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Consultation on the Commission Report on the enforcement of intellectual

property rights

Internal Market and Services DG,

Unit D.3 - Enforcement of Intellectual Property Rights

Response of the Intellectual Property Unit, Department of Enterprise, Trade and

Innovation, Ireland

Background note:

Our response to the consultation on the Commission Report on the enforcement of intellectual

property rights is set out below in the format of replies to the questions related to the Commission’s

Report on the application of Directive 2004/48/EC on the enforcement of intellectual property

rights (5140/11 PI 2 DROIPEN 4 JUSTCIV 1) circulated by the Presidency of the Working Party

on IPR (Enforcement) (6141/11 PI 8 DROIPEN 10 JUSTCIV 17).

In the process of preparing our response to this consultation, we consulted widely with interested

parties in Ireland. In order to give a balanced representation of the issues involved, we have

incorporated the views of all respondents to our consultation process in our response. Where we

refer to ‘respondents’ in this paper, we are referring to interested parties from across all sectors and

industries in Ireland who responded to our own consultation process on the Commission Report.

Ireland’s position will be developed further in light of any reform proposals that may be brought

forward by the Commission in due course.

Contents:

Section Page

1. Digital Environment 2

2. Scope 6

3. Evidence 8

4. Intermediaries 10

5. Right of Information 13

6. Commercial Scale 17

7. Damages 20

8. Corrective Measures 22

9. Other Issues 24

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1. Digital environment

1.1. Do you consider that IPR infringements over the Internet pose a problem that the current

toolbox of Directive 2004/48/EC (Enforcement Directive) is not entirely suitable to handle?

Given the rapid pace of change of technology, which is evolving constantly, it has to be noted that

the boundary between popularly held ideas of acceptable use and misuse, which may or not

transgress individual and collective rights, can change over time. For example, infringements

carried over the Internet are of a transient nature and may be carried out by multiple participants,

and may be carried out or facilitated by persons or bodies who seek to conceal their identity.

ccording to a recent study by the Irish Business and Employers Confederation (IBEC), online

infringing downloads (films only) reached 5 million in Ireland in 2010. Clearly this is hugely

damaging to the legitimate industry in this country and is an unsustainable economic landscape both

for the industry and the economy. The internet is not only used as a means of making infringing

material available to consumers online, but could be used as a distribution network by organised

criminals to make illegal copies of films available to be sold on in various formats, such as media

players carrying large quantities of titles, often before the rights owners have had an opportunity to

enjoy any financial return on the work.

Some respondents felt that due to late transposition of the Directive in Member States, a critical

economic analysis of the impact of the Directive has not been possible, and without sufficient

evidence of the necessity of this revision there is currently no need to revise the Directive.

Furthermore, from a Customs perspective, it is worth noting that dealing with each small scale

importation utilises the same resources with the same procedures involved as is the case in dealing

with larger scale consignments. This is not cost effective or efficient.

1.2. What kind of specific measures are in your view suitable to combat such infringements?

Which measures should be taken at EU level?

From a broad EU perspective, in the interest of reducing or limiting disparities between member

states, work should continue in relation to the evolution of definitions of identity and of trust and

progress in this area should be monitored. Issues involved include electronic identity management,

eID, and infrastructure as set out in A Strategy for ICT R&D and Innovation in Europe: Raising the

Game, SEC(2009) 289, 13 March 2009.

A number of issues which might be considered were identified in the course of our consultative

process. Obviously the issues raised are complex and will need to be carefully examined. New

measures that were identified on behalf of rights holders and which they consider would assist in

combating internet infringements are as follows:

� Provisions to enable Courts to order that infringing or infringement-facilitating websites either

stop their infringing activities or be blocked by Irish access providers (for example where they

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are located outside the jurisdiction).

� Jurisdiction for courts to authorise seizure of equipment/ servers or other items, including

domain names, used by infringers in the course of their activity.

� A specific liability should be identified for a party inducing others to infringe and/or facilitating

them in the infringement.

