19 December 2006
Dear Members of the Legal Affairs Committee,
FFII is pleased to be able to offer a single webpage, bringing together all the amendments submitted to JURI on this dossier, including those from the ITRE and LIBE opinions, all translated into English:
We hope that the ability to compare all the texts in a single language may be helpful in preparing for your deliberations on Wednesday afternoon.
FFII's principal concern about the current text of the Directive is ably expressed in the Justification to Amendment 30 by Mr Lehne:
- "Its current wording could indeed criminalize IPR disputes that are essentially of a civil nature and occur between legitimate commercial enterprises."
The same point is made forcefully, at greater length, by the UK Chartered Institute of Patent Agents (CIPA), in this briefing.
In FFII's view, criminal sanctions are only appropriate in cases where the question of whether or not there is an infringement is black-and-white ("beyond a reasonable doubt").
We therefore welcome the general acceptance that patents should be excluded from the scope of the Directive; but excluding patents is not enough. Very similar questions of whether rights are valid (and if they are valid, of whether the actions in question fall within the valid scope of the right) also apply to a number of other rights, most notably:
- design rights, which are unexamined and may often be invalid.
- utility model rights, which are unexamined, may be invalid, and share the "unclear scope" problem of patents, their big brothers
- database rights, which according to the Commission's own report 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).
Like CIPA, we therefore recommend that the Directive is limited to the areas of copyright infringement and trademark infringement only. These are both the clearest legally, and the most commercially important, but it needs to be backed up with articles defining the offences, i.e. definitions of what kind of breaching activity constitutes a crime (and which activities should be left out to civil law conflict resolution).
As a matter of proportionality, we believe it is necessary to define "commercial scale" as an element of the crime. Otherwise, non-commercial activities of ordinary citizens risk criminalisation. Unfortunately, amendment 64 by Mr Lehne and amendment 65 by Mrs Fourtou suggests to remove this requirement. Fortunately, other amendments suggests to use the principle of proportionality as described by the 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."
Finally, it is paramount to ensure that normal business activity is not disturbed by this directive. Normal business activity is of course always intentional, which makes the Directive's definitions regarding intentionality extremely important.
Sincerely yours,
Benjamin Henrion
