Copyright Enforcement in the
Digital Environment
– Current Issues
Vilnius,
December 15, 2015
Eun-Joo MIN, Building Respect for IP Division
WIPO’s Role in
Building Respect for IP
2
International
Cooperation
Policy
Dialogue
Capacity
Building
Education
and
Awareness
Raising
WIPO Development Agenda
and IP Enforcement
Recommendation 45 – IP Enforcement
“To approach IP in the context of broader societal interests and
especially development-oriented concerns keeping in mind that “the
protection and enforcement of intellectual property rights should
contribute to the promotion of technological innovation and to the
transfer and dissemination of technology, to the mutual advantage of
producers and users of technological knowledge and in a manner
conducive to social and economic welfare, and to a balance of rights
and obligations”, in accordance with Article 7 of the TRIPS
Agreement.”
4
Understanding the Environment
5
Understanding the Environment
Value of creative industry
Impact of piracy
Consumer perception
6
Overall Contribution of Copyright Industries
to GDP and Employment
7
2012
Prepared by:
Europos socialiai, teisiniai ir
ekonominiai projektai
(ESTEP)
Supported by:
the Ministry of Culture
of the Republic of Lithuania
http://www.wipo.int/copyright/en/performance/#studies
8
9
IFPI
Digital Music Report 2015
- Market Overview
10
Online copyright infringement
Peer-to-Peer file-sharing
Cyberlockers downloads
Streaming
[…]
https://en.wikipedia.org/wiki/Megaupload#/media/File:Mega_manager.png
ICC/BASCAP Report on
Consumer Attitudes and Perceptions
PURCHASE FREQUENCY / Product Category
Average 5 COUNTRIES
64%
DVDs or CDs
Clothes
55%
Software for computers
CF POTENTIAL
ON THIS CATEGORY
50%
Luxury items e.g. purses, watches,
jewelry, leather goods
42% I only ever buy this
product as a
counterfeit
Perfume
38%
Toys
36%
Cosmetics e.g. make-up, lotion
I purchase this kind
of counterfeit
product quite
regularly
29%
Auto Parts
28%
Food products or Non-alcoholic
beverages
27%
Hygiene products e.g. soap,
shampoo, toothpaste
I purchase this kind
of counterfeit
product from time to
time
27%
Small electronic gadgets e.g.
mobile phone, camera
26%
Alcoholic beverages
I seldom purchase
this kind of
counterfeit product
23%
Cigarettes
20%
Medicines
19%
0
10
20
30
40
50
60
© ICC/BASCAP
Q4: For each type of products listed below please tell me if you have ever purchased counterfeit or illegal copies and how often you do so?
What do students think about legal and illegal sources of
content?
Do students care whether they use
legal or illegal websites for
downloading?
Is it simple to know whether the
website you use for downloading is
legal or illegal?
[in %]
WIPO/ACE/8/4 Surveys on Consumers’ Awareness and Attitudes in
Relation to Counterfeiting in Hungary
Hungarian Intellectual Property Office
What is the attitude of students towards paying for online
content?
Eight out of ten students would not pay for downloading content.
Have you ever paid for downloading
film, music, computer game etc.?
Would you pay for downloading
content (music, film, e-book) from the
Internet?
[in %]
WIPO/ACE/8/4 Surveys on Consumers’ Awareness and Attitudes in
Relation to Counterfeiting in Hungary
Hungarian Intellectual Property Office
14``
European Citizens and Intellectual Property:
perception, awareness and behaviour
96% of Europeans believe that IP is important because it supports
innovation and creativity by rewarding inventors, creators and artists
for their work.
At individual level:
34% of Europeans think that buying counterfeit goods can be
justified to save money;
38% say purchasing counterfeits can be justified as an act of
protest against a market-driven economy;
22% think downloading is acceptable when there is no legal
alternative;
42% of Europeans think this is acceptable for personal use.
15
European Citizens and Intellectual Property:
perception, awareness and behavior
“The difference between the two opinions can be
explained, according to the survey, by the fact that many of
those questioned believe that IP does not benefit them
personally or that the IP system does not meet their
expectations, in areas like price, availability, diversity or
quality.”
“EU Citizens value intellectual property,
but justify infringements in certain cases”
OHIM Press Release, Nov 25, 2013
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International Normative Framework
International Normative Framework
WTO Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement)
Part III Enforcement of Intellectual Property Rights
WIPO Internet Treaties
Protection of technological protection measures
(Art. 11 WCT / Art. 18 WPPT)
Protection of right management information
(Art. 12 WCT / Art. 19 WPPT)
(WIPO Draft Broadcasting Treaty)
European Union Normative Framework
E-Commerce Directive (Directive 2000/31/EC)
Information Society Directive (Directive 2001/29/EC)
Enforcement Directive (Directive 2004/48/EC)
Information Society Directive
Article 8(3): “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.”
Recital 59: “… intermediaries are best placed to bring such infringing
activities to an end … rightholders should have the possibility of
applying for an injunction against an intermediary who carries a third
party's infringement of a protected work or other subject-matter in a
network. …”
Enforcement Directive
Article 11: “… 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 …”
E-Commerce Directive
Defines limitations on the liability of internet intermediaries
Article 15: Prevents the Member States from imposing on
internet intermediaries a general obligation to monitor
Article 16: Encourages self-regulation for notice and
takedown (codes of conduct)
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Remedies
23
Remedies
Injunctions
Right of Information
Damages
Disposal and Destruction
Provisional Measures
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Remedies
Demand side enforcement (against end-users)
Graduated response
Supply side enforcement (against distributors; against
intermediaries)
Filtering
Site blocking
Domain seizure
Statutory; voluntary; courts
Notice and Takedown
Copyright owner sends notice to ISP
ISP takes accused page down “expeditiously”
If web content owner responds with “Counter notice” the
page must be restored
Implemented in:
Australia, China, El Salvador, Finland, France, Germany, Hungary,
India, Italy, Japan, Malaysia, Mongolia, New Zealand, Republic of
Korea, Singapore, South Africa, Spain, and UK …
26
Graduated Response
Warnings - “three strikes and you're out”
These actions may vary among different jurisdictions,
including suspension or termination of service, capping
of bandwidth, and blocking of sites, portals and protocols
Cooperation of intermediaries needed
In some countries:
Statutory
Voluntary
Judiciary
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Graduated Response
France: HADOPI Law (2009)
United Kingdom: Digital Economy Act 2010
Independent appeal process – burden of proof on copyright
owner
Obligations on ISPs
High Court, BT, TalkTalk et al., 20 April 2011: “DEA does
comply with EU law”
New Zealand: enforcement action after third notice – possible
orders are :
Copyright Tribunal - payment of a sum up to $ 15,000; and/or
District Court - Internet Protocol Address Provider to suspend the
Internet account for up to 6 months.