� Specific provisions establishing effective and rapid notice and take down procedures.

� Any other effective measures to reduce the level of online infringement.

In addition, respondents highlighted a number of issues regarding online enforcement that they felt

could be improved by means of modifications or clarifications to existing provisions in the

Enforcement Directive as follows:-

� Improvements to the right of rights holders to information under Article 8 of the Directive and

elsewhere.

� Clarifying that rights to injunctions, including interim and interlocutory injunctions, particularly

against online service providers, are available regardless of the intermediary’s liability for the

underlying infringements (cf Article 8.3 of the Copyright Directive).

� Clarification that it is possible to get an injunction in respect of the complete catalogue or

repertoire of a rights holder rather than against specific titles only.

� Clarifying that it is possible to have liberty to apply to change the terms of an order or

injunction where circumstances change.

Finally, from a procedural perspective, it would be desirable to simplify procedures insofar as this is

possible.

1.3. Is there a need to lay down rules regarding the liability of online service providers (and

limitations thereto) in the Enforcement Directive beyond those already existing in Directive

2000/31/EC (Directive on electronic commerce)? If yes, is there a need to define the term

“online service provider” in the legal framework of intellectual property?

In the event that the Directive is re-opened, some respondents consider that a new provision should

be enacted that would require Member States to introduce legislation to reduce all forms of online

infringement. Measures that might be considered include:-

• Provisions to enable Courts to order that infringing or infringement-facilitating websites

either stop their infringing activities or be blocked by Irish access providers (for example

where they are located outside the jurisdiction). This should also apply to hosting providers.

• Jurisdiction for courts to authorise seizure of equipment/ servers or other items, including

domain names, used by infringers in the course of their activity.

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• A specific liability should be identified for a party inducing others to infringe and/or

facilitating them in the infringement.

• Specific provisions establishing effective and rapid notice and take down procedures.

• Any other effective measures to reduce the level of online infringement.

However, other respondents consider that any action that would jeopardise the limited liability of

ISPs as provided for in Directive 2000/31/EC on electronic commerce should be avoided.

1.4. Taking into account the types of data mentioned in Article 8(1) and 8(2) of the

Enforcement Directive, is there a need to introduce explicit rules that enable authorities to

order online service providers, regardless of their liability, to disclose information relating to

individual subscribers who have allegedly committed IP infringement? If yes, what should be

the preconditions and limits for such orders (e.g. infringement has to be on a commercial scale,

only judicial authorities may order such measures, infringement proceedings have to be in

progress, only certain types of data may be provided, limitations for safeguarding rights to

privacy and protection of confidential data)? What should be the sanction for non-compliance

with such orders? Should these measures be limited to IP infringements? (See also question

5.3.)

A number of respondents consider that there is a need for such rules. In their view the anonymity

offered by the Internet enables infringement on a vast scale to take place. Some respondents

consider it is essential to identify those taking part. The information to which the copyright owner

should be entitled under an order of court or other impartial authority should be limited to that

required to identify the subscriber and should be subject to restrictions on publication of details

pending a finding of liability or penalty by a court. The infringement concerned should not need to

be on a commercial scale – rather the test should be that the infringement takes place to such an

extent as to prejudice the interests of the copyright owner. Many individuals involved in peer-to-

peer file sharing are knowingly involved in a larger network engaged in theft of copyright material

on a large scale but are not themselves taking part on a commercial scale. Orders should be

available in the lowest possible court or from an independent body, so that the expense of obtaining

orders does not make it impractical for copyright owners. Sanctions for non-compliance with

orders should reflect existing penalties for contempt of court in member states, and in certain

circumstances subject to criminal prosecution.

Other respondents consider that the interpretation provided in the report in relation to the

injunctions regime, to implement mass-filtering obligations on ISPs, is flawed, and such an

interpretation would inevitably involve monitoring of all of the data hosted on or passing through

the network of an ISP. The adoption of such measures would bring with it serious threats to privacy,

innovation and creativity and there is no effective and proportionate way to apply ubiquitous

content filtering or monitoring measures to prevent online IPR infringements.

