss or injury; grammatically, it is a singular noun, not plural.- Compensatory damages :...
and costs and judicial publication.
Subject-matter and scope
The Directive requires all Member States to apply effective, dissuasive and proportionate remedies and penalties against those engaged in counterfeiting and piracy. Thus, the purpose of the instrument is to regulate enforcement of intellectual property rights, not the rights themselves. The Directive leaves unaffected the substantive provisions on intellectual property, international obligations of the Member States and national provisions relating to criminal procedure and criminal enforcement. In short, the Directive adds extra measures on enforcement of digital copyright while leaving national law in other areas unaffected.The subject-matter of the Directive is defined in Article 1. It applies to enforcement of intellectual property rights which include industrial property rights. The scope of the Directive is defined in Article 2. It applies to all infringements of IP rights in Community and national law, without precluding more stringent protection that the Community or national law may otherwise grant.
The general obligation in the Directive is to provide for remedies necessary to enforce intellectual property rights. These shall be “fair and equitable” and must not be “complicated or costly, or entail unreasonable time-limits or unwarranted delays”. They must furthermore be effective, proportionate and dissuasive and must not act as barriers to trade.
The persons who are entitled to apply for the remedies are primarily the holder of intellectual property right, but also any person authorized to use it, such as licensees and intellectual property rights. Collective rights management
Collective rights management
Collective rights management is the licensing of copyright and related rights by organizations acting on behalf of rights owners. Collective management organisations, such as collecting societies, typically represent groups of copyright and related rights owners, such as authors, composers,...
and professional defense bodies may also have the right under certain circumstances.
Evidence
Section 2 of the Directive deals with the evidence. Article 6 gives the power to the interested party to apply for evidence regarding an infringement that lies in the hands of the other party to be presented. The only requirement is for that party to present “reasonably available evidence sufficient to support its claim” to courts. In case of an infringement on a commercial scale, Member States must also take steps to ensure that “banking, financial or commercial documents” of the opposing party are presented. In both cases confidential information shall be protected.Measures for preserving evidence are available even before the proceedings commence. Article 7 provides that such measures may be granted under the same conditions as under Article 6 and include provisional measures such as physical seizure not only of the infringing goods (such as hard drives) but also materials used in the production and distribution.
Article 6 provides that such measures may be taken without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the rightholder or where there is a demonstrable risk of evidence being destroyed. These are interlocutory, ex parte
Ex parte
Ex parte is a Latin legal term meaning "from one party" .An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present. In Australian, Canadian, U.K., Indian and U.S...
and in personam
In personam
In personam is a Latin phrase meaning "directed toward a particular person". In a lawsuit in which the case is against a specific individual, that person must be served with a summons and complaint to give the court jurisdiction to try the case, and the judgment applies to that person and is called...
orders known in the English and Irish jurisdictions as Anton Piller orders. They are not used outside the UK and Ireland.
Provisional and precautionary measures
At the request of an applicant, the judicial authorities may issue an interlocutoryInterlocutory
Interlocutory is a legal term which can refer to an order, sentence, decree, or judgment, given in an intermediate stage between the commencement and termination of a cause of action, used to provide a temporary or provisional decision on an issue...
injunction
Injunction
An injunction is an equitable remedy in the form of a court order that requires a party to do or refrain from doing certain acts. A party that fails to comply with an injunction faces criminal or civil penalties and may have to pay damages or accept sanctions...
to prevent an “imminent infringement” of intellectual property rights or to prevent a continuing infringement. In the latter case, the order may be followed with a recurring penalty payment or lodging of a guarantee intended to compensate the rightholder (paragraph a). An injunction can also be issued, under the same conditions, against an intermediary, but these are covered in Article 8(2) of the Information Society Directive and are, in principle, subject to national law.
Apart from the ordinary injunctions of the previous paragraph there also exist the so-called Mareva injunction
Mareva injunction
The Mareva injunction , in Commonwealth jurisdictions, is a court order which freezes assets so that a defendant to an action cannot dissipate their assets from beyond the jurisdiction of a court so as to frustrate a judgment...
s in Article 9(2). In common law, these are ex parte
Ex parte
Ex parte is a Latin legal term meaning "from one party" .An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present. In Australian, Canadian, U.K., Indian and U.S...
and in personam
In personam
In personam is a Latin phrase meaning "directed toward a particular person". In a lawsuit in which the case is against a specific individual, that person must be served with a summons and complaint to give the court jurisdiction to try the case, and the judgment applies to that person and is called...
orders used to freeze assets (including bank accounts) to prevent abuses of process. They can be issued as worldwide injunctions, preventing worldwide dispersal. In that case, their effectiveness depends on their in personam
In personam
In personam is a Latin phrase meaning "directed toward a particular person". In a lawsuit in which the case is against a specific individual, that person must be served with a summons and complaint to give the court jurisdiction to try the case, and the judgment applies to that person and is called...
character, as a party who is found to be guilty of disposing of assets will be held to be in contempt of court. Like Anton Piller orders, their use is confined mostly to the UK.
