IPRED

The Intellectual Property Rights Enforcement Directive (IPRED) is a long-running proposal by the European Union to increase penalties and ultimately criminalise "commercial" infractions of intellectual property law within the EU.

The directive was originally passed in March 2004 and provided additional confiscatory and subpoena powers to litigants in civil IP cases. Additional legal protection for technical protection measures (TPM) was dropped, as were criminal penalties for IP infringement.

Directive 2004/48/EC of the European Parliament and of the Council (Enforcement Directive or IPRED Directive)

This directive aimed at the harmonisation of national legislations relating to the enforcement of intellectual property rights in order to promote innovation and business competitiveness, safeguard employment, prevent tax losses and destabilisation of the markets, ensure consumer protection and the maintenance of public order. The rights covered by the directive were not thoroughly clear until the clarification made by the EC with the statement 2005/295/EC. The rights concerned are:

  • 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
  • trade names, in so far as these are protected as exclusive property rights in the national law concerned

Article 3 of the IPRED directive contains a general obligation for the Member States that must provide for effective, dissuasive, proportionate measures, remedies and procedures necessary to ensure the enforcement of intellectual property rights. However, “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”.

The Directive states that Member States have to ensure that judicial authorities, under certain circumstances, may order a party (in a trial) to present the evidences lying under its control upon request of the opposing party needing these evidences. The same applies to the communication of banking, financial or commercial documents when the infringement is committed on a commercial scale. In presence of reasonably available evidences on the actual or potential infringement of an intellectual property right, the competent judicial authorities may order prompt provisional measures (e.g. taking of samples, physical seizures, etc.) to preserve evidence even before the proceedings. Article 8 provides for a right of information: upon request of the claimant, the competent judicial authorities may order to provide information on the origin of the goods or services that are thought to infringe an intellectual property right and on the networks for their distribution or provision. The order refers to the infringer and/or to any person who:

  • was found in possession of the infringing goods on a commercial scale
  • was found to be using the infringing services on a commercial scale
  • was found to be providing on a commercial scale services used in infringing activities
  • was indicated as being involved in the production, manufacture or distribution of the infringing goods or services

The Enforcement Directive provides also for interlocutory injunctions aimed at preventing imminent infringements or stopping the continuation of infringements of an intellectual property right. In some cases, this continuation can be subject to the lodging of guarantees intended to ensure the compensation of the right holder. These injunctions are issued by the competent judicial authorities at request of the right-holder. In case of an infringement on a commercial scale and if the injured party demonstrates risks affecting the recovery of damages, precautionary seizures can be issued towards “the movable and immovable property of the alleged infringer, including the blocking of his bank accounts and other assets” (art.9.2).

If the goods are found to be infringing an intellectual property right, the competent judicial authorities may order corrective measures that generally are carried out at the expense of the infringer. The measures are issued in respect of the proportionality between the seriousness of the infringement and remedies that must be taken. On the strength of these provisions, the infringing goods can be recalled from the channels of the market, definitively removed or destructed. Moreover, the judicial authorities may order injunctions in order to prohibit the continuation of the infringement. The injunctions may be ordered also against intermediaries whose services have been used by a third party for the infringement of an intellectual property right.

Instead of the measures previously described, pecuniary compensation may be ordered if the infringer “acted unintentionally and without negligence, if execution of the measures in question would cause him disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory” (art. 12). In deciding the merit of the case, the competent judicial authorities set the damages that the infringer has to pay to the right-holder. The damages are calculated taking into account the negative economic consequences (e.g. lost profits) for the right-holder, any unfair profit made by the infringer and, in some cases, other economic factors such the moral prejudice suffered by the right-holder.

IPRED Directive covers the area of the civil and administrative proceedings. By contrast, the provisions do not affect existing European and laws on intellectual property, Member States' international obligations and national provisions on criminal procedures and penalties in respect of infringement of intellectual property rights.

The Enforcement Directive has been widely criticized by scholars, digital activist and organizations for different reasons. First, the directive would be characterized by a lack of distinction between the different IP rights creating an uniform protection that would lead to a one-size-fits-all approach to enforcement. Moreover, the lack of distinction would characterize also the kinds of infringement, as the failures to define non-commercial and commercial scales prove. Second, the provisions relating to the intermediaries would constitute an excessive burden on the Internet Service Providers (ISPs) that could be forced to disclose the data of potential infringers using their services. This rigid system of IP protection seems to not take into account considerably the right to privacy of citizens and could reduce the use of internet in public spaces. Finally, some argue that the directive seems to ignore the importance of copyright exceptions in permitting a fair dealing of copyrighted works in order to facilitate innovation and access to knowledge. In 2005 the European Commission proposed a new directive (known as IPRED2) aimed to supplement directive 2004/48/EC. This proposal imposed to the Member States to treat as criminal offences all intentional infringements of an intellectual property right on a commercial scale, and attempting, aiding or abetting and inciting such infringements. Widely criticized for its draconian provisions, the proposal has been withdrawn by the Commission in September 2010.

In December 2010, the European Commission launched a consultation aimed at the revision of the IPRED Directive. The consultation has been accompanied by a report that evaluates the application of Directive 2004/48/EC by the Member States. According to some commentators, the EC will propose a new piece of legislation strengthening the enforcement of IP rights but without considering the criticism raised and to opportunity to adapt the IP regime to the new digital era.

