Enforcement Directive and Software Protection

Joost Verbeek Partner

ULYS Law Firm

Brussels, 26th of April 2006

Plan

• I. Introduction

• II. Legal Context

• III. Enforcement Directive 2004/48/EC

• IV. Legal Developments in Belgium and Implementation of the Directive

• V. Conclusion

I. Introduction

A. The Importance of the Software Industry

B. The Impact of Software Theft

C. Types of Piracy

I. Introduction

A. The Importance of the Software Industry:

- One of the fastest growing segments of the world's economy

- BSA-IDC Study December 2005: E.U.:

• a $311 billion IT industry • 365,000 companies • 2.5 million IT workers • $268 billion a year in tax revenues

I. IntroductionB. The Impact of Software Theft:

Source: SIIA 2005 AntiPiracy Year End Report:

- In 2005: 366 reports of alleged piracySource: www.bsa.org:

- More than 1 in 3 copies of software in use in Western Europe is unlicensed

- Deprives EU Member States of over 200,000 jobs and well over €9 billion in annual tax revenues

I. Introduction

B. The Impact of Software Theft:Source: BSA-IDC Study December 2005

- Cutting the software piracy rate in the EU by 10 % over 4 years could generate an additional 155,000 jobs, $88 billion in economic growth and $25 billion in tax revenues

- In Belgium, a 10% reduction in software piracy, currently at 29%, would generate an additional 4000 new jobs, 2,6 billion dollars in economic growth and 844 million dollars extra in tax revenus.

The BSA-IDC Study suggests five steps:

• Update national copyright laws to implement WIPO obligations;

• Create strong enforcement mechanisms, as required by the WTO, including tough anti-piracy laws;

• Dedicate government resources to the problem, including national IP enforcement units, cross border cooperation, and more training for law enforcement;

• Improve public education and awareness; and

• Lead by example by requiring the public sector to use only legitimate software. 

Source: BSA-IDC Study December 2005

Source: BSA-IDC Study May 2005

I. Introduction

C. Types of Piracy:

• End User Piracy

• Client-Server Overuse

• Internet Piracy

• Hard-Disk Loading

• Software Counterfeiting

II. Legal Context A. International Level• TRIPS

• Europe

B. Legal Framework in Belgium • Laws and Regulations

• Specific Problems when Combating Counterfeiting • Procedures Available Against Counterfeiters of Software

II. Legal Context

A.International Level:

1. TRIPS: - international minimum standards - horizontal effect - not exhaustive - Member States as well as the Community are

bound

II. Legal ContextA. International Level:

2. Europe:

• Directive 91/250/EC

• Directive 2001/29/EC

• Directive 2004/48/EC

• Council Regulation No 1383/2003 • Commission Regulation No 1891/2004

II. Legal Context

B. Legal Framework in Belgium

1. Laws and Regulations:

• Copyright Law June 30, 1994

• Software Law June 30, 1994

• Law of May 22, 2005 • 2 Drafts to Implement Directive 2004/48

II. B. Legal Framework in Belgium

2. Specific Problems when Combating Counterfeiting:

• Article 96 of our Law Againts Unfair Trade Practices • Financing the combat against counterfeiting

• Courts not specialized • Indemnities are to low

II. B. Legal Framework in Belgium

3. Procedures Available Against Counterfeiters of Software:

• 3.1. Civil proceedings• 3.2. Criminal proceedings

II. B. Legal Framework in Belgium3. Procedures Available Against

Counterfeiters of Software:

3.1. Civil Procedures:

• Request for unilateral measures (art 584 Judicial code)• Accelerated proceedings • Copyright infringement proceedings • Proceedings on the merits of the case • Intervention of the customs • Anton Piller Orders

II. B. Legal Framework in Belgium

3. Procedures Available Against Counterfeiters of Software:

3.2 Criminal Procedures:

• Advantages

• Disadvantages

III. Enforcement Directive 2004/48/EC

A. GeneralB. BackgroundC. ObjectivesD. ScopeE. ContentF. Persons Entitled to Apply for the Application of the

Measures and ProceduresG. Civil MeasuresH. Damages and Legal CostsI. Criminal Sanctions