Article 9(2) provides that, in the case of an infringement on a commercial scale, judicial authorities may order a precautionary seizure of “movable and immovable property” which includes freezing the bank accounts and other assets. This may only be done if the applicant demonstrates that it is likely that recovery of damages will be endangered. Further to that, documents relating to banking and other financial transaction may be communicated.
Implementation
The provisions of the Directive were due to be implemented in all member states of the European UnionEuropean Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
by 29 April 2006. However, a number of states have not completed the necessary steps.
The Directive has been implemented into United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
law by the Intellectual Property (Enforcement, etc.) Regulations 2006. The Directive has been implemented into Dutch law, and came into force on May 1, 2007. It has been implemented in France by the "décret 2008-624" of June 27, 2008. The Swedish parliament voted yes to implement the Directive on 26 February 2009, and it was implemented on April 1, 2009.
Criticism
The Directive has been widely criticized on the account of its allegedly draconian approach, said by some to mimic the American Digital Millennium Copyright Act (DMCA). So strong was the criticism, in fact, in particular from telecommunications industry and parts of computer industry, that the original draft was substantially changed. A number of problems still remain in the final document, according to the international civil liberties organization IP JusticeIP Justice
IP Justice is an international civil liberties organization that promotes balanced intellectual property laws and freedom of expression in a digital world.IP Justice was founded in 2002 by cyber-rights attorney Robin Gross...
.
- Cambridge University’s Ross Anderson
- ZDNet News
- BBC Analysis
- Indymedia on RFID tags
Examples of cases wherein the provisions of the Directive have been applied
In the 2007 Princo Corporation, Ltd v Koninklijke Philips Electronics case before the Court of Genoa, ItalyItaly
Italy , officially the Italian Republic languages]] under the European Charter for Regional or Minority Languages. In each of these, Italy's official name is as follows:;;;;;;;;), is a unitary parliamentary republic in South-Central Europe. To the north it borders France, Switzerland, Austria and...
, the Dutch company Philips
Philips
Koninklijke Philips Electronics N.V. , more commonly known as Philips, is a multinational Dutch electronics company....
, owner of patents on CD-R
CD-R
A CD-R is a variation of the Compact Disc invented by Philips and Sony. CD-R is a Write Once Read Many optical medium, though the whole disk does not have to be entirely written in the same session....
technology, requested and obtained an order of precautionary seizure over all Princo’s movable and immovable property, including its bank accounts, with a view to ensuring the recovery of damages to be awarded at the end of the liability proceedings.
See also
- Customs Regulation 3295/94Customs Regulation 3295/94Council Regulation No 3295/94 of 22 December 1994 laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods, or for short Customs Regulation 3295/94, is a European Union regulation modifying...
- Directive on criminal measures aimed at ensuring the enforcement of intellectual property rightsDirective on criminal measures aimed at ensuring the enforcement of intellectual property rightsThe European Union directive on criminal measures aimed at ensuring the enforcement of intellectual property rights was a proposal from the European Commission for a directive aimed "to supplement Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights " The...
(proposed) - Copyright law of the European UnionCopyright law of the European UnionThe copyright law of the European Union has arisen in an attempt to harmonise the differing copyright laws of European Union member states. It consists of a number of directives, which the member states are obliged to enact into their national laws, and by the judgments of the Court of Justice of...
- Community Trade MarkCommunity Trade MarkA Community M application in any member state can defeat the entire application, a CTM registration is enforceable in all member states.The CTM system is administered by the Office for Harmonization in the Internal Market , which is located in Alicante, Spain .- Character and advantages :The...
- European Union patent lawEuropean Union patent lawEuropean Union patent law is a subset of European patent law. It also serves as the superset of the patent laws of the individual states of the European Union . The most recent addition to the range of measures currently in place is the Directive on criminal measures aimed at ensuring the...
- Copyright infringementCopyright infringementCopyright infringement is the unauthorized or prohibited use of works under copyright, infringing the copyright holder's exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works.- "Piracy" :...
- IPREDatorIPREDatorIpredator is a virtual private networking service offered by The Pirate Bay with the stated goal of providing internet privacy. It is a response to the introduction of IPRED in Sweden, which will allow copyright holders and law enforcement officials to request personal information about copyright...
External links
- Summaries of EU legislation > Internal market > Businesses in the internal market > Intellectual property > Enforcement of intellectual property rights
- Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights
- Directive 2004/48/EC – national implementing measures
- Adoption procedure of Directive 2004/48/EC
- "Combating counterfeiting and piracy in the single market", Green PaperGreen paperIn the Commonwealth, the Republic of Ireland and the United States a green paper is a tentative government report of a proposal without any commitment to action; the first step in changing the law...
of the European CommissionEuropean CommissionThe European Commission is the executive body of the European Union. The body is responsible for proposing legislation, implementing decisions, upholding the Union's treaties and the general day-to-day running of the Union....
, 15.10.1998 - Report from the office of the European Parliament in the UK
- Information page from AELAssociation Electronique LibreThe Association Electronique Libre is a Belgian non-profit digital rights advocacy and legal organization based in Belgium. Its stated mission is to "protecting the fundamental rights in the information society"...