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Art 1

Amended proposal for a Directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights

2005/0127 (COD)

Carte blanche: open ended Scope

The explanation on art 1 mentions the "[http://europa.eu.int/eur-lex/lex/LexUriServ/site/en/oj/2005/l_094/l_09420050413en00370037.pdf STATEMENT BY THE COMMISSION] concerning Article 2 of Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights"

This statement says: "The Commission considers that at least the following intellectual property rights are covered by the scope of the Directive:"

"At least" it says, and then follows a list with 11 "IP-rights". All existing and future "IP-rights" are covered, it is a carte blanche. This may open the door to pseudo-IP rights and protection of know how.

We do not know how many rights are covered by the directive. In some countries there may be more rights covered than in others - a distortion of trade, rather than a solution for it. Note the last right mentioned: "trade names, in so far as these are protected as exclusive property rights in the national law concerned". So the commission wants to harmonise sanctions, while the right itself is not harmonised.

All the concerned "IP-rights" have to be mentioned in the directive itself to avoid confusion. In conjunction with intellectual property rights legal scholars speak about a "numerus clausus": it is a "closed system" of rights explicity enumerated by the legislator. It is an age-old principle IPRED2 will violate by using "intellectual property" as a generic term without further qualification. It should also be remembered that "intellectual property" is not property in the usual meaning of the term.

The Commission only gave examples of Copyright piracy and Trademark counterfeiting. Both are already forbidden in all European countries (TRIPS treaty art 61).

Rights with validity problems, like Patents, Utility Models rights and Design rights (both registered and unregistered), do not offer a solid enough basis for criminal measures. Criminal measures will have an adverse effect on competition and innovation.

Patents and Trade Name rights are not Community law.

Below we will say more about the concerned "IP-rights". This is the list of the IP-rights concerned: copyright, rights related to copyright, sui generis right of a database maker, rights of the creator of the topographies of a semiconductor product, trademark rights, design rights patent rights, including rights derived from supplementary protection certificates, geographical indications, utility model rights, plant variety rights, trade names, in so far as these are protected as exclusive property rights in the national law concerned.

These IP-rights are very different from each other. Possible issues with them have not been investigated by the Commission.

The directive should not criminalise inciting and abetting beyond general rules that exist in some countries making it a crime to incite to a crime.

See [http://register.consilium.europa.eu/pdf/en/06/st08/st08319.en06.pdf here] for discussion on scope in the European Council. See also [http://www.ipjur.com/2006/06/eu-discussions-on-criminal-measures.php3 Axel Horns].

A closer look at the rights systems

Patents unfit for criminal sanctions

The European Patent Office grants many weak patents, that should never have been granted. Companies often intentionally violate patents, because they believe the patent will not be strong enough to survive a civil procedure. But with criminal measures against patent infringement, such conduct is inhibited. Weak patents will gain a great threat potential, limiting the freedom to act in the market.

It is impossible to write software without violating patents. “Independent (re)discovery” occurs daily. A whole industry will be criminalised. Microsoft has been violating many patents, and had to pay huge damages. But do we really want to see Bill Gates in prison?

There are more sectors with much incremental development which may face the same problems.

Even companies which merely use properly licensed software are criminalised, since such use is intentional, commercial scale and can infringe on software patents.

In the countries that have criminal provisions against patent infringement, they are hardly ever used, even by SMEs. Commercial parties prefer settlement, not punishment. In the U.S, there are no criminal sanctions against patent infringement. In some countries, including the Netherlands, France and Belgium, unexamined patents are granted.

The “As such” exclusions (software as such, business methods as such, etc) are unclear and drifting. What is not a crime today, may be a crime tomorrow, without any change of law.

Criminal sanctions and community patent (and London Agreement) do not go together. People are entitled to read the rules they can violate in their own language.

During a [http://wiki.ffii.org/IpredEp051122En hearing on the IPRED2 directive], many industry representatives spoke out against criminal sanctions on patent violations, or voiced concerns over them.

Also according to Thomas Vinje, partner at Clifford Chance LLP, [http://www.ffii.se/erik/misc/JURIhearing050131/vinje.pdf patents should be exluded from the scope of any criminal enforcement directive].

The Commission did not provide examples of piracy. No Community law.

Utility models

The Commission did not provide examples of piracy. With utility models, the situation is worse than with patents. Utility models are not even examined before they are granted. No Community law.

Design rights

The Commission did not provide examples of piracy. Unregistered Community Design rights arise automatically. Registered Community Design applications are given essentially no substantive examination. They are often of very dubious validity. See also [http://www.ffii.se/erik/misc/JURIhearing050131/vinje.pdf Thomas Vinje]

Copyright not straightforward

Copyright may look straightforward. Yet in copyright, parodies, independent recreations and citations are free. Parody, independent recreation and citation are defined well enough for civil law, not for criminal law. The definition of "work" is not straighforward either.

Authors may actually benefit from 'unauthorised' copying.

Freedom of speech may suffer. With the directive, a journalist could be prosecuted that uses a citation that is too long, not considered a citation any more. People revealing documents could be prosecuted for violation of copyright. Artists may be prosecuted if their work is not considered a parody. Software developers and others could be prosecuted if their work is not considered an independent recreation.

A clear distinction has to be made between commercial infringements and piracy.

Rights related to copyright

The Commission did not provide examples of piracy.

Trade marks cases complicated and subtle

In trade marks, currently typically only counterfeiting is a crime, e.g. art. 337 Dutch Criminal Code. Trademark infringement in general is very complicated and subtle (“confusion” criterion after Puma/Sabel). the directive creates a risk of reverse hijacking, prosecuting legitimate owners under false pretexts, for instance with domain names in particular.

Trade marks have to be defended rigorously, otherwise they are lost. Trade marks are unstable. Except for counterfeiting, trade marks are not suited for criminal sanctions.

Trade names

The Commission did not provide examples of piracy. The right does not exist in all member states. No Community law.

In the Netherlands, there have not been cases for the last 50 years. Clearly, there is a total lack of necessity. And the sanctions are disproportionate to the offense, which is a violation of article 49(3) of the Charter of Fundamental Rights.

Plant variety rights

The Commission did not provide examples of piracy.

Geographical indications

The Commission did not provide examples of piracy.

Rights of the creator of the topographies of a semiconductor product

The Commission did not provide examples of piracy.

Sui generis right of a database maker

The Commission did not provide examples of piracy. Validity problem: database rights are only protected if it took qualitatively and/or quantitatively a substantial investment. This can not be seen from the outside. It is not known in advance whether an act is an infringement. It can not be known in advance whether an act is a crime.

According to the Commission's own report Database rights are surrounded by "considerable legal uncertainty", due to vague legal drafting, and the unclear criterion of what constitutes "substantial investment" by the database owner (recently challenged in several ECJ decisions)