IPRED2

IPRED2 was a renewed attempt in 2005 to re-introduce the criminal provisions of the original proposal. It would require that "all intentional infringements of an intellectual property right on a commercial scale, and attempting, aiding or abetting and inciting such infringements, are treated as criminal offences". It, too, was temporarily postponed for procedural reasons following a European Court case, although it has been reintroduced. Its official name is "directive on criminal measures aimed at ensuring the enforcement of intellectual property rights".

June 29th 2006. Both Chambers of the Dutch Parliament (Staten-General) have unanimously concluded that the European Commission has no competence to propose a directive to criminalise intellectual property violations.

European Parliament had its first reading on IPRED2 in April, 2007. It passed the first vote in the European Parliament but did not include its most controversial element, the criminalising of patent infringement.

Executive Summary

The original Commission proposal has been heavily criticized, and much of the concern can be traced to two major lines of analysis. First, many Member States submitted that the proposal went beyond the legislative competence of the European Community. For example, as the Dutch Parliament stated in a letter, the legal means to combat piracy are already available, so the proposal was not justified. Second, almost all position papers written about the proposal characterized it as disproportionate, and noted that it fails to make adequate distinctions between commercial piracy enterprises, legitimate/lawful activities undertaken by business competitors, or even the common activities of ordinary Europeans.

Recommended Action: The Directive is fundamentally flawed. For these reasons, we are united in our belief that the best option would be to reject the directive in its entirety. A second best alternative would be to seek to ameliorate the most egregious impacts of the directive by incorporating legally precise definitions to safeguard legal certainty and proportionality. Even then, a solution must be found for the problem that preliminary rulings take too long for criminal cases.

Wording for this executive summary taken from the FFII/EFF/EBLIDA/BEUC coalition report on the proposal as amended in Strasbourg by the European Parliament at its first reading on Wednesday, 25 April, 2007.

Criticisms

While supposedly aimed only at commercial pirates, IPRED and IPRED2 both have serious chilling effects on ordinary users of technology, as well as open source developers. If you unknowingly infringe a patent or trademark in your work, you may find yourself criminally prosecuted. In the case of copyright infringement, the burden of work to pursue infringers now moves from the rights-holders to law enforcement. If IPRED2 passes, we can envision greater lobbying by powerful copyright industries to transfer police resources to pursuing "intellectual property" crimes.

Current Manoeuvring

The Commission has relaunched a slightly modified version of the directive under the co-decision procedure on 2 May. Originally (July/August 2005), it was proposed by the Commission primarily as a Council framework decision (with only some details put under co-decision). In that case, the European Parliament has little or no legislative power, and the Council must decide with unanimity.

The reason for the original legislative path was that only member states have the competence to decide about criminal law until now (the proposed Constitutional Treaty would change that though). Co-decision is reserved for cases where there is a distortion in the internal market which can be solved using harmonisation.

In autumn 2005, the European Court of Justice however published a ruling regarding an act concerning criminal sanctions for environmental pollution, and decided that this act could/should be under co-decision. The reason was that member states with lax sanctions concerning Environmental crimes would have a competitive advantage over those with strong regulations, so that would disturb the internal market.

The Commission is however now using this ruling everywhere as justification to relaunch directives concerning criminal sanctions under co-decision (since the Council is then less strong, as it only has to approve with a qualified majority in case the Commission agrees with their standpoint). They argue in each case that some sort of harmonisation is required for a better functioning internal market, but in case of this directive they don't explain at all how that would be the case for IP infringements.

This means that now a) the European Parliament will be a full co-legislator for this directive (and thus can reject it) b) several member states are angry at the Commission for meddling in their criminal law without these member states having veto power in the Council (see e.g. the Dutch Minister of Justice' statements quoted in our press release)

Additionally, Wednesday the Commission started publicly pressuring member states to accept all regulations related to criminal sanctions (http://www.eupolitix.com/EN/News/200605/f22b375f-238f-4313-b4be-e9b65a18397c.htm):

"Should we wait for another terrorist atrocity before we have effective joint decisions across Europe to fight terrorism?," he asked.

The IPRED2 directive's justification indeed stresses threats to national governments and organised crime.

Quotes

Ross Anderson, Chair of FIPR and Professor of Security Engineering at Cambridge University:

Whitehall spin-doctors are telling us that the Government will foster the creative industries, but the IPR Enforcement Directive will have exactly the opposite effect. It will interfere with enterprise and choke off competition. It will push up prices for consumers at a time of rising global inflation, and do particular harm to the software and communications industries. It will also harm universities, libraries and the disabled."

Said Terri Dowty, Director of Action on Rights for Children and member of FIPR's Advisory Council:

We have already seen the kind of pressure that companies are prepared to exert on the parents of children who download music without due thought. We fear that they would not baulk at mounting criminal prosecutions of children.
"It is monstrous that a ten-year old (or an eight-year old in Scotland) could be criminalised by the careless download of files. Children often assume that if something is available it must also be legitimate, and it is unreasonable to expect parents to monitor their every action -- and most will not have the specialist knowledge to understand whether or not a particular download will be a crime."

Said Nicholas Bohm, FIPR's General Counsel:

"Criminalising patent and other IPR infringement could expose a range of business advisers (accountants, lawyers, bankers) to threats of prosecution as accessories if a company involved in a deal they were arranging or implementing was subject to an infringement complaint."

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