WIPO IP Enforcement News: July - September 2004
I. SELECTED WIPO ACTIVITIES
WIPO IPEIS FORUM - UNRESTRICTED ACCESS TO THE INFORMATION EXCHANGE PLATFORM
WIPO has the pleasure to announce that access to the information exchange platform in the IPEIS Forum is no longer restricted to registered participants. The decision to open this part of the Forum has been taken by the Advisory Committee on Enforcement (ACE) in its June 2004 session in order to allow a wider participation of stakeholders with a specific expertise in the field of IP enforcement. Interested parties are thus invited to share information on their respective experiences which are of general interest by submitting, to the International Bureau, documents suitable for posting on the Electronic Forum. To encourage a broad use of the Information Exchange, WIPO invites current participants of the IPEIS Forum to promote the use of this platform among relevant national stakeholders, such as collective management organizations, business and consumer associations, bar/attorney associations, etc. See http://www.wipo.int/ipeis/en/
WIPO GENERAL ASSEMBLY REVIEWED THE WORK OF THE ACE
Under agenda item 9, the WIPO General Assembly, held in Geneva from September 27 through October 5, 2004, reviewed the work of the WIPO Advisory Committee on Enforcement (ACE). Following a summary by the Chair, Mr. Henry Olsson, of the conclusions of the second session of the ACE (see document WIPO/ACE/2/13), and comments by a number of delegations, the General Assembly encouraged this body to continue its work. See press release http://www.wipo.int/edocs/prdocs/en/2004/wipo_pr_2004_397.html
The full report on the WIPO General Assembly will soon be available on WIPO's website.
WIPO TRAINING ACTIVITIES
Over the past months, WIPO continued to respond to requests from its Member States in the area of IP enforcement and held training sessions designed to address specific needs in this field. These activities included:
- Viet Nam : WIPO National Roving Workshop on the Enforcement of Intellectual Property Rights, Hanoi and Ho Chi Minh City, July 5 to 9, 2004, organized by WIPO in cooperation with the National Office of Intellectual Property of Viet Nam with the assistance with of the Japan Patent Office;
- Sri Lanka : WIPO National Seminar on Enforcement of Copyright and Related Rights, Colombo, July 20-21, 2004, organized by WIPO in cooperation with the National Intellectual Property Office of the ministry of Trade, Commerce and Consumer Affairs, Government of Sri Lanka, with the assistance of the of the Japan Patent Office;
- Trinidad & Tobago: WIPO Workshop on the Enforcement of Intellectual Property Rights for Police and Customs Officers, Port of Spain, September 6-7, organized by WIPO in cooperation with the Intellectual Property Office of Trinidad & Tobago;
- St. Lucia : WIPO Workshop on the Enforcement of Intellectual Property Rights for Police and Customs Officers, Castries, September 9-10, 2004, organized by WIPO in cooperation with the Attorney-Generals Chambers of the Government of Saint Lucia.
In addition, WIPO participated and lectured in the Balkan Legal Forum educational session "South East Europe - Business and Law, organized by the Legal Development Foundation and the European Forum of the International Bar Association, held in Sofia, Bulgaria, on September 15-17, 2004. One of the two panels was dedicated to "IP protection and enforcement in South East Europe", providing an overview of the legal framework and the practice of IP enforcement in the region.
COOPERATION WITH THE EUROPEAN COMMISSION (CARDS PROJECT)
In the framework of WIPOs cooperation with the European Commission's CARDS (Community Assistance for Reconstruction, Development and Stabilisation) Regional Project for Intellectual Property Rights Protection in the Western Balkans, WIPO assisted in the Operational Seminar on the Role of the Customs in Combating Counterfeiting & Piracy, Belgrade, October 4-7, 2004, organized by the European Patent Office in collaboration with the European Commission Directorate-General for Taxation and the Customs Union. Participants of this regional event were representatives of the customs authorities from Albania, Bosnia & Herzegovina, Croatia, Macedonia, and Serbia & Montenegro. The program included a session of presentations on the legal framework related to IP enforcement and border measures, as well as the evolution of counterfeiting and piracy and the related evolution of customs techniques, namely targeting and selection techniques. To a large extent, practical exercises were held, including on-the-job training at the operational site of Port of Belgrade.
