World Intellectual Property Organization

WIPO IP Enforcement News: April to June 2004

I. SELECTED ACTIVITIES OF WIPO

SECOND SESSION OF THE ADVISORY COMMITTEE ON ENFORCEMENT (ACE), JUNE 28-30, 2004

Some 143 representatives from 62 member states, 3 inter-governmental organizations, and 13 non-governmental organizations attended the second session which was chaired by Mr. Henry Olsson, Special Government Advisor, Ministry of Justice of Sweden.

As agreed, the discussions in this session followed the principle of a thematic approach, and focused on the role of the judiciary and quasi-judicial authorities, as well as of the prosecution, in enforcement activities, including related issues such as litigation costs. In that context, the Committee heard seven presentations by senior judges and government officials examining, inter alia, the issue of specialization of the judiciary; the question of determination of damages in different legal systems; the costs of intellectual property litigation and concepts to reduce these costs, such as effective case management by the judiciary, the integration of mediation procedures within judicial structures, and the streamlining of procedures in IP litigation.; quasi-judicial procedures; and criminal sanctions and procedures.

The Committee decided that the third session in 2005 should focus on the issue of education and awareness-building, including training, concerning all factors relating to enforcement, primarily those indicated in requests for assistance by Member States. The Chairman summarized the results of the meeting in Conclusions by the Chair, available at

http://www.wipo.int/documents/en/meetings/2004/ace/pdf/wipo_ace_2_13.pdf

All documents related to the second session of the ACE, including the papers prepared by the speakers, can be found on the WIPO enforcement website, see

http://www.wipo.int/documents/en/meetings/2004/ace/index_2.htm

See also the press update at

http://www.wipo.int/edocs/prdocs/en/2004/wipo_upd_2004_227.html

 

FIRST GLOBAL CONGRESS ON COMBATING COUNTERFEITING, MAY 25-26, 2004

On May 25 and 26, 2004, the First Global Congress on combating counterfeiting took place in Brussels, organized by the World Customs Organization (WCO) and Interpol, with the support and participation of WIPO, and in cooperation with the Global Business Leaders Alliance Against Counterfeiting (GBLAAC), the International Trademark Association (INTA), the International Security Management Association (ISMA) and some members of the WCO IPR Strategic Group.

The purpose of the congress was to develop collective understanding of the extent of counterfeiting and piracy, and to identify expedient measures, for both the public and the private sector, in shaping future enforcement strategies and actions. The Congress was attended by senior decision makers and leaders from the public and private sectors. The agenda and information on speakers and participants, as well as information on topics discussed during the event, are available at a specific website created for the Congress, see

http://www.anti-counterfeitcongress.org/wco2004/website.asp

At the end of the Congress, in a final statement, participants adopted recommendations addressing various issues related to combating counterfeiting, such as awareness raising, cooperation and coordination between the public and the private sector, legislation and enforcement.

The final statement is available at

http://www.anti-counterfeitcongress.org/wco2004/website.asp?page=declaration

 

WIPO TRAINING ACTIVITIES

From April to June 2004, WIPO continued to hold, or participate in, a wide range of training sessions on the enforcement of intellectual property rights, at the attention of, in particular, judges, IP attorneys, customs and police officials. These activities included

  • WIPO Colloquium on the Protection and Enforcement of Intellectual Property (Lusaka, Zambia);
  • WIPO-USAID Subregional Seminar on Enforcement of IPRs (Almaty, Kazakhstan);
  • WIPO National Colloquium on Intellectual Property for Judges and Members of the Kenya Industrial Property Tribunal (Nairobi, Kenya);
  • WIPO Colloquium in Intellectual Property for Judges from Sudan (Geneva);
  • WIPO National Seminar on Enforcement of Intellectual Property Rights for Judges and General Prosecutors (Amman, Jordan);
  • WIPO Sub-Regional Meeting on the Enforcement of Intellectual Property Rights (Muscat, Oman);
  • WTO Regional Workshop for English-speaking African Countries (Sandton/ Johannesburg, South Africa).

 

COOPERATION WITH THE EUROPEAN COMMISSION

In the framework of WIPO’s ongoing cooperation with the European Commission, DG Enlargement, under the TAIEX program, WIPO assisted in another two events organized by TAIEX, namely (1) the Workshop for Judiciary, Police and Customs on the Enforcement of IPRs, held in Banská Bystrica, Slovakia, on May 27 and 28, 2004, and (2) the Conference on Intellectual Property in a Changing Society, Warsaw, Poland, from June 23-25, 2004 which dedicated an important part of the program to the enforcement of IP rights, including the international framework for the enforcement of IP rights, and the role of the courts in the enforcement of IP Rights. Presentations made by WIPO representatives and other experts, as well as the programs of the sessions, have been announced to be made available by TAIEX on its website in due course.

