Remedies Prof. Tanya Aplin King’s College London

Types of remedies Remedies – civil vs criminal; interim vs final Civil –Interim relief –Permanent Injunctions –Damages; Additional Damages –Account of profits –Delivery up –Cross-border measures Criminal –Penalties; imprisonment; seizure, forfeiture & destruction of infringing goods

International context TRIPS Agreement, Part III –Section 1 – General obligations (art 41) –Section 2 – Civil & Administrative Procedures & remedies (arts 42-29) –Section 3 – Provisional measures (Art 50) –Section 4 – Special Requirements Related to Border measures (arts 51-60) –Section 5 – criminal procedures and penalties (Art 61)

Regional context EU Enforcement Directive 2004/48 –Aims to supplement extensive substantive law with procedural law to enforce IPRs –Necessary because of the disparities between Member States on means of enforcement of IPRs –Some of the more controversial aspects of the proposed Directive were deleted – e.g. criminal sanctions and double licence fee provisions

Regional context Proposed EU Directive on criminal measures (not adopted) Obligation to criminalise intentional infringements of IPRs on a commercial scale - Art 3 Wide range of penalties Excluded patent, utility and plant variety rights & parallel imports

Regional context E.g. US/Singapore Free Trade Agreement (2003) –Provisional measures –Choice between actual damages and statutory damages –Recoupment of costs –Destruction of infringing goods

Injunctions against ISPs Art 8(3) Information Society Dir: “Member states shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.” Art 11 Enforcement Dir: “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.”

Injunctions against ISPs C-70/10 Scarlet Extended v SABAM CJEU (Third Chamber) 24 Nov 2011 SABAM - collecting society for authors, composers and publishers of musical works in Belgium Scarlet Extended - ISP provides internet access Users were downloading works in SABAM’s catalogue without authorisation via P2P SABAM sought declaration of copyright infringement and an order requiring Scarlet to bring such infringements to an end

C-70/10 Scarlet Extended v SABAM Court considered Art 8(3) of Directive 2001/29; Art 11 Directive 2004/48 and Arts of 2000/31, as well as data protection Directives and the Charter of Fundamental Rights of the EU (Art 17(2) right to property and right to conduct a business Art 16) The proposed injunction required the installation of a filtering system that monitored all electronic communications made through the ISP’s network; was not limited in time; was directed at future infringements and was intended to protect existing and future works

C-70/10 Scarlet Extended v SABAM This would in effect oblige general monitoring and interfere with ISPs right to conduct its business as well as interference with rights of users (interference with Arts 8 and 11 of Charter - right to protect personal data and freedom to receive or impart information)

C-360/10 SABAM v Netlog CJEU (Third Chamber) 16 Feb 2012 SABAM - collecting society for authors, composers and publishers of musical works in Belgium Netlong - runs an online social networking platform (hosting service provider) Argued that this platform made available musical and audiovisual works in SABAM’s repertoire SABAM sought an injunction against Netlog - argued that grant would be tantamount to a general obligation to monitor which is prohibited by Art 15(1) Directive 2000/31

C-360/10 SABAM v Netlog Concluded: national court is precluded from issuing an injunction against a hosting service provider which requires it to install a system for filtering: –Information which is stored on its servers by its service users –Which applies indiscriminately to all of those users –As a preventative measure; exclusively at its expense and for an unlimited period –Which is capable of identifying electronic files containing copyright protected works

20th C Fox v BT (Newzbin 2) [2011] EWHC 1981 (Ch) (Arnold J) Order sought by claimants under s97A CDPA against BT to block access to Newzbin2 service S.97A CDPA implements Art 8(3) Directive 2001/29 BT subscriber uses BT service to infringe copyright S. 97A requires ‘actual knowledge of another person using their service to infringe copyright’ –This does not mean actual knowledge of a particular infringement but knowledge of use of its service for infringing activity –See recital 59 of Directive 2001/29; the wording of s. 97A

20th C Fox v BT (Newzbin 2) Scope of the injunction to be granted - s. 97A confers a specific and broad jurisdiction to grant an injunction against service providers - not limited to injunctions prohibiting the continuation of infringements of which SP has actual knowledge - can take measures to prevent further infringement Dist. SABAM (AG Opinion) because the order sought here was clear and precise and required BT to implement an existing technical solution which BT already employs for a different purpose; cost is not excessive and provision has been made to enable the order to be varied or discharged in the future

UPC Telekabel v Constantin Film Case C Is Art 8(3) to be interpreted as meaning that a person who makes protected subject matter available on the internet without the rightholder’s consent is using the services of the access providers of persons seeking access to that subject matter? Are private use or temporary copying exceptions permissible only if the original was lawfully reproduced, distributed or made available to the public? Can the injunction prohibit an access provider from allowing its customers access to a certain website if access provider can avoid penalties for breach by showing it had taken all reasonable measures? Can the access provider be required to take specific measures to make it more difficult for its customers to access a website if those measures require not inconsiderable costs and can be easily circumvented?

Criminal provisions Art 61 TRIPS “Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale…Member may provide for criminal procedures and penalties to be applied in other cases of infringement of IPRs, in particular where they are committed wilfully and on a commercial scale.”

Criminal provisions WTO Panel Decision US-China 2009 Claimed China not compliant with Art 61 TRIPs because it included high thresholds for criminal procedures & penalties China argued that criminal enforcement handles series cases while administrative enforcement deals with low- scale infringements Not in breach of Art 61 - lack of evidence of what constituted a commercial scale in Chinese marketplace - requires product and market specific demonstration of what constitutes ‘commercial scale’ not simply any commercial IPR infringement

Criminal provisions E.g. United Kingdom making and dealing in infringing articles - make for sale or hire, non-private or non-domestic importation; distribute in the course of business to such an extent as to prejudicially affect copyright owner articles which they know or has reason to believe is an infringing copy –6 months - 10 years imprisonment or 50,000 fine or both Communicating work to the public in the course of business or to such an extent as to prejudicially affect the copyright owner if he knows or has reason to believe that he is infringing copyright –3 months - 2 years imprisonment or 50,000 fine or both –s.107(1); s107(2A) CDPA 1988

Criminal provisions E.g. United States Willful infringements of copyright if committed –For purposes of commercial advantage or private financial gain –Reproduction or distribution during a 180 period of copies with a total retail value of more than $1,000 –By the distribution of a work being prepared for commercial distribution, by making it available on a computer network accessible to the public; if know (or should have known) that it was intended for commercial distribution –Imprisonment 1-10 years; fines up to $250,000

Why criminalise? Is there harm? Immorality? Advantages? Shock value; costs; speed Disadvantages? Limited remedies, higher standard of proof, disclosure duties; Possibility of abuse by rightholders?