Presentations as well as the seminar program are to be made available by CARDS on its website in
II. SOME LINKS:
ROMANIA : JUDICIAL REFORM AND THE CREATION OF A SPECIALIZED INTELLECTUAL PROPERTY TRIBUNAL
In the framework of the Strategy for Reforming the Judiciary in Romania, three essential laws addressing the organization of the judiciary (law no. 304), the statute of magistrates (law no. 303), and the superior council of magistracy (law no. 317), have entered into force. As an important part of this process, the setting up of specialized tribunals for certain areas of disputes was identified. Intellectual property ranges among these areas, along with matters related to family and minors, commercial law, labour and social law, and administrative-fiscal law. The process is intended to be completed by January 2008; by the end of September 2004, the first two specialized commercial tribunals have been inaugurated. In connection with the preparation for the setting up of the specialized IP tribunal, WIPO is organizing an information session for the future judges of this body. More detailed information on this session, to be held at WIPOs headquarters and at a specialized IP court in Germany, will be made available shortly on this website.
For more details on the current status of the judicial reform project see information available on the website of the Mission of Romania to the European Union : http://ue.mae.ro/index.php?lang=en&id=31&s=763
UK (I): PATENT OFFICE IP CRIME STRATEGY
The UK Patent Office has published a report which proposes a strategy on how to strengthen efforts in combating IP crime. Incorporating contributions from government, enforcement agencies and industry groups, the report promotes a coordinated approach which would bring together policy makers, business and enforcement officials. The report is available online at http://www.patent.gov.uk/about/enforcement/ipbook.pdf
UK (II): PATENT LITIGATION INSURANCE - PATENT ENFORCEMENT WORKING GROUP PRESENTED REPORT
Commissioned by the UK Patent Office, an insurance consultant published a report which, finding that the cost of patent litigation is an obstacle preventing patentee SMEs from enjoying the benefits of the patent system, analyses possible insurance schemes that would help inventors to litigate. The report proposes a government-backed scheme which would, for an initial period, require government funding, while later, with a growing number of members, be self sustaining. The report also refers to a growing use of alternative dispute resolution (ADR) in IP disputes, and generally calls for stronger encouragement of this option.
The full report is available at http://www.patent.gov.uk/about/enforcement/finalreportv1.pdf
Another set of information related to patent litigation insurance schemes, addressing the situation in the EU Member States and the attitude by companies, patent professionals, insurers and brokers to such schemes, can be found in an earlier study, undertaken for the European Commission, dated January 2003. See http://www.europa.eu.int/comm/internal_market/en/indprop/patent/docs/patent-litigation-insurance_en.pdf
For more information about ADR in general and the services of the WIPO Arbitration and Mediation Centre, please see http://arbiter.wipo.int/center/index.html
CHINA: IPR LAW ENFORCEMENT CAMPAIGN
On September 6, 2004, Mr. Zhang Zhigang, the director of the Office of the National Working
Group for Intellectual Property Rights (IPR) Protection and vice minister of the Ministry of
Commerce, briefed the press on the special law enforcement campaign for intellectual property
rights in China. Key issues of this campaign include the organization of special enforcement
operations to further strengthen the role of IPR protection, the current situation and future work
of customs enforcement of IPR in China, and increased efforts concerning the fight against IP
infringements and piracy. Information on these elements of the campaign are set out in three
US: STUDY ON COPYRIGHT ISSUES IN THE DIGITAL MEDIA
In August 2004, the U.S. Congressional Budget Office released a study titled "Copyright Issues in Digital Media". It reviews current copyright law in the US and the digital technologies continuing challenges to legal instruments, including obstacles to copyright enforcement in this digital environment. See http://www.cbo.gov/showdoc.cfm?index=5738&sequence=0&from=0#anchor
EU (I): COMMISSION STRATEGY PAPER FOR THE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS IN THIRD COUNTRIES
The Commissions Directorate General for Trade (DG TRADE) published a strategy paper which aims, inter alia, to provide a long-term line of action for the Commission services related to IP violations outside the EU Member States. The approach is based on the analysis that, despite the fact that most WTO Members have adopted legislation that implement minimum standards of IP rights enforcement, IP violations, namely in the form of piracy and counterfeiting, continue to increase. The paper contains both a set of background information on IP rights violations, both in- and outside the Union, as well the proposed Community action which involves, for instance, multilateral/bilateral agreements, political dialogue, technical cooperation and awareness-raising, dispute settlement and institutional cooperation.
The paper sees this approach in close connection with DG TRADEs "Survey on Enforcement of IP rights in third countries", launched in 2002, as well as with the recent activities in the field of IP Enforcement at the EU level, like the Enforcement Directive (Directive 2004/48/EC) that will harmonize IP enforcement legislation within the EU, and the revised Customs Regulation (Regulation EC 1383/2003) to reinforce customs intervention against counterfeit and pirated goods at the Communitys external borders.
