Wednesday, December 27, 2017

European Commission Communications on IP Rights

As I noted on November 30 (here), in addition to publishing a communication on the EU approach to SEPs on November 29 (see post here), the European Commission had also published two other communications relevant to IP enforcement, a Communication from the Commission to the Institutions on Guidance on certain aspects of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights and a Communication from the Commission to the Institutions - A balanced IP enforcement system responding to today's societal challenges. (There is also something called the "COMMISSION STAFF WORKING DOCUMENT: Overview of the functioning of the Memorandum of Understanding on the sale of counterfeit goods via the internet," described as an "Accompanying document to the COMMUNICATION FROM THE COMMISSION TO THE EUROPEAN PARLIAMENT, THE COUNCIL AND THE EUROPEAN ECONOMIC AND SOCIAL COMMITTEE: A balanced IP enforcement system responding to today's societal challenges," available here.)  The first of these is probably of greater importance to the law of remedies as such, though as the Commission notes it isn't legally binding, and in large part summarizes existing CJEU judgments on remedies, including the judgments in Stowarzyszenie ‘Oławska Telewizja Kablowa’ v. Stowarzyszenie Filmowców Polskich, Case C-367/15 on whether E.U. member states can award double damages for copyright infringement (see my blog post here), and in UnitedVideo Properties, Inc v Telenet NV, C-57/15 on the recovery of attorneys' and advisors' fees in IP cases (see my blog post here).  On these issues the document states, inter alia, the following:
Article 13(1)(b) of IPRED [the Intellectual Property Rights Enforcement Directive] does not preclude national legislation under which a holder of an infringed IPR may claim from the infringer the payment of a sum corresponding to twice the hypothetical royalty/fee. While Article 13(1)(b) of IPRED does not necessarily require such doubling of that hypothetical royalty/fee, the national legislation implementing this provision should enable the rightholder to demand that the damages set as a lump sum are calculated not only on the basis of the single amount of that hypothetical royalty/fee, but also on the basis of other appropriate aspects. This can include compensation for any costs that are linked to researching and identifying possible acts of infringement and compensation for possible moral prejudice or interest on the sums due. . . .
Article 14 of IPRED does not preclude national legislation providing for a flat-rate scheme to reimburse costs for a lawyer’s assistance, provided that those rates ensure that the costs to be borne by the unsuccessful party are reasonable, taking into account features which are specific to the case. However, Article 14 precludes national legislation providing for flat rates which are too low to ensure that, at the very least, a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party. . . .
Article 14 of IPRED applies to legal costs, which includes lawyers’ fees, as well as to other costs directly and closely related to the judicial proceedings concerned. The latter includes costs incurred for the services of a technical adviser, where those services are essential in order for a legal action to be usefully brought seeking, in a specific case, to have a right upheld.
Much of the document, however, discusses such topics as injunctions against intermediaries (often of greater relevance in the copyright and trademark arenas), preservation orders, the provision of security, confidentiality measures, and so on.  The Commission also has some kinds words about protective letters (a/k/a protective briefs or writs), an instrument by which "a defendant fearing to be sued for an IPR infringement (for instance, because it has received a warning letter from the rightholder) informs the competent judicial authorities in advance, (i.e. even before an application has been made), why the potential infringement claim is, according to the defendant, not founded," stating:
Although not expressly provided for in IPRED, the instrument of a protective brief can be seen as a good instrument to help balance, in a fair and proportionate manner, the various conflicting interests and fundamental rights at issue in relation to the possibility of issuing ex parte measures set out in Articles 7(1) and 9(4) of IPRED.
For previous metnion on this blog, see, e.g., here, here, and here.

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