Thursday 15 March 2007
Dear Members of the European Parliament,
In our opinion the Legal Affairs Committee draft report for the Criminal measures IP directive is not ready for adoption. The two most important issues have not been solved. Many stakeholders have asked to limit the directive to clear cases of piracy. And the directive should not criminalise consumers.
The Max Planck Institute for Intellectual Property, Competition and Tax Law (MPI), and the Chartered Institute of Patent Agents (CIPA) gave detailed recommendations to solve this. The draft report does not implement these recommendations.
The draft report provides definitions for commercial scale and intentional. These do not limit the directive to clear cases of piracy, as explained in detail in the attachment.
The oral draft report amendment for commercial scale is weak. It comes from the considerations part of the civil law IPRED1 directive (2004/48/EC), not even from its articles. The amendment's text is imprecise - it uses civil law considerations as a criminal law article.
The last part of the oral draft report amendment for intentional contains a new formulation: "acceptance of such infringement". This wording is potentially so broad, it could mean anything.
The only viable approach is implementing the MPI and CIPA recommendations. Unfortunately, amendments implementing these recommendations are rendered caduc by many other amendments. A good outcome of the Legal Affairs Committee vote is hardly possible. For this reason we call upon the rapporteur to reconsider the draft report.
It makes sense to fight piracy, it does not make sense to criminalise legitimate commercial enterprises and consumers. At least the following stake holders have asked to limit the directive to clear cases of piracy: The Max Planck Institute for Intellectual Property, Competition and Tax Law, the Chartered Institute of Patent Agents, the Law Society of England and Wales, the Austrian Federal Chamber of Labour, EGA, EICTA, ECIS, ECTA, FIPR, BEUC, LACA and ETNO.
Yours sincerely,
Ante Wessels
The Legal Affairs Committee draft report fails in limiting the directive to clear cases of piracy
The Commission did not embark on a thorough investigation as to the legal and factual conditions for this legislation. As a result the Commission proposal has extremely loose definitions.
The Commission proposal has an extremely wide definition of the crime: all intentional commercial scale infringements. This definition includes IPR disputes that are essentially of a civil nature and occur between legitimate commercial enterprises. Unexamined rights are under the scope.
The Legal Affairs Committee draft report provides definitions of commercial scale and intentional. It limits the scope but does not remove all unexamined rights.
Legitimate commercial enterprises operate on a commercial scale. No definition of commercial scale will exclude them. Commercial actions are intentional. No definition of intentional will exclude legitimate commercial enterprises fully.
In order to make a distinction between piracy and intentional commercial scale infringements by legitimate commercial enterprises the infringing item has to be defined. The Max Planck Institute (MPI):
- Identity with the infringed object of protection (the infringing item emulates the characteristic elements of a protected product or distinctive sign in an unmodified fashion [construction, assembly, etc.]).
This element of the crime is missing in the Commission proposal and in the Legal Affairs Committee draft report.
Limit the directive to clear cases of piracy
To limit the directive to clear cases of piracy, both the recommendations by the Max Planck Institute and the Chartered Institute of Patent Agents have to be implemented.
Max Planck Institute:
"Indeed, when proper account is taken of the proportionality principle [...], harmonisation of criminal penalties can only be justified in relation to acts fulfilling the following elements cumulatively:
- Identity with the infringed object of protection (the infringing item emulates the characteristic elements of a protected product or distinctive sign in an unmodified fashion [construction, assembly, etc.]).
- Commercial activity with an intention to earn a profit.
- Intent or contingent intent (dolus eventualis) with regard to the existence of the infringed right."
The first element is implemented in JURI amendments 47 and 51 (and others):
"For the purposes of this Directive, 'infringement' means an infringement where the infringing item emulates the characteristic elements of a protected product or distinctive sign in an unmodified fashion."
The second element is implemented in JURI amendments 53, 54 and others.
The Chartered Institute of Patent Agents (CIPA) warned against inclusion of rights which are not examined, and against rights in relation to which there are often significant arguments after examination (eg about their validity and scope), such as patents.
CIPA believes "that criminal sanctions should generally be restricted to registered trade marks and copyright, and the Directive should generally not seek to criminalise acts in relation to other intellectual property rights."
See for this and other issues our earlier letter: Criminal Measures IP Directive - 4 Essential Issues and Solutions