INTELLECTUAL PROPERTY

LAW
COPYRIGHT (part 4)
Enforcement
 Objective

After the class, student can

•Understanding some legal liabilities.
•Understanding the different liabilities depending on national laws. And in
some perspectives, it also shows the attitude of society regarding to the IP.

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 Main content

1. Enforcement
2. Civil remedies
3. Criminal liability
4. Administrative sanction
5. Marking
6. Registration
7. What others can take from you?

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 1. Enforcement

Take action against infringers:

•Negotiation

•Arbitration, mediation

•Go to the courts

•Being sized/sued by authorities

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 1. Enforcement

Depending on the nature and seriousness of the infringement:

•Civil remedies

•Criminal liability

•Administrative sanctions

Refer to WIPO Copyright Treaty, TRIPS, national law

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 2. Civil remedies

If the owner wins the action, the court may impose three possible penalties:

1.an injunction (a formal court order) to stop further copying

2.payment of damages to recompense the owner (the amount is often based on

the equivalent of a reasonable royalty for the infringing use)

3.delivery-up of the infringing copies (sell or destroy them; destruction is

preferred if the IP owner believes the goods are of inferior quality).

Any combination of the three remedies may be applied

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 2. Civil remedies

Other civil remedies:

4.Provisional measures (Interim orders issued by the Court of Justice, in this
case, the copyright owner must deposit amount of money)
5.Punitive damages (an award of extra damages for ‘flagrant infringement’
which means the person responsible for the copying was fully aware of
wrongdoing).
6.Account of profits (ask for a payment equivalent to the profits made by the
infringer, but as accountancy procedures can sometimes show that profit was
small or even non-existent, this remedy is rarely requested)

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 2. Civil remedies

• Civil remedies under Vietnamese IP law:

1) Provisional measures
2) Injunction
3) Compensatory damages (no punitive damages)

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 2. Civil remedies

• Civil remedies under TRIPS:

1) Interim measures: The TRIPS Agreement (Article 50) sets the minimum
requirements for interim measures that member countries have to provide
for all IP rights holders. National laws must provide for (a) temporary
injunctions (interim interdicts in the nomenclature of civil or mixed
systems) on notice or, in cases of urgency, on an ex parte basis and (b)
orders to preserve evidence. Most jurisdictions comply in general, without
special legislation, with these requirements

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 2. Civil remedies

• Civil remedies under TRIPS:

2) Disclosure orders: In accordance with the provisions of TRIPS (Article 47),
member states may provide the judiciary with the authority to order the
infringer to inform the rights holder of the identity of third persons involved
in the production and distribution of the infringing goods or services and of
their channels of distribution, unless this would be out of proportion to the
seriousness of the infringement

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 2. Civil remedies

• Civil remedies under TRIPS:

3) Injunctions (interdicts): In terms of Article 44.1, courts must have the
authority to issue injunctions or interdicts ordering a party to desist from
infringing. The injunction must also prevent the entry into the channels of
commerce in their jurisdiction of imported goods that involve the
infringement of an IP right, immediately after customs clearance of such
goods. Injunctions may be dependent on the defendant’s prior knowledge
(or having had reasonable grounds to know) that the act entails the
infringement of an IP right.

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 2. Civil remedies

• Civil remedies under TRIPS:

4) Damages: Article 45 provides that courts must be able to order the infringer
to pay the rights holder damages adequate to compensate for the injury
suffered by the rights holder because of the infringement, as well as the
rights holder’s expenses, which may include appropriate attorney’s fees.
The liability to pay damages may be made dependent upon the infringer’s
knowledge or negligence.

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 2. Civil remedies: case study

Inc. v. Boutique Elfe Inc. (1991) 43 C.P.R. (3d) 416 (Canada: Court of
Quebec):
Facts: A firm asked an artist to copy a Christmas card titled “Un Noël de Rêv
e” that the firm’s manager bought from a retail store. The firm had 1,300 of
the copied cards printed for $C 165 and sent them out for New Year to its
customers. The plaintiff claimed the full retail price of 1300 cards as damages,
over $C 2,000. The defendant offered $C 500, being what the plaintiff had
charged a third party for a licence to reproduce, for publicity purposes, another
similar card (“Toutes voiles au vent”) by the same artist.
How could the damages be assessed in this case?

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 2. Civil remedies: case study

Le Linh & Phan Thi

Than Dong Dat Viet is a Vietnamese children's comic book series created by
artist Le Linh and published by Phan Thi company in collaboration with Tre
Publishing House. After volume 78, Le Linh stopped composing the story of
Than Dong Dat Viet, but Phan Thi continued to compose the series until
volume 228, released in July 2019 as well as released adapted publications. In
April 2007, Le Linh requested to recognize him as the only author of 4
characters, not co-author with the company or Ms Phan Thi My Hanh, and
asked Phan Thi Company not to continue to create this comic
Which civil liabilities the copyright's owner can ask?

