Enforcement of IP Rights

Question 1

1

Answer 1

pirate bay have a database which help user to find illegal stuff. active activity

youtube passive activity

Question 2

Is it without enforcement the IP regulation (treaties, national statetes) almost useless ?

Answer 2

1

Question 3

IP enforcement regulation

Answer 3

• national level:
  national law
  eu law (enforcement -directive, regulation 608/2013

-international level
TRIPS Agreement
Other regional treaties (e.g ACTA Anto-counterfeiting Trade Agreement, Transatlantic Trade and Investment Partnership (TTIP)

Question 4

Which jurisdiction and applicable law?

Answer 4

1

Question 5

What types of enforcement measures ?

Answer 5

civil measures (injunctions, seizure, damages)

#Criminal measures 
What (Art. 61 TRIPS and many legislations) criminalization limited to TM counterfeiting (= imitation) and copyright piracy (= copy)

• Conditions
• Willfulness
• Commercial scale Sanctions

-Sanctions:
• Art. 61 TRIPS: “Remedies available shall include”: imprisonment and/or monetary fines sufficient to provide a deterrent effect

• Art. 61 TRIPS: “In appropriate cases”: seizure, forfeiture,
destruction of the infringing goods and of any material 11

Administrative measures (border measures)

What (Art. 51-60 TRIPS)
• Make available procedures that lead to suspension of
release by customs authorities
• Mandatory for trademark; copyright

Conditions
• evidence of prima facie infringement
• detailed description of the goods required

Procedures
• notice of suspension and 20 days to initiate proceeding
leading to decision on merits

Question
• How to deal with goods in transit?

Injunction

• « An injunction is a remedy against further injury and the court will not make the order if satisfied that no such injury is likely to occur » ([2000] Coflexip SA v. Stolt Comex Seaway Ms Ltd, EWCA Civ 242 (UK)) -> stop the injury before it happened and deter
• « Damages look to the past and are designed to compensate the plaintiff for the harm inflicted on him. The
injunction look to the future » (Coflexip Stena Offshore Ltd, Coflexip S.A., [1999] EWCH Patents 258) -> Injunction vs damages
• Chronological perspective

Ex parte injunctions

• « The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular (…) where there is a demonstrable risk of evidence being destroyed » (art. 50 para. 2 TRIPS) => high conditions

(2) Preliminary injunction
III. Types of measures
• Urgency justifies an order at an early stage (injury likely to occur: « [t]he purpose of a preliminary injunction is not to conclude the merits of the controversy, but merely to preserve the status quo until a more considered decision on the merits is possible.» (Lektro-Vend Corp. v. Vendo Co., 660 F.2d 255, 264)
• « A plaintiff seeking a preliminary injunction must establish that [1] he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest » (Winter v. Natural Res. Def. Council, Inc. 555 U.S. 7 (2008))

Question 6

What type of infringement ?

Answer 6

1

Question 7

Why criminalizing (Prons and Cons)?

Answer 7

1

Question 8

Why discriminate between IP rights?

Answer 8

1

Question 9

What is the meaning of “on a commercial scale”?

Answer 9

1

Question 10

When we have online infringement ?

Answer 10

1) is it an infringement?
if answer yes, we need to identify who is the infringer.
Provider the access to the internet may be the infringer
the user who uploading the content also can be infringer. (Swiss.com)
2) where they are located
which measures is available

Piratebay is move form one country to another country very actively

if you can go directly agains the user, you can civil measures injunction or even damages.

But users are also abroud so you can try to act agains active provider (Piratebay) and he is also abroad and you definitely to act in Switzerland or in Europe. so to have the effect in you own country you will try to act agains next door infringer, and now we have a new tool a new measure: to act agains Swiss.com internet provider.

Question 11

When we have online infringement ?

Answer 11

1) is it an infringement?
if answer yes, we need to identify who is the infringer.
Provider the access to the internet may be the infringer
the user who uploading the content also can be infringer. (Swiss.com)
2) where they are located
which measures is available

Piratebay is move form one country to another country very actively

if you can go directly agains the user, you can civil measures injunction or even damages.

But users are also abroud so you can try to act agains active provider (Piratebay) and he is also abroad and you definitely to act in Switzerland or in Europe. so to have the effect in you own country you will try to act agains next door infringer, and now we have a new tool a new measure: to act agains Swiss.com internet provider. ask the provider to block the infringement.

direct infringer you ask civil measures for damages.
if you sue the internet provider you asking for injunction, blocking the injunction.

its difficult to find balance when you ask the injunction because there is various right to be taken into account:
right to be protected with your own copyright content and
freedom of the commerce (he may continue to do his activity without having barriers
and the freedom of speech and freedom of express the Internet users

there are interest of the right holder, internet provider and users.

its regulated
case law: - piratebay case doc.#41

Question 12

1

Answer 12

copyright protect ideas expression, i can copy ideas of my friends it free, but when i copy materialized it will be infringement.

when it comes to exclusive rights:
1)- economical rights (integrity ??? right) to grant the right holder and monetize comertialize work
therer is right to copy, (cppy hard copy but also downloadign)

right to distrubute and broadcast
right to comunicate to the public (upload) when I upload the content I exercise to communicate to the public.