See http://taiex.be/

 

INTERPOL : INTELLECTUAL PROPERTY CRIME DAY, APRIL 15, 2004

WIPO participated and lectured in this event, which covered the second day of the three-day 2nd International Conference on Financial Crime. The IP Crime Day was attended by delegations of Member States of Interpol, as well as by representatives of a wide range of stakeholders involved in the fight against piracy and counterfeiting, both from the public and the private sector, providing an excellent opportunity for direct interaction.

For more information on Interpol and its Intellectual Property Crime Action Group (IIPCAG) see http://www.interpol.int/Public/FinancialCrime/IntellectualProperty/Default.asp

 

DRAFT HAGUE CONVENTION ON EXCLUSIVE CHOICE OF COURT AGREEMENTS - SECOND SESSION OF THE SPECIAL COMMISSION, APRIL 21-27, 2004

The second session was held from April 21-27, 2004, in The Hague, and continued to discuss the draft Convention. The implications of a future Convention on IP related disputes, including the treatment of incidental questions, were once again one of the key areas of discussion. Following the Session, the Drafting Committee produced a revised draft Convention (Working Document No.110 Rev.), which reflects the discussions in this session,

see website of the Hague Conference at

http://www.hcch.net/doc/jdgm_wd110_e.pdf

The rapporteurs, Mr. Masato Dogauchi and Mr. Trevor Hartley, prepared a draft report on the Convention, based on the previous draft Convention (Working Document No.49 E), see

http://www.hcch.net/doc/jdgm_pd25e.pdf

 

WIPO FORUM ON INTELLECTUAL PROPERTY AND SMEs, ALICANTE, MAY 27 AND 28, 2004

This year, the WIPO annual Forum on intellectual property and SMEs for IP Offices and relevant institutions in the member countries of the OECD and the EU Enlargement Countries, was held at headquarters of the Office for Harmonization of the Internal Market (OHIM). Two panel sessions focused on IP enforcement issues, namely under theme 3 (Administrative Procedures for Resolving IP Disputes at the IP Offices, e.g.: Opposition and Cancellation Proceeding) and theme 4 (Fighting Counterfeiting and Piracy: Role of IP Offices).

Information on program, speakers and participants of the Forum, as well a number of presentations held at the Forum, are available on a special Forum website, see

http://www.wipo.int/meetings/2004/alicante/en/index.html

 

EU CONFERENCE "THE TRIPS AGREEMENT - TEN YEARS LATER"

On June 23 and 24, 2004, a conference commemorating the 10th anniversary of the conclusion of TRIPS was held in Brussels, with panel participation of WIPO; one of the three panels dealt with the challenges of effective enforcement of intellectual property rights, including with a view to the TRIPS enforcement mechanisms, and current enforcement strategies.

For more information see

http://europa.eu.int/comm/trade/issues/sectoral/intell_property/pr110604_en.htm

 

II . SOME LINKS

CHINA / HONG KONG : COPYRIGHT LAW AMENDED TO FACILITATE ENFORCEMENT ACTION

The Legislative Council passed, on March 24, 2004, the Copyright (Amendment) Bill 2003 and approved the Copyright (Suspension of Amendments) Ordinance 2001 (Amendment) Notice 2004, introducing, inter alia, new provisions that intend to facilitate enforcement action and prosecution work against illicit reproduction of printed works.

See comments of the Hong Kong General Chamber of Commerce at

http://www.chamber.org.hk/info/nbs/nbs_template.asp?id=3977&keyword=&srch_type=

The Copyright (Amendment) Bill 2003 is available at

http://www.legco.gov.hk/yr02-03/english/bills/c005-e.pdf

 

EU (I) : DIRECTIVE 2004/48/EC OF APRIL 29, 2004, OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL ON THE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS ADOPTED

The Directive requires all Member States of the Union to apply a certain set of measures, procedures and remedies available for IP right holders to defend their intellectual property rights. Member States of the European Union have agreed to implement the Directive within two years after its publication in the European Union's Official Journal.

See press release of the Commission

http://europa.eu.int/rapid/pressReleasesAction.do?reference=IP/04/540&format=HTML&aged=0&language=EN&guiLanguage=en

The full text of the Directive is available at

http://www.europa.eu.int/eur-lex/pri/en/oj/dat/2004/l_195/l_19520040602en00160025.pdf

 

EU (II) : COPYRIGHT COLLECTIVE MANAGEMENT - CONSULTATION EXERCISE LAUNCHED BY THE COMMISSION

While the Community legal framework of substantive copyright and related rights law has been considerably harmonized over the past years, collective management of these rights has been dealt by with only marginally in the acquis communautaire. The Commission, considering that an internal market for collective rights management would be more firmly established if a legislative framework on the governance of collecting societies is implemented at the Community level, has launched a consultation process, beginning on April 19, 2004, to explore components of a possible legislation on collective rights management, and invited comments by all interested parties.

