ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS: NEW INITIATIVES International conference “Industrial Property for Competitiveness: EU and Global Experience” Gyta Berasnevičiūtė Ministry of Culture of the Republic of Lithuania, Copyright Division 12 April, 2011, Vilnius

CONTENT: I. Impact and scope of counterfeiting and piracy II. Main issues in the field of IP enforcement III. New initiatives (i) Strengthening of legal measures (ii) Strengthening of cooperation in the field of IP enforcement (iii) International initiatives IV. Effective system of IP enforcement

I. IMPACT OF COUNTERFEITING AND PIRACY: Consumers, their health and safety Commerce, investment and creation of new job places Innovation and competitiveness of enterprises State economy – lost unpaid taxes Society – relations with organized crime Environment and durable duration

I. SCOPE OF COUNTERFEITING AND PIRACY: The value of counterfeited and pirated goods in international trade amounts to $250 billion, excluding violations in local market and in digital environment (OECD study, 2009 year data) Most common violations of IP rights – trade marks (90,05%), patents (4,99%), copyright (3,57%), design and model rights (1,32%); affects all economic sectors (EC DG TAXUD data) Subject to globalisation: the biggest volumes of counterfeited and pirated goods come from Asia (China, Hong Kong, UAE); Europe, USA – main consumption zones; main means of distribution – air, sea and Internet.

II. MAIN ISSUES IN THE FIELD OF IP ENFORCEMENT: Inadequate legal means for fight against mass IP infringements in digital environment: –General infringements: illegal reproduction, distribution, communication to the public –Specific infringements: linking to illegal content, hosting illegal content, providing access to illegal content, transfer of illegal content (new parties – owners of websites, auction and internet sales websites, providers of publicity...) Technically difficult to fight infringements due to rapidly changing technical environment and services Development of legal digital content offer is lagging behind demand

III.(i) STRENGTHENING OF LEGAL MEASURES: Substantive Law –Amendments to patent, trademark, design, copyright law etc. Civil enforcement measures –Intellectual Property Rights Enforcement Directive 2004/48/EC, implemented in Lithuanian Copyright Law, Patent Law, Law on the Legal Protection of Topographies of Semiconductor Products, Trademark Law, Design Law Administrative responsibility –Amendments of the Code of Administrative Infringements of the Republic of Lithuania

III.(i) STRENGTHENING OF LEGAL MEASURES: Criminal responsibility –Amendments to Penal Code of the Republic of Lithuania –European Commission proposal regarding criminal measures aimed at ensuring the enforcement of intellectual property rights Measures for fight against Internet infringements –Electronic Commerce Directive 2000/31/EC and Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society Resolution Concerning Acceptance of a Report on Provisions for Eliminating the Possibility of Access to Unlawfully Obtained, Created, Amended or Utilised Information, No. 881 of August 22, 2007 adopted by Government of the Republic of Lithuania Customs measures –Council Regulation (EC) No. 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights – review

III.(i) COMMISSION REPORT ON THE APPLICATION OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT DIRECTIVE: Important issues after implementation of Intellectual Property Rights Enforcement Directive 2004/48/EC: –Internet service intermediaries and application of injunctions –Balance between right of information and protection of personal data –Collection of evidence –Scope of Directive –Calculation of damages –Corrective measures General conclusion – the Directive does not sufficiently take into account Internet-related intellectual property rights enforcement challenges

III.(i) COMMISSION REPORT ON THE APPLICATION OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT DIRECTIVE: Internet service intermediaries and application of injunctions –Directive makes broad interpretation of the concept “intermediaries” –Should Directive provide the possibility to apply injunctions as a provisional measure? –ECJ decisions regarding the scope of injunctions in L’Oréal v. Ebay (C-324/09) and Scarlet v. SABAM (C-70/10) cases –Should internet service intermediaries play a greater role in fight against intellectual property rights infringements?