2) moral right
the relationship between the artist/author and its work. (paternity right) to be recognized as the author of the work. the right to object to any modification of the work.

Exceptions and limitations (BC tree steps test) in civil law (private use, parody)

Question 13

1

Answer 13

linking and hyperlinking - when i post on the facebook the link to the conference or the website which I like is it the infringment?

framing and embaninig - is it infringment? it is almost the same idea as linking the difference that the content directly displays within social network or website e.g. when I do F or E on facebook the video will be displayed directly on the website

F you have always the initial source mentioned
E there content directly displayed and the user does know where this content is come from.

Question 14

1

Answer 14

if it is uploaded illegally it is the question of the right of communication.

Question 15

article 6 of WCT

Answer 15

is the right of the distribution.

Question 16

What is licence agreement ?

Answer 16

a formal agreement giving someone permission to use or do something.

Question 17

§

Answer 17

internet providers (also passive activity) and 
Facebook etc (host providers) if they do not control the content (passive activity) they are not liable  (aka save harbor) limitation of liability. 

once they will know for infringing they need to remove the content.

youtube just not doing the hosting provider (passive activity but they provide the content the active role suggestion to videos, music. so they need to be liable.

blocking injunction: scarlet v seven court said
there is no duty to motinor
facebook just need to notify and take it down. blocking of injuctino who will pay the cost of blocking injuction and how to assess the proportionality.

10 users and 1 providing the initianal content and 10th using the content

Question 18

Organizations involved in IP enforcement:

Answer 18

• International and Inter-Governmental (WTO, WCO, WHO)
• Regional and national (Universal Postal Union, Interpol)
• Corporate associations/entities (IFPI, Stop-piracy)

Question 19

What is the TRIPS enforcement measures?

Answer 19

Part III from art 41

Criminal
Administrative
Civil

Question 20

First steps as IP lawyer?

Answer 20

What is the jurisdiction?
What is the applicable law?
what are the types of enforcement available?
- criminal to punish)
- civil (mainly injunctions or damages)
administrative (to seize the goods and not them cross the border)

Question 21

What 3 types of case?

Answer 21

1. Classical counterfeiting cases ( watches) ACTA
2. Complex infringement case (incorporated for instance: iPhone, because there is 1000 patents and if there is one of them is infringe create a complex case) “Smartdata” is another example, they claimed that Iphone incorporated invention of data which can control the phones and TV.
   patent infringement they claimed.
3. Creative uses (the user try to make a creative use, it can be infringement if there is not fair use or good faith.

Question 22

Criminal measures

Answer 22

the goal to punish infringer.
limited these IP tredamark counterfeiting and copyright piracy.

What (Art. 61 TRIPS and many legislations) criminalization limited to TM counterfeiting (= imitation) and copyright piracy (= copy)

Conditions:

• Willfulness
• Commercial scale Sanctions

Sanctions:
Art. 61 TRIPS: “Remedies available shall include”: imprisonment and/or monetary fines sufficient to provide a deterrent effect
Art. 61 TRIPS: “In appropriate cases”: seizure, forfeiture,
destruction of the infringing goods and of any material

Question 23

What is criminal pros and cons?

Answer 23

Pros:
- when the claimant asked for criminal measures, authority starts investigation for free, and you do not need make any effort in preceding. Authorities do their job automatically.
Cons:
- in civil measures you need to provide proofs
- no compensation damages
- difficult to claim agains such companies as Apple

Question 24

what is commercial scale ?

Answer 24

commercial scale’ means any infringement of an intellectual property right committed to obtain direct or indirect economic or commercial advantage;

Question 25

Why discriminate between IP rights?

Answer 25

• it was easy
  TRIPS they decided to limit trademark and copyright because that was easy for they custom authorities, for the criminal authorities,

they found its very difficult to assess the criminal measures for patent, sometimes its difficult to find a scope for a patent, intention of the infringer.

Question 26

What is the meaning of « on a commercial scale »?

Answer 26

the case under WTO, they tried to define what is it. who is doing it professionally!

Question 27

From counterfeiting effects

Answer 27

Negative effect 
reputational demage
loss ot sale 
lost of inovation
lost of taxes 
lost of working places 

Positive effect:
-24h free copyrighted platforms work increased customes
we know more artists or actors.
- trademark. counterfiter products of Rolex increased the value of the Rolex. people more want to buy original one.

Question 28

Boarder measures

Answer 28

• What (Art. 51-60 TRIPS)
• Make available procedures that lead to suspension of
release by customs authorities
• Mandatory for trademark; copyright
• Conditions
• evidence of prima facie infringement
• the detailed description of the goods required
• Procedures
• notice of suspension and 20 days to initiate proceeding leading to the decision on merits
• Question
• How to deal with goods in transit?

authorities must stop the counterfeiting goods to cross the border. (the travel of the goods)

they are limited to copyright works and trademark.

The claimant needs provide prima facie, the claimant needs to provide the proof of your claim.

claimant need to notifiate custom authority needs to seizure the goods. notified the claimant and after the claimant has 20 days to initiate the providing.

goods in transit, they won’t seized if there will be a proof that they going to the third country and no way it comes back to EU.

detailed prescription of the goods which needs to be seized. annex attached his patent or sample of infringing goods.

in Switzerland, customs authority may seize the countering goods even they are for private goods.

Question 29

Civil Measures

Answer 29

injections and damages

an injunction to stop or to seize before there appear more damages

damages its to compensate
injunction looks more to future

3 types of injunctons:
1. ex parte (the emergency situation to prevent future damages) injunction provided by authority (without hearing defendant) - first injunction requested, defendant, does not occur at this stage.
2. Preliminary injunction ( they will allow the defendant to hear) status quo present (case Winter v. Natural )
facts natural resort defence claimaid that US military was using sonare drills which can damage the whales, so eniviromental organization claimed to stop such military drills, we need to ask tree those conditions.

« A plaintiff seeking a preliminary injunction must establish that [1] he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest »

Apple v Amazon

App Store vs Amazon appstore for Android.

claimant argument :
- trademark infringment of words App Store. (complex type of cases)
Defandant argument:
- No chance at all to succeed of the merits
- App Store it is such general and descriptive term.

Injunction to be granted?
Preliminary injunction: rejected because the plaintiff is not likely to succeed
on the merits (trademark infringement and dilution were unlikely to succeed on the merits) (2011) -> set the bar high for Apple to succeed on the merits for trademark infringement
• Permanent injunction: Apple accused Amazon of misusing the “app store” name in connection with the sales of apps for Android devices, while Amazon argued that the term “app store” had become so generic that using it would
not mislead customer -> parties announced that they had reached a settlement (2013)
3. Permanent injunction

(1) that it has suffered an irreparable injury; (2) that remedies available at law are inadequate to compensate for that injury and (3) that the public interest would not be disserved by a permanent injunction » (eBay v. MercExchange, L.L.C., 547 U.S. 388 (2006))

1. irrparable injury
2. inadequate to compensate
   3 public interest

ebay case

Claimant: said that ebay was using our patent without authorization. They even proved thanks to this system represent 30% of the company.
patent infringment.
very hight dameges.

1. yes they suffer irraparable injury
2. is it inadequate to compensate

Hold: no injunction should be granted but only damages.

Inunction to be granted?
• (1) District Court granted damages ($25m) but denied injunction (2003)
• (2) Court of appeal reversed and granted an injunction to stop using the patent, because there is a “general rule that courts will issue permanent
injunctions against patent infringement absent exceptional circumstances“
(2005)
• (3) Supreme Court concluded that a permanent injunction in patent
infringement cases can be issued only if the plaintiff can show that the
issue satisfies a four-factor test (2011)
• -> parties announced that they had reached a settlement (2011)

Question 30

Damages

Answer 30

compensate the claimant for occurred harmful injuries
there are various types of damages.

claimant may ask lost of profits
they need to proof it

(1) demand for the infringed product,
(2) absence of non-infringing substitutes,
(3) capacity of the right holder to exploit the demand,
(4) amount of the profit it would have made

case Panduit Corp v. Stahlin Bros Fibre Works

(2) Depreciation of the IP Right

• Amount by which the relevant IP right has been depreciated by the infringement
• Infringement must cause a diminution in the capital value

e.g: bigOtire case
goodyear was claiming that BigOtire was infringing its patents tire. and they asked depreciation of the IP right. Big O Tire said we sell only in these 16 states, so depreciation will be based only on this 16 states and no on all of another.

Unfair profit (they claim another type of measures)

Addidas was claimant all the profit made by selling all the shoes. 3 lines and not equal to 2 lines so the product its not the same. price was make to the quality of and quantity, and the court decideted to reduce to 10% of damages.

Trip Trap chair where still a bit different one more light and another one is heigh and very solid. price one is cheaper adn second one more expensive .

Apple v Samsung
court have to decide there was infringing of the Apple’s design phone. $400 m. Apple was calculated on the sales profit.
Court said in such case its difficult on what we should count the whole profit from all consumers or just small amount of profit. its not clear even for vk car do they buy this car for his car or for his functionalities we need to reject the case.

!!! Reasonable royalty !!!

to allow to grant royalties that have been paid of infringing the rights. so usually based on the calculation on the royalties that should be paid.

Jurisdictions allow usually to claim a reasonable royalty from the defendant
« But for » principle not applicable
Calculating the reasonable royalty: Willing buyer/willing seller test 5-20% of infringer’s sales
See 15 Factors of Georgia-Pacific v. US Plywood Corp, 446 F2d 295

Some jurisdictions give the court a discretion for fixed or increased damages

• Compensatory, deterrent and punitive
• Statutory: e.g. US Copyright Act § 504(c) $750 - 30’000 per infringed work, min. $200 if no fault and max. 150’000 if bad faith

1000 movies downloaded in Swiss the court decided to multiplied 1000x 1000 for pay the damages.