Chile, Republic of Korea
USA: “Six Strikes Scheme” (since February 2013)
Injunctions - Intermediaries
Lithuania Law on Copyright and Related Rights 2014
Article 78 Right to Apply for an Injunction against Intermediaries
1. When defending their rights, owners of copyright (…) shall have
the right to apply for an injunction against an intermediary, with the
aim of prohibiting him from rendering services in a network to third
parties who make use of these services infringing a copyright,
related right or sui generis right. (…)
Injunctions
L’Oréal SA v eBay International AG, C-324/09
− CJEU held that injunctions aimed at bringing an end to an
infringement, as well as preventing further infringements may be
imposed on intermediaries regardless of any liability of their own
− Injunctions must be effective, proportionate, and dissuasive and
must not create barriers to legitimate trade”
Injunctions
UPC Telekabel Wien, C-314/12
− Concerned injunction ordering Austrian ISP to block access to
kino.to, a website from which users could stream or download
copyright-protected films
− CJEU held ISP may be ordered to block its customers’ access to
a copyright-infringing website
− Measures taken should not unnecessarily deprive lawful access to
information
− Measures should be effective in preventing unauthorised access to
the protected subject-matter
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Site blocking
United Kingdom:
− Twentieth Century Fox Film Corp & Others v British
Telecommunications Plc [2011] EWHC 1981 (Ch) (20C Fox)
− 1967 Limited, Dramatico Entertainment Limited, Infectious Music
Limited, Liberation Music Pty Limited, Simco Limited, Sony Music
Entertainment UK Limited, and Universal Music Operations Limited v
British Sky Broadcasting Limited, British Telecommunications PLC, EE
Limited, Talktalk Telecom Limited, and Virgin Media Limited [2014]
EWHC 3444 (Ch)
− Twentieth Century Fox and Others v Sky UK Limited and Others
[2015] EWHC 1082 (CH)
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Site blocking
Argentina:
− On June 26, 2014, the 67th District Federal Court ordered 11 ISPs to
block 256 Pirate Bay IP addresses and 12 domains.
India:
− On July 1, 2014, following a complaint by Sony-owned Multi Screen
Media, the Delhi High Court ordered 219 torrent sites to be blocked.
Italy:
− On July 19, 2014, the Court of Rome ordered all local ISPs to restrict
access to 24 websites that facilitated the distribution of pirated movies.
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Site blocking
Germany:
− German Federal Supreme Court (BGH) in November 2015, GEMA v
Deutsche Telekom; Universal Music, Sony and Warner Music Group v
Telefonica's O2 Deutschland: blocking injunctions permissible but
right holder must have first taken steps against the primary
infringer.
Spain:
−
Criminal court in the northern Spanish city of Zaragoza in May 2014:
ordered local ISPs to block several sites allegedly engaged in copyright
infringement.
− Court of Instruction No.10 in July 2014: reversed and ordered for
several file-sharing sites to be unblocked by ISPs; “Insufficient
grounds” for maintaining the blocking “especially when it is not
absolutely necessary for the continuation of the investigation.”
34
Site blocking – Statutory Provisions
Singapore
− Copyright Act 2014
Australia
− Copyright (Online Infringement) Act 2015
Thailand
− Copyright Act 2015
Filtering
Scarlet Extended v SABAM, C-70/10 and SABAM v
Netlog, C-360/10
Permanent filtering technologies to an ISP and the
owner of a social network platform
CJEU precluded injunction against ISP filtering:
–
–
–
–
–
all electronic communications passing via its services;
which applies indiscriminately to all its customers;
as a preventive measure;
exclusively at its expense; and
for an unlimited period.
Fair balance between IP and other fundamental rights
(right to protection of personal data, freedom to
information, freedom to conduct business)
36
Right of Information
Lithuania Law on Copyright and Related Rights 2014
Article 79 Right of Information
1. (…) the court may … order that information on the origin and
distribution networks of copies of the works, other objects of
the rights protected under this Law, goods or services
which infringe copyright … be immediately provided by the
person…
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Right of Information
Promusicae v Telefonica, C-275/06
Data on P2P users of the KaZaA network sought from
ISP
Tension between data protection and online enforcement
CJEU held:
– Directives do not require an obligation to communicate personal data
in order to ensure effective protection of copyright in the context of civil
proceedings
– Fair balance to be struck between the various fundamental rights
protected by the Community legal order.
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Right of Information
Coty Germany GmbH v Stadtsparkasse Magdeburg C580/13 (July 16, 2015)
“It follows from all the foregoing that the answer to the question referred
is that Article 8(3)(e) of Directive 2004/48 must be interpreted as
precluding a national provision, such as that at issue in the main
proceedings, which allows, in an unlimited and unconditional manner, a
banking institution to invoke banking secrecy in order to refuse to
provide, pursuant to Article 8(1)(c) of that Directive, information
concerning the name and address of an account holder.”