III.(i) COMMISSION REPORT ON THE APPLICATION OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT DIRECTIVE: Right to information –In some Member States granted restrictively –ECJ in Promusicae case (C-275/06) rules to strike a fair balance between various rights at stake –Problem of retention of personal data –Should Right to information be applicable only in case of commercial scale infringements? Gathering of evidence –Transborder infringements –Protection of confidential information –Presenting “screenshots” as evidence

III.(i) COMMISSION REPORT ON THE APPLICATION OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT DIRECTIVE: Scope of application of Directive –Directive contains no definition of intellectual property rights it covers, uncertainty remains regarding domain names, commercial secrets, parasitic copies (competition law?) Awarding of damages –Infringers’ profits are higher than damage incurred by rightholder – damages do not dissuade potential infringers Corrective measures –Distinction between “recall” and “definitive removal” not clear

III.(ii) STRENGTHENING COOPERATION IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT European Observatory on Counterfeiting and Piracy Strengthening administrative cooperation between institutions Developing voluntary agreements between stakeholders Designing public awareness measures

III.(ii) STRENGTHENING COOPERATION IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT Organisational structure and work method of European observatory on counterfeiting and piracy –Representatives from 27 EU Member States’ public institutions –Private sector representatives, including consumer organizations –Meetings and 3 working groups Legal affairs, statistics and public awareness working groups 1 meeting of Member States public sector representatives, 2 meetings of private sector representatives and 1 plenary session of public sector and private sector representatives –Annual report and working group reports

III.(ii) STRENGTHENING COOPERATION IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT Main functions of European Observatory on Counterfeiting and Piracy: –Collection, systematization and analysis of data about the impact and scope of counterfeiting and piracy (study underway) –Dissemination of “best practice” among EU public institutions responsible for enforcement and coordination of IP rights –Dissemination of successful private sector strategies –Strengthening of public awareness measures

III.(ii) STRENGTHENING COOPERATION IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT Improving administrative cooperation between public institutions responsible for intellectual property rights enforcement and protection (European Commission analysis) –Transparency of national structures –National coordinators –National strategies for fight against counterfeiting and piracy Ex. France – National Committee for Fight against Counterfeiting, Hungary – National Council for Fight against Counterfeiting, Spain – Intersectoral Comission for Fight against Intellectual Property Rights Infringements Strengthening of international cooperation –Rapid exchange of information

III.(ii) STRENGTHENING COOPERATION IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT: Developing voluntary agreements between stakeholders –Practical solutions for concrete problems European Commission dialogues regarding sale of counterfeited goods in Internet and illegal uploading and downloading of copyright protected materials in Internet –Public institutions facilitate conclusion of agreements –Agreements should be in conformity with legal regulation Ex. Charter for Fight against Counterfeiting in Internet, signed in France between platforms of electronic commerce and intellectual property rights holders with a view to prevent Internet sales of counterfeited goods (application of Charter will extend to carriers and publicity intermediaries); Concept for Intellectual Property Anti-piracy Center, prepared by the Ministry of Culture and approved by Order No. ĮV-401 of July 30, 2008 of the Minister of Culture

III.(ii) STRENGTHENING COOPERATION IN THE FIELD OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT National public awareness measures –Public Awareness Program regarding Intellectual Property Rights and it’s Implementation Measures, approved by Order No. ĮV-260 of May 5, 2010 of the Minister of Culture Anti-piracy projects, measures for small and medium business, students, school childern, law enforcement officers and public at large Need for European coordinated campaign

III.(iii) INTERNATIONAL INITIATIVES: Multilateral Anti-Counterfeiting Trade Agreement –Nogotiations concluded December 2010 (negotiating parties EU, USA, Canada, Mexico, Japan, Korea, Australia, New Zealand, Switzerland, Singapore, Marocco) EU bilateral trade agreements with third countries –TRIPS plus agreements, IP enforcement provisions based on EU acquis Technical assistance projects –TAIEX, Twinning, long-term IPR2 project in China

IV. EFFECTIVE SYSTEM OF INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT: Political will –Enforcement of IP rights remains strategic priority question Strong legal basis Application of legal provisions in practice Measures and solutios of non-legal nature –Active cooperation of right holders when defending violated rights is of crucial importance

Contact information: Gyta Berasnevičiūtė Ministry of Culture of the Republic of Lithuania Chief Specialist of Copyright Division J.Basanavičiaus str. 5 LT Vilnius, Lithuania Ph : Fax: