From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 19 January 2016

Will the Enforcement Directive consultation impact the UPC?

The AmeriKat got halfway through her response
on the Commission's consultation, but
the sun's pull became too strong...
What good is an IP right if you can't effectively enforce it?  No good at all, of course.  Equally, if the enforcement of IP rights is abusive or disproportionate, then this is also a problem.  Which is why in 2004 the Enforcement Directive (2004/48/EC) was adopted - or as the Commission seems to be calling it, "IPRED" - to govern the enforcement of IP rights.  Although arguably incredibly important, the Enforcement Directive never really set the world on fire.  Indeed, some European judges have commented that they are surprised that lawyers don't refer to it more often.  But why not?  Well, we may find out.  Earlier this month the European Commission published a public consultation on the Enforcement Directive seeking views from a whole bevy of interested parties about their experiences in enforcing IP rights in Europe.

Why now?  

The consultation has its origins in the Digital Single Market strategy in which the Commission aims to foster and secure a safe and effective cross-border digital economy.  As part of that plan, the Commission wants to consider modernizing IP enforcement focusing, it says, on "commercial-scale infringements (the "follow the money" approach) and its cross-border applicability".  It is no surprise, therefore, that many of the questions in the public consultation have a distinctly "on-line" flavor about them, not least given the emphasis on ISPs.

What will they do with the information?

The Commission will use the feedback to identify any issues which require corrective measures (presumingly this is Euro-speak for "amendments").  As the website explains:
"It will gather experience on the use and impact of IPRED and also seek views and opinions from those concerned with the application of the Directive on its functioning and the possible need for amendments. It also aims to gather experience and opinions about the use and impact of so-called 'follow the money' initiatives in the area of IPR enforcement."
The European Commission wants to hear from you
Who can respond?

Pretty much everyone.  If you fall into any one (or more) of these categories, you may go forth and respond:
  • Rightsholders (click here for your survey)
  • Judiciary and the legal profession (click here for your survey)
  • Intermediaries (click here for your survey)
  • Member States and public authorities (click here for your survey)
  • Citizens, consumers and civil society (click here for your survey) 
How long do I have?

The consultation will end on 1 April 2016.

Is there anything interesting in the questions?

Having looked at the questions, the AmeriKat has noted a few of the more interesting lines of questioning as follows:
  • In respect of Articles 3, 13 and 14 of the Enforcement Directive (general obligations, damages and legal costs), the survey asks the respondents' experience on whether the reimbursement of legal costs were covered and sufficient and whether there needs to be an adjustment to the application of that measure.  This series of questions also asks whether the respondent applied for damages for prejudice (lost profit, unfair profits, moral prejudice, lump sum or other), whether they encountered obstacles to sufficient compensation and whether the calculation of damages needed to be re-addressed in the Directive. 
  • In respect of Articles 9 and 11 of the Enforcement Directive (preliminary injunctive relief), the survey asks whether the respondent considers that the provisional and precautionary measures need to be adjusted. If the respondent answers "yes", the survey curiously does not ask for reasons.  However, the survey does ask whether the respondent sees the need for criteria defining the proportionality of an injunction and, if so, why.  
  • Section C of the Rightsholder survey asks whether the respondent sees the need for more systematic dissemination of legal decisions (see Article 15) . [The AmeriKat can only dream of the day when the European Parliament passes legislation that requires all Member States' courts to publish their IP decisions online...]
  • Section D of the Rightsholder survey asks whether the respondent has filed legal actions in specialized IP courts.  If the respondent answers "yes", they are asked in which countries, with respect to which right and whether the specialized court added value compared to legal actions in other courts.  If the respondent clicks "yes" to that question, then the respondent has to specify why the IP court added value (shorter proceedings, more expertise, etc).  [Might we see more specialized IP courts as a result of this consultation?]  
Will the Enforcement Directive consultation be a backdoor
to change provisions in the UPC?
What issues may be impacted by the UPC consultation?

As expected, the AmeriKat understands that several professional and industry organizations are preparing their responses on the consultation.  However, the AmeriKat expects that given the focus of the consultation, the Commission will be paying closer attention to the submissions from rightsholders and internet service providers who deal with mass-scale copyright and trade mark infringement.  However, there are other parties to whom this survey may have an impact.

The AmeriKat is thinking, in particular, about one specialist court - the Unified Patent Court.  At the moment, the requirements for the granting of injunctions and assessment of damages are already set in stone under the Unified Patent Courts Agreement (UPCA)  (see Articles 62 and 68 of the UPCA which generally tracks the Enforcement) and in the Rules.  However, because the UPC has to make its decisions on the basis of Union Law (see Articles 20 and 24 of the UPCA) (which includes the Enforcement Directive), a change to the Enforcement Directive could spell big changes for the UPC.  This raises the idea that, insofar as stakeholders are unhappy with the way the UPC's provisions ended up on any enforcement issue (and therefore are also unhappy with the Enforcement Directive), the consultation may provide another opportunity to change the UPC's approach.

Is this likely, though?  Or is it more likely that if any change occurs to the Enforcement Directive it will be on the issue of when injunctions should be granted against ISPs?  What do readers think will be the hot issues?

1 comment:

Stephen Johnson said...

The issue discussed in the US (against the background of the eBay decision) is whether grant of permanent injunctions in the UPC will be essentially automatic or whether the principle of proportionality will be taken into account. See e.g. the decision of Justice Arnold in HTC v Nokia (3 December 2013)"("Drawing these threads together, I consider that Article 3(2) of the Enforcement Directive permits and requires the court to refuse to grant an injunction where it would be disproportionate to grant one even having regard to the requirements of efficacy and dissuasiveness. Where the right sought to be enforced by the injunction is a patent, however, the court must be very cautious before making an order which is tantamount to a compulsory licence in circumstances where no compulsory licence would be available. It follows that, where no other countervailing right is in play, the burden on the party seeking to show that the injunction would be disproportionate is a heavy one. I suspect that the practical effect of this approach is little different to Pumfrey J’s test of “grossly disproportionate”)

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