Annex 1
FURTHER COMMENTS ON THE UK IMPLEMENTATION
OF THE ENFORCEMENT DIRECTIVE
Following the Government's response to its consultation
on the UK Implementation of the Enforcement Directive, there remain
a number of related issues which the Alliance would like to raise:
ARTICLE 4: PERSONS
ENTITLED TO
APPLY FOR
THE APPLICATION
OF MEASURES,
PROCEDURES AND
REMEDIES
We welcome the changes suggested in section
102A enabling representative associations to bring action in their
own name as provided for in the Directive, but endorse the further
points regarding this Article the Federation Against Software
Theft make in its submission.
ARTICLE 5: PRESUMPTIONS
The Alliance accepts the Government's rationale
that to extend the presumptions proposed for civil proceedings
to criminal proceedings via this Directive would be inappropriate,
and will seek other avenues for this extension to take place.
However, the Government's response thus far
does not address the further points raised in the Alliance's submission
regarding presumptions—namely those of subsistence of copyright
and lack of licence.
Presumption of subsistence of copyright
As outlined in our original submission, the
Alliance submits that such a provision as exists in section 139
(2) of the Irish Copyright Act—"Copyright shall
be presumed to subsist in a work until the contrary is proved"—should
be included within the CPDA. This is important in order to afford
proper protection to creators, innovators and owners of copyright
whose claims can be disproportionately extended by defendants
who simply put them to strict proof on all elements of the claim.
Although the practical burden of proving subsistence may be very
great for some right holders, subsistence is in truth much less
disputable than authorship, a presumption of which has been part
of our law since 1911 and is required by the Berne Convention.
Such a presumption is less burdensome for defendants than the
existing presumption of authorship, which is widely accepted as
being necessary and reasonable.
Presumption of lack of licence
The Alliance also submits that there ought to
be embodied in UK law a presumption that the defendant does not
have a licence to exploit the copyright work. Again, this presumption
would be rebuttable and the defendant could easily prove the fact
of his licence by producing it to the court. This would follow
the law relating to various every day offences where the relevant
information is normally within the knowledge of the defendant,
such as driving without insurance (burden on the accused to produce
his certificate of insurance).
There is a precedent for such provision given
there was a qualified presumption of subsistence under the 1956
Act, and therefore the Alliance believes the CDPA should be amended
to reflect this. The Alliance also believes this amendment is
necessary to meet the general obligation under Article 3 that
IP protection must be effective and not unnecessarily complicated
or costly. The burden of proving a lack of licence from any possible
source is disproportionately onerous on a rights owner in light
of the ease with which a defendant can produce or prove the grant
of licence on which he relies.
ARTICLE 7: CIVIL
SEARCHES
The Alliance accepts that there is a civil search
and seizure remedy present in the United Kingdom, and as such,
Article 7 does not need to be implemented to introduce such a
remedy. However, the Alliance is disappointed that no review of
the remedy itself, and in particular the costly, anachronistic
and unnecessary "supervising solicitor" obligation,
has been undertaken. This latter requirement means that the remedy
is beyond the means of all but the wealthiest of right holders.
In addition, the Alliance endorses the position
taken by BSA in its response to the Patent Office concerning Article
7(5): the Alliance does not believe that unattributed evidence
is admissible in civil search and seizure applications, a matter
that should be addressed by a proper implementation of Article
7(5).
ARTICLE 8: RIGHT
OF INFORMATION
The Alliance is concerned with the current wording
used in the heading of Regulation 5 and feels it could unintentionally
be misleading. At present the heading reads "Order in Scotland
for disclosure of information about infringing articles".
Given that the disclosure is concerned with the circumstances
of infringing acts, which could include services, the Alliance
respectfully suggests this is amended.
In addition, the Alliance strongly recommends
that the Government avoid there being a different right of information
regime in Scotland from that in England, which would be the case
if the regulation were to be adopted as currently drafted. To
avoid this, the Alliance suggests the regulation simply read:
"The jurisdiction referred to in the decision
of the House of Lords known as Norwich Pharmacal Co. v Customs
and Excise Commissioners to order persons to disclose full
information as to the circumstances of tortious acts and as to
the identity of wrongdoers shall be exercisable in Scotland as
it is in England and Wales".
ARTICLE 9: PROVISIONAL
AND PRECAUTIONARY
MEASURES
The Alliance also seeks greater clarity over
the explicit provision in relation to all IP rights for the grant
of an injunction against an intermediary to prevent or determine
an infringement by a third party.
The consultation response makes reference to
this suggestion but with no final decision or recommendation made.
This provision is very important and already exists in respect
of copyright infringement by a third party, via section 97A of
the CPDA, and should be extended to all IP rights.
The Alliance is disappointed that the Patent
Office has not taken this opportunity to, at the very least, make
any recommendations in respect of damages awarded in cases of
IP theft, ahead of the anticipated DCA review of damages generally.
It is widely accepted that the absence of an effective damages
regime to protect intellectual property rights in the United Kingdom
is a direct cause of IP theft, a fact that should be recognised
and addressed if the crippling levels of IP crime present in the
United Kingdom are to be reduced.
Finally, the Alliance also notes that the jurisdiction
of Northern Ireland has not been addressed. There are several
areas that will need reform, as there are with Scotland and England
and Wales, and a regime that is consistent across all three jurisdictions
is highly desirable to reduce cost and confusion, as well as to
comply with the harmonising intent of the directive. In particular
there is a need for pre-action disclosure as in rule 31 in England
and Wales and a need for clarity on non-compensatory damages (unless
the DCA consultation is intended to deal with Northern Ireland
as well).
27 February 2006
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