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 3. Criminal liability

The criminal offences:

1. making the article for sale or hire

2. importing the article into the UK (except for private or domestic use)

3. possessing the article in the course of a business with a view to committing

any act infringing the copyright (e.g. intending to copy it)

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 3. Criminal liability

4. selling, hiring, exhibiting or distributing the article in the course of a

business

5. distributing the article so as to affect the copyright owner’s rights in a

prejudicial way (e.g. depriving the owner of legitimate sales or licence fees)

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 3. Criminal liability

• The penalties: 10 years imprisonment; and/or Unlimited fine

• Who will be pay for: company officials, for example, a director, the
company secretary or senior manager, may be held personally liable if they
are aware of what is occurring

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 3. Criminal liability

Criminal liability under Vietnam law

•The penalties: until 5 years imprisonment; and/or Unlimited fine

•Unfair competition law

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 3. Criminal liability

• Criminal liability under TRIPS

Article 61 requires of member states to provide for criminal procedures and

penalties to be applied at least in cases of willful trademark counterfeiting
AND copyright piracy, committed on a commercial scale

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 3. Criminal liability

• Criminal liability under TRIPS

Piracy relates to copyright: clear-cut unauthorized infringement of printed

works, sound recordings, audio-visual works and computer software.
Pirated copyright goods are copies made without the consent of the rights
holder and are made directly or indirectly from an article where the making
of that copy would have constituted an infringement of a copyright or a
related right

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 3. Criminal liability

• Criminal liability under TRIPS

Article 61 requires of member states to provide for criminal procedures and

penalties to be applied at least in cases of willful trademark counterfeiting
AND copyright piracy, committed on a commercial scale

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 4. Administrative sanctions

The administrative sanction can be similar to criminal offences relating to

infringing copy, but lower value or quantity.
In those case, the infringement party can be hold by authorized body. For
example, suspension of release by custom authorities (for importation of
goods)

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 5. Marking

• Copyright symbol ©, always used on books and often used on other printed
matter.

O = Owner C = copyright

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 5. Marking

• For computer programs, it is highly advisable to mark not only the label on
the disk or packaging but also to include a notice on screen, for example, as
the first screen display when the program is run. If the available printing
fonts do not include ©, then the full word ‘Copyright’ or an abbreviation,
such as ‘Copr.’, can be used
• Watermark
• Other signs

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 6. Registration

• Optional
• In Vietnam, we can register a copyright work with Copyright Office of
Vietnam
• Reference link:
cov.gov.vn
Thủ tục hành chính (bvhttdl.gov.vn)

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 7. What others can take from you?

The copyright law is usually presented as a balance between promoting

the public interest in the encouragement and dissemination of works of
the arts and intellect and obtaining a just reward for the creator (or,
more accurately, to prevent someone other than the creator from
appropriating whatever benefits may be generated). The proper balance
among these and other public policy objectives lies not only in
recognizing the creator’s rights but in giving due weight to their limited
nature.

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 7. What others can take from you?

• Release form
• Non copyright content: Facts/nonfiction, News and history,
Ideas, Scènes à faire…
• Fair Dealing/ Fair Use of copyrighted work
• Special cases such us take part in an public event, a
competition, in education …

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 7. What others can take from you?

• The copyright law is usually presented as a balance between

promoting the public interest in the encouragement and dissemination
of works of the arts and intellect and obtaining a just reward for the
creator (or, more accurately, to prevent someone other than the creator
from appropriating whatever benefits may be generated).
• The proper balance among these and other public policy objectives
lies not only in recognizing the creator’s rights but in giving due
weight to their limited nature.

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 7. What others can take from you?

• In crassly economic terms it would be as inefficient to over-compensate

artists and authors for the right of reproduction as it would be self
defeating to undercompensate them.
• Once an authorized copy of a work is sold to a member of the public, it
is generally for the purchaser, not the author, to determine what happens
to it.
• Excessive control by holders of copyrights and other forms of
intellectual property may unduly limit the ability of the public domain to
incorporate and embellish creative innovation in the long-term interests
of society as a whole or create practical obstacles to proper utilization.

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 Summary

1. Respecting laws and never copying are the best ways to be charged with
any legal liabilities.

2. Legal liabilities for infringing copyright can be administrative, criminal or

civil with different strictness, depending on the level of infringement and
national laws.

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 Review on Copyright

1. Definition of copyright

2. Economic and moral right

3. Ownership of copyright

4. Infringement

5. Enforcement

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 Thank you for your attention

Questions & Answers

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