39
Right of Information
Dallas Buyers Club LLC v iiNet Limited (2015) Federal
Court of Australia
– Major ISPs ordered to disclose details of their respective customers
to copyright holders for alleged illegal movie downloads
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Domain Seizure
https://en.wikipedia.org/wiki/Megaupload#/media/File:MegaUpload_FBI-Banner.jpg
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Voluntary Mechanisms
US MoU
Signatories:
MPAA, RIAA, Walt
Disney Studios,
Paramount
Pictures, AT&T,
Verizon, Comcast,
Time Warner
Cable, etc.
Online copyright
infringement
Establishment of
Center for
Copyright
Information (CCI)
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Procedural
Complexity
Time
Court
Volume
Cost
UDRP
Remedies
Takedown, Account
Rights Protection Mechanisms
Suspension/Termination
, Damages, etc
(N&TD, 1-Click De-listings)
Automated C&D Letters
Bulk De-Listings
Filter
Automation v.
Manual Review
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Court

Laws
national,
plurilateral,
multilateral
UDRP

BestPractices;
Industry Code
RPMs
Automated C&D Letters

Bulk De-Listings
Filter
Terms and
Conditions
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Benefits of “Voluntary Programs”
Flexibility
Scalability
Timely implementation
Reflection of stakeholders’ interests and needs
Bottom-up evolution
Consensual and collaborative in design
Development with evolution in business, technology, law,
etc.
Reduce uncertainties and litigation
Aimed at providing safe harbors
Reduce jurisdictional issues
Yet, private regulation of public space?
45
Effectiveness of Enforcement
Measures
46
ACE
WIPO Advisory Committee on Enforcement WIPO/ACE/10/20
47
WIPO Advisory Committee on Enforcement WIPO/ACE/10/20
48
WIPO Advisory Committee on Enforcement WIPO/ACE/10/20
49
WIPO References
Prof. Lilian Edwards, Role and Responsibility of Internet
Intermediaries in the Field of Copyright and Related Rights
Prof. Daniel Seng, Comparative Analysis of the National
Approaches to the Liability of Internet Intermediaries
Prof. Ignacio Garrote Fernandez-Diez, Comparative Analysis on
National Approaches to the Liability of Internet Intermediaries for
Infringement of Copyright ad Related Rights
www.wipo.int/copyright/en/internet_intermediaries/
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European Commission December 9, 2015
(until April 1, 2016)
Public Consultation on the Evaluation and Modernisation of
the Legal Framework for the Enforcement of Intellectual
Property Rights
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Private International Law
Informing International Policy Debate
Private International Law Aspects of IP
Internet infringements trigger private international law
questions
 Which jurisdiction is competent?
 Which law applies?
 Can foreign judgments be recognized and enforced?
Ongoing activities by the International Law Association (ILA)
and the Hague Conference on Private International Law to
reach international agreement on these issues
Mr. P - © in 12
songs
Company M –
produced
unauthorized
CDs
Company Z –
marketed
unauthorized
CDs through
internet
websites
Is there ©?
Where is the © protected?
Is there © infringement?
Damages?
In which country???
Mr. P - © in 12
songs
Which court decides?
Which law applies?
Where is the judgment
enforced?
Center of interest? Intention
to target? Causal event?
Predicate act? Closest
connection?
Company M –
produced
unauthorized
CDs
Company Z –
marketed
unauthorized
CDs through
internet
websites
Pinckney v KDG Mediatech AG.
(CJEU Case C-170/12)
Toulouse Regional Court – Jurisdiction challenge unsuccessful
Toulouse Court of Appeal – Jurisdiction challenge successful
French Court of Cassation – referral to CJEU
Brussels I Regulation (Recast): Article 7 Special Jurisdiction
“A person domiciled in a Member State may, in another Member State,
be sued: … in matters relating to tort, delict or quasi-delict, in the
courts for the place where the harmful event occurred or may occur”
Pinckney v KDG Mediatech
(Case C-170/12, 3 October 2013)
Pinkney, resident in France, had copyright in 12 songs.
Mediatech in Austria made unlicensed copies on CD. 2
UK firms sold copies via web sites accessible in France.
The «harmful event» covers both the place of the
damage and the place of the event causing the damage.
CJEU: If this was an infringement of the right in France,
the place of the damage is France, even if the events
causing the damage took place elsewhere.
No need to show defendant «directed» activity to forum.
Court can only assess damage caused within France.
Pinckney v KDG Mediatech AG.
(CJEU Case C-170/12)
CJEU – Brussels I Art 5(3) intended to cover both the place where the
damage occurred and the place of the event giving rise to it
“… in the event of alleged infringement of copyrights protected by the
Member State [France] of the court seized, the latter has jurisdiction to
hear an action to establish liability brought by the author of a work against
a company established in another Member State [Austria] and which has,
in the latter State, reproduced that work on a material support which is
subsequently sold by companies established in a third Member State
[U.K.] through an internet site also accessible with the jurisdiction of the
court [France] seized. That court has jurisdiction only to determine the
damage caused in the Member State within which it is situated.”
See also Pez Hejduk v EnergieAgentur.NRW
(CJEU 441/13)
“Whether an English court may exercise jurisdiction in a claim against
persons domiciled in England for infringement of copyright committed
outside EU in breach of the copyright law of that country?”
Lucasfilm Limited and others v. Ainsworth and another
Lucas
Film
 Film released in 1977
 “Imperial Stormtroopers”
conceived by Lucas and
1976, given expression
in 3-dimensional form by
Mr. A.
UKSC 39 [2011]
Mr.
Ainsworth
 In 2004 uses original tools
to make versions of helmet
and armor
 Sells btw US 8,000-30,000
of goods in the U.S.
http://starwars.com/explore/encyclopedia/groups/stormtroopers/
“Whether an English court may exercise jurisdiction in a claim against
persons domiciled in England for infringement of copyright committed
outside EU in breach of the copyright law of that country?”
Lucasfilm Limited and others v. Ainsworth and another
UKSC 39 [2011]
[Lucasfilm obtains default judgment for USD 20 million against Mr.
Ainsworth in the U.S.]
U.K. High Court – US copyright claims justiciable; US copyright
infringed
U.K. Court of Appeal – US copyright claims not justiciable
U.K. Supreme Court – US copyright claims justiciable in English
proceedings (provided there is a basis for in personam jurisdiction
over the defendant)
http://starwars.com/explore/encyclopedia/groups/stormtroopers/
Yahoo! Inc. v. Wang Lu
Beijing Higher People’s Court, China
Plaintiff: Wang
Lu (Chinese
citizen)
Yahoo! Inc.
(Company
registered in the
U.S.)
Infringement
discovered
through
computer
terminal
(Haidian District,
Beijing)
Internet server
and computer
terminal relating
to infringement
(U.S.)
Yahoo! Inc. v. Wang Lu
– Beijing Higher People’s Court, China
Jurisdiction found
“Supreme People’s Court’s Provisions on Certain Issues Related to
the Application of Law in the Trial of Civil Cases Involving Disputes
over Infringement of the Right of Dissemination through Information
Networks (2012)
“where neither the place where infringement takes place nor the place
where the defendant is domiciled is within China, the location of the
computer terminal(s) or other equipment ion which the plaintiff has
discovered the infringing content may be deemed as the place where
infringement takes place.”