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1.5. Taking into account the jurisprudence of the European Court of Justice, is there a need to

amend the existing legal framework relating to the liability or legal obligations of online service

providers (including search engines and online market places) whose services are directly used

in infringing activities (not necessarily on a commercial scale)? If yes, which legal instrument

should be amended (the Directive on electronic commerce, the Enforcement Directive or the

Trade Mark Directive)?

Given that there are a number of cases pending at the European Court of Justice, the decisions in

respect of which would add considerably to the jurisprudence in this area, respondents felt that it

may be prudent to await the decisions of the European Court of Justice before assessing such need.

Customs authorities report that difficulty is often encountered in obtaining the necessary

information from the Service Providers. They do not normally volunteer the information. The legal

process can be quite cumbersome.

Some respondents consider that there is a need to ensure that online intermediaries take steps to

prevent and/or bring infringing activities to an end. This should include the measures set out above.

It should be possible to impute liability where online intermediaries are structurally facilitating,

inducing or condoning infringing activity. Furthermore, it should be clarified that specific orders to

prevent or stop infringements are not inconsistent with Article 15 of the Directive.

On the other hand, some respondents feel that any sustainable solution to IPR infringement lies in

the development of new business models that meet the consumers’ expectations and needs.

Furthermore, they consider that IPRED already creates a balanced and functioning framework for

the enforcement of those IPRs and believe there is no need to revise the Directive.

1.6. In the case of online copyright infringements, does your law provide for the possibility of

taking measures against websites facilitating such infringements or against advertisers

financing such websites? Does your law provide for specific legal measures against P2P file

sharing? Do you see a need for such measures to be included in the Enforcement Directive?

Irish law provides for orders against websites facilitating online infringements and remedies are

available in relation to secondary infringement and for joint tortfeasors. There is no specific

provision against P2P file sharing based infringements although, following identification through a

court process, infringers can be pursued in the ordinary way.

Given the nature of these activities and the extent of P2P file sharing, rights holders consider that

there is a pressing need for the introduction of specific provisions on all of these matters in the

Enforcement Directive and national law.

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2. Scope of the Directive

2.1. Is there a need to apply some (or all) of the measures provided for in the Enforcement

Directive also with a view to rights that currently are not covered by the Directive1?

Our Customs authorities have indicated that they are not aware of any situation where rights are not

adequately covered by the Directive.

Some respondents have expressed their view that the application of the measures in the Directive to

the areas outlined in 2.2 below would be desirable.

2.2. How do you think issues like the protection of trade secrets and domain names and

protection against parasitic copies (look-alike marketing) should be dealt with? Do you see

them as being linked to IPR or do you consider them more an issue of unfair competition law?

Would you see an added value of EU action in that area?

In Ireland the Competition Act 2002 prohibits anti-competitive agreements, decision and concerted

practices, in order for section 4 of the Act (or Article 101 of the Treaty on the Functioning of the

European Union (TFEU)) to apply, there must be an agreement. For example, provisions of the Act

could be relevant if trade secrets were shared between competitors by agreement and the

consequence was the preventing, restricting or distorting of competition.

Likewise, in order for section 5 of the Act (or Article 102 of the TFEU) to apply, unilateral conduct

would need to have taken place. The list of potential abuses contained in these particular provisions

is not exhaustive so, in principle, issues relating to domain names and parasitic copies could breach

these provisions if, for example, a competitor was excluded from the market. However, for an

undertaking to be found to have breached these provisions, it would first need to be found to be

dominant.

In these circumstances, some respondents considered that issues relating to the protection of trade

secrets and domain names and protection against parasitic copies should be dealt with within the

intellectual property rights area as such issues do not obviously fit into a competition framework.

A number of respondents consider that these matters are linked to intellectual property rights.

Insofar as they are not already protected by way of the intellectual property in them, extension of

application under IPR provisions should be undertaken.