The strategy paper can be seen at http://trade-info.cec.eu.int/doclib/docs/2004/july/tradoc_117828.pdf
An overview of the survey is available at http://trade-info.cec.eu.int/doclib/docs/2004/august/tradoc_113229.pdf
EU (II): COPYRIGHT COLLECTIVE MANAGEMENT CONSULTATION - CONTRIBUTIONS AVAILABLE
To explore components of a possible legislation on collective rights management, the EU Commission had launched a consultation process aiming to collect the views of the representative organizations at EU level (see WIPO IP Enforcement News April-June). A large number of contributions to this consultation by organizations and other stakeholders can now be found at http://www.europa.eu.int/comm/internal_market/copyright/management/contributions_en.htm
DRAFT HAGUE CONVENTION ON CHOICE OF COURT AGREEMENTS (I) EUROPEAN COMMISSION LAUNCHED CONSULATIONS
In order to prepare the Community position on the Draft Hague Convention on Choice of Court Agreements, the European Commission has launched a public consultation on that draft instrument. Based on the text of the Draft Convention as per Working Document 110 Rev., the Commission formulated 26 questions related to key issues of a future Convention to allow to define a proper balance between the different interests that might be involved. Question 3 addresses the debate relating to the inclusion of intellectual property rights as provisionally formulated in Art. 2(2)(k) of the draft text. The question addresses both (a) the suggested solution for industrial property, including the treatment of incidental questions in Art. 6 and 10, and (b) the proposal related to copyright matters.
A deadline for contributions is set at November 15, 2004.
The text of the consultation is available at http://www.europa.eu.int/comm/justice_home/news/intro/6853_consultation_paper_en.pdf
For Working Document 110 Rev. see http://www.hcch.net/doc/jdgm_wd110_e.pdf
DRAFT HAGUE CONVENTION ON CHOICE OF COURT AGREEMENTS (II) NEW DRAFT REPORT AVAILABLE
The revised draft report on the preliminary draft Convention on Choice of Court Agreements
(Preliminary Document No. 26 of August 26, 2004) is available on the website of the Hague
Conference on Private International Law. The draft report, drawn up by Mr. Masato Dogauchi and Mr.
Trevor Hartley, provides an article-by-article commentary to the draft Convention as per Working
Documents 110 Rev.
INTERNATIONAL BAR ASSOCIATON (IBA) : DRAFT SURVEY OF SPECIALIZED INTELLECTUAL PROPERTY COURTS
The IBA Intellectual Property and Entertainment Law Committee has presented a draft survey measuring the existence and utilization of specialized IP courts or tribunals and judges in various jurisdictions around the globe. Based on the input of 70 contributions, the survey identifies the lack of specialized expertise in the judiciary as a major problem for effective enforcement of IP rights. It also finds a global trend towards the establishment of specialized bodies to handle IP disputes, however, the way in which such bodies are set up and integrated into existing judicial or administrative structures varies considerably. The draft will be reviewed at the IBA Conference 2004, held on October 24-29, 2004 in Auckland, New Zealand. WIPO has already provided input to this work, and further collaboration between the organizations in this field is planned.
The draft report is available at http://www.comml-iba.org/pdf/ipsurvey.pdf
INTERNATIONAL FEDERATION OF THE PHONGRAPHIC INDUSTRY (IFPI): COMMERCIAL PIRACY REPORT 2004 PUBLISHED
In July 2004, IFPI released its Commercial Piracy Report 2004 which analyses commercial piracy of physical formats (as opposed to internet piracy). It provides, inter alia, statistics for the year 2003, and information about IFPIs anti-piracy activities in 2003 and 2004. Main findings of the report are that while global sales of pirate music have hit another record trade in fake CD is spreading more slowly than in recent years, and music piracy remains a business driven by organized crime and corruption. See IFPI press release at http://www.ifpi.org/site-content/press/20040722.html
The full report is available at http://www.ifpi.org/site-content/library/piracy2004.pdf
ARTICLE: KEY DEVELOPMENTS FOR INTERNATIONAL BRAND OWNERS IN THE PHILIPPINES
This article, written by two legal practitioners, reviews some recent IP case law in the Philippines, both in the field of administrative remedies, namely opposition procedures, and judicial decisions.
The article is available online at http://www.legalmediagroup.com/mip/default.asp?Page=1&SID=2373&ImgName=brandman04.gif&=F=F
STUDY: EFFECTS OF PEER-TO-PEER FILESHARING ON THE FILM INDUSTRY
This study, undetaken at Bauhaus University Weimar and University of Cologne, Germany, was conducted from May to August 2004. It seeks to identify factors that determine the extent of downloading as well as the kind of films which are downloaded in P2P networks. It also addresses the question of the impact of using such networks on the consumption of other sources, namely DVD and cinema.
A summary of the study is available at http://www.fafo.at/Newsletter/2004/NL4-StudieP2P.pdf