Normative and Policy Initiatives
Hague Conference on Private International Law
“Soft Law” Initiatives
American Law Institute Principles Governing Jurisdiction, Choice of Law
and Judgments in Intellectual Property in Transnational Disputes (2007)
Transparency Proposal on Jurisdiction, Choice of Law, Recognition and
Enforcement for Foreign Judgments in Intellectual Property (2009)
Principles of Private International Law on Intellectual Property Rights –
Joint Proposal of Private International Law Associations of Republic of
Korea and Japan (2010)
Principles on Conflict of Laws in Intellectual Property – European Max
Planck Group on Conflict of Laws in Intellectual Property (2011)
International Law Association Committee of Intellectual Property and
Private International Law (2016?)
Hague Conference on Private International Law
Draft Convention on the recognition and enforcement of
judgments – adoption process may begin in June 2016.
Article 5 Bases for recognition and enforcement
1. A judgment is eligible for recognition and enforcement if one of the
following requirements is met …
g) the judgment ruled on an infringement of a patent, trademark, design
or other similar right required to be deposited or registered and it was
given by a court in the State in which the deposit or registration of the
right concerned has taken place;
h) the judgment ruled on the validity or infringement of copyright or
related rights and the right arose under the law of the State of origin.
Contributing national experts:
Argentina (Gustavo P. Giay)
Australia (Andrew F. Christie)
Belgium (Alain Strowel)
Brazil (Gabriel Leonardos)
Canada (Christopher J. Pibus)
Chile (R V Santelices/M Morales)
China (Jacob Chen)
Denmark (Knud Wallberg)
India (Pravin Anand)
Ireland (Alistair Payne)
Israel (Jonathan Agmon)
Italy (Anna Carabelli)
Malaysia (Hariram Jayaram)
Netherlands (Wolter Wefers Bettink)
New Zealand (Warwick Smith)
Republic of Korea (Ik Hyun Seo)
Switzerland (Jacques de Werra)
Synthesis by: Prof. Andrew Christie
56 cases from 19 jurisdictions
Cumulative criteria:
Involving private international law aspects
In online IP infringement disputes
With cross-border elements
33%:copyright
related
Source: WIPO 2015 Report “Private International Law Issues in
online Intellectual Property Infringement Disputes with Cross-Border
Elements – An Analysis of National Approaches (by Prof. A. Christie)
63%:
outside
defendant’s
forum
Source: WIPO 2015 Report “Private International Law Issues in
online Intellectual Property Infringement Disputes with Cross-Border
Elements – An Analysis of National Approaches (by Prof. A. Christie)
Source: WIPO 2015 Report “Private International Law Issues in
online Intellectual Property Infringement Disputes with Cross-Border
Elements – An Analysis of National Approaches (by Prof. A. Christie)
Typical cross-border online IP infringement case
Online marketing using a trademark or online distribution of
copyrighted work
Action by local plaintiff against a foreign defendant, in relation to a
foreign action that caused local damage to local IP right
Validity of IP right not challenged
No parallel proceedings
Seeking remedies to be enforced locally
Court will apply local law
WIPO’s Role in
Building Respect for IP
• Global Congress on
Combating
Counterfeiting and
Piracy
• Counterfeit Medicine
• Environmentally-safe
disposal of
counterfeit goods
• IP and Private
International Law
• Legislative advice
• Training
• Tools
72
International
Cooperation
Policy
Dialogue
Capacity
Building
Education
and
Awareness
Raising
• Advisory Committee
on Enforcement
• National awareness
strategies
• Tools (animated
cartoons;
competitions;
curricula)
WIPO Casebook
http://www.wipo.int/edocs/pubdocs/en/intproperty/
791/wipo_pub_791.pdf
74
WIPO Youtube Channel
75
76
Proper balance in IP enforcement
Legal enforcement measures
Look at IP enforcement from the perspectives of the
users of the system, consumers and the society
Better understand the socio, economic reasons fuelling
counterfeiting and piracy
Better understand the impact of counterfeiting and piracy to
society
Buttress by empirical research and evidence
Forster an IP culture through education and awareness
Development of better business models which address
affordability and accessibility
Evolution of alternate models of IP enforcement
77
eunjoo.min@wipo.intt