III. Enforcement Directive 2004/48/EC

A. General:

• Adopted on April 29, 2004

• Date of Transposition: April 29, 2006

• Horizontal Effect

• Harmonize Member States’ Legislation in order to:

- aligne enforcement measures throughout the Union

- ensure an equivalent level of intellectual property protection in the internal market

III. Enforcement Directive 2004/48/EC

B. Background:

• October 15, 1998: the Commission presented a Green Paper on the fight against counterfeiting and piracy in the Single Market

• Subsequent to this consultation exercise, the Commission presented on 30 November, 2000 a follow-up Communication to the Green Paper proposing an action plan to improve and strengthen the fight against counterfeiting and piracy

III. Enforcement Directive 2004/48/EC

C. Objectives: To ensure a high, equivalent and homogeneous level of enforcement of intellectual property rights in the Member States:

•Promoting innovation and business competitiveness

•Preserving employment in Europe

•Preventing tax losses and market destabilization

•Ensuring consumer protection •Ensuring the maintenance of public order

III. Enforcement Directive 2004/48/EC

D. Scope:

The measures apply to any infringement of the intellectual property rights as provided for by Community law and/or by the national law of the Member State concerned

The Directive does not affect:

• the Community provisions governing the substantive law on intellectual property;

• Member States' international obligations and notably the "TRIPS Agreement";

• any national provisions in Member States relating to criminal procedures or penalties in respect of infringement of intellectual property rights.

III. Enforcement Directive 2004/48/EC

E. Content:

• Transpose the provisions of the TRIPS Agreement on the enforcement of IP rights (Art. 41 - 50 and Art. 61)

• Implement further instruments to enforce IP rights: “Best Practice Measures”

• Member States are free to further introduce more favorable

measures or procedures

III. Enforcement Directive 2004/48/EC

F. Persons Entitled to Apply for the Application of the Measures and Procedures:

• Holders of intellectual property rights, their representatives and all other persons authorised to use those rights in accordance with the applicable law

• The procedures and measures provided for can, in principle, also be used against private persons and end-

consumers.

III. Enforcement Directive 2004/48/EC

G. Civil Measures:

1. Evidence

2. Right to obtain information

3. Provisional and precautionary measures

4. Measures resulting from a decision on the merits of the case

III. Enforcement Directive 2004/48/EC

H. Damages and Legal Costs

Take into account all appropriate aspects relating to the prejudice suffered

Economic and moral factors Legal costs, lawyer's fees and any other expenses incurred by the

successful party shall normally be borne by the other party Set in two ways:

- take into account all appropriate aspects, such as negative economic consequences and moral prejudice

- fix damages as a lump sum on the basis of elements such as the amount of royalties or fees

III. Enforcement Directive 2004/48/EC

H. Damages and Legal Costs:

Recall and destruction Injunctions prohibiting the continuation of infringing

acts Pecuniary compensation Publication of judicial decisions Elaboration of codes of conduct

III. Enforcement Directive 2004/48/EC

I. Criminal Sanctions by Member States:

• No provisions on criminal sanctions foreseen

• Member States are free to apply other sanctions, which go further than the provisions set out, to prosecute

offenders

IV. Legal Developments in Belgium and Implementation of the Directive

1. Draft of Proposal of Law Related to Civil Aspects of Enforcement

2. Draft of Proposal of Law Related to Criminal Aspects of IP Protections

IV.1. Proposal of Law Related to Civil Aspects of Enforcement

Proposed measures:• The abolition of the prohibition to cumulate the

action in cessation with the action to stop counterfeiting

• The reform of the procedure of descriptive seizure • A centralization of the disputes concerning

intellectual property

• The implementation of certain civil proceedings

IV.2. Proposal of Law Related to Criminal Aspects of IP

Protections

• The intentional element

• The filing of a complaint by the prejudiced party is no longer a preliminary condition

• The penalties are increased and diversified

• A warning procedure is set into place

V. Conclusion