See press release at

http://europa.eu.int/rapid/start/cgi/guesten.ksh?p_action.gettxt=gt&doc=IP/04/492|0|RAPID&lg=EN

The full version of the Communication is available at

http://europa.eu.int/eur-lex/en/com/cnc/2004/com2004_0261en01.pdf

 

SINGAPORE : NEW LEGISLATION IN FORCE ADDRESSING VARIOUS MATTERS OF IP PROTECTION AND ENFORCEMENT

Following a review of national IP laws and processes, new legislation went into effect on July 1, 2004 which introduces a number of significant modifications to the law of IP protection and enforcement, including, for instance, the establishment of statutory damages for infringements of a trademark, as well as revised customs procedures which allow the customs authorities to act on their own initiative to prevent import of counterfeit goods.

See comments at

http://www.ladas.com/BULLETINS/2004/SingaporeFreeTrade.shtml

 

ITALY : NEW LEGISLATION ON PEER-TO-PEER FILE SHARING

On May 18, 2004, the Italian Parliament passed a new law (128/2004) introducing, among other things, criminal sanctions for certain acts of illegal downloading of copyrighted material through file-sharing or peer-to-peer systems, and making available of copyright protected material to the public through a communications network without the consent of the right holder.

The official text of the new law (in Italian language only) is available at

http://www.parlamento.it/parlam/leggi/04128l.htm

 

UNITED STATES OF AMERICA : SENATE PASSES TWO ANTIPIRACY BILLS

The US Senate, on June 25, 2004, passed the Protecting Intellectual Property Rights Against Theft and Expropriation (PIRATE) Act, which would, inter alia, authorize the Attorney General to commence a civil action against alleged copyright infringers. The Senate also passed the Artists' Rights and Theft Prevention (ART) Act, which is intended to tackle the problem of pirates recording movies using video cameras in cinemas. This act would also provide civil and criminal penalties for distributing certain copyright works before they are released to the public. In order for these Acts to pass into law, they must be passed by the House of Representatives and signed by the US President.

The text of these Acts can be found at

http://thomas.loc.gov/cgi-bin/query/D?c108:3:./temp/~c108IrhdUa::

http://thomas.loc.gov/cgi-bin/query/D?c108:3:./temp/~c108d7dpws::

 

MOTION PICTURES ASSOCIATION (MPA) : STUDY ON THE UNAUTHORIZED USE/DISTRIBUTION OF COPYRIGHTED MOTION PICTURES OVER THE INTERNET

On July 8, 2004, MPA presented a study which examines the scope of illegal downloading activities, the economic impact and possible deterrents for limiting future downloading, see press release http://www.mpaa.org/MPAAPress/

 

BUSINESS SOFTWARE ALLIANCE (BSA) : 2004 SOFTWARE PIRACY STUDY

BSA has published, in July 2004, its most recent study of global trends in software piracy. The tenth annual study of this kind, the 2004 edition takes a somewhat new approach as concerns study methodology and coverage. According to the study, therefore, the actual results can not be accurately compared with the figures of the past years.

The 2004 study is available at http://www.bsa.org/globalstudy/loader.cfm?url=/commonspot/security/getfile.cfm&pageid=16947&hitboxdone=yes

 

OVERVIEW : SPECIALIZATION AND CONCENTRATION IN PATENT LITIGATION IN EUROPE

Concentration and specialization of the judiciary in IP matters continues to be an issue of interest and development in many countries. For instance, the Japanese Government has recently enacted legislation creating Japan's first intellectual property high court; the court is expected to start hearing cases in April 2005. In Europe, a number of countries have established either specialized courts or a concentration of IP related litigation in certain defined courts. A brief overview of the current situation in 13 European countries can be found at http://www.sic-online.ch/2004/documents/161.pdf

 

IMPACT OF COUTERFEITING IN AUSTRALIA - STUDY BY THE ALLEN CONSULTING GROUP

The Australian Toy Association, the Interactive Entertainment Association of Australia, and the Business Software Association of Australia commissioned a study which intends to identify the industry-specific costs of counterfeiting, as well as the costs to the Australian economy as a whole.

The study, first published in November 2003, is available online at

http://www.allenconsult.com.au/resources/MCS2_Counterfeit_finalFinal.pdf

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