The area of trade secrets, unfair competition law, passing-off etc is very specific to different

1 See Statement by the Commission concerning Article 2 of Directive 2004/48/EC of the

European Parliament and of the Council on the enforcement of intellectual property rights

(2005/295/EC)

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jurisdictions and it would be difficult to try and harmonise the law in this area. It would also be

unappealing as this might lead to an overly protectionist market which stymies competition with too

many layers of protection for large industry players. Accordingly, it might not be appropriate to

attempt to harmonise this area of law at a Community level.

The view of the Irish Customs authorities is that the scope is currently wide enough and they do not

see a role for customs enforcement to play in the policing of unfair competition law.

2.3. Is there a need to provide a list of intellectual property rights in the Enforcement

Directive? If yes, what should be the relation of this list to the scope of the Directive

(exhaustive list, indicative list, minimum list)? Should such a list be included in the Articles or

in the recitals? How should rights protected only by certain national laws be treated in such a

list?

A minimum or indicative list of intellectual property rights might be helpful, but an exhaustive list

would run the risk of omitting, and thereby excluding, some rights, and should not be adopted. This

would also avoid the risk of limiting or excluding rights currently protected only by certain national

laws. The Irish Copyright and Related Rights Act, 2000 contains certain presumptions regarding

proof of ownership of copyright, which could also usefully be adopted.

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3. Evidence

3.1. What are the limits of the provisional measures (e.g. search or seizure orders) in respect

of confidential (private) information under your law? Have you encountered any difficulties

in this respect?

A form of statutory Anton Piller order is available on application by the owner of copyright to the

Irish District Court which can authorise a Garda to seize without warrant infringing copies of the

work under the Copyright (Amendment) Act 1987, (section 2) and the Copyright and Related

Rights Act 2000, (section 132). The courts jurisdiction to grant an Anton Piller order comes from

the common law. An Anton Piller Order is a form of mandatory injunction, normally granted ex

parte without notice to the defendant. Before such an order is granted the Court must be satisfied

that:

1. the Plaintiff has an extremely strong prima facie case;

2. the potential or actual damage must be very serious for the Plaintiff, and

3. there must be clear evidence that the defendant has incriminating documents or articles in its

possession and that there must be a real possibility that these will be destroyed before an

application inter partes can be made.

It is a pre-condition for the grant of an Anton Piller Order that the Plaintiff must not merely give the

normal undertaking as to damages which might arise if it ultimately transpires that the defendant

should not have been injuncted but the court must also be satisfied that the applicant must be able to

pay for the damages in the event of the claim being unfounded and he must in addition undertake to

preserve the property pending the trial.

Proceedings are normally issued but not served on the Defendant when an application for an Anton

Piller Order is made. If the Plaintiff fails to proceed with the action after the time set for delivering

proceedings under the Rules of Court have expired, and after execution of the Anton Piller Order,

then the Defendant can apply to the Court for dismissal of the Plaintiffs action.

Some respondents consider that the cost and time factors in seeking orders for disclosure of

information in the High Court have caused a difficulty in rendering this course of action too slow

and expensive.

3.2. What are the conditions, under your law, to obtain banking, financial or commercial

documents?

This can be achieved in Irish courts by discovery of documents - the process whereby the parties to

an action disclose to each other on affidavit all documents in their possession, custody or power

relating to matters in issue in the action. Discovery is obtained by application by one party to the

other in writing requesting that discovery be made voluntarily; the court will order discovery where

the other party has failed, refused or neglected to make such discovery or is ignored or has ignored

such a request: [Rules of the Superior Courts-Order 31 and Statutory Instrument Number 233/99].

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A discovery order can also be made against a person who is not a party to the proceedings.

The disclosure of confidential information obtained by way of discovery can amount to contempt of

court. This has been established in Irish law by the case of Ambiorix Ltd. V. Minister for the

Environment [1992] Irish Law Reports Monthly 209, Supreme Court. A recent High Court

decision in Koger Inc & Anor V O’Donnell & Ors examined the delicate balance between the

protection of confidential information and obligations on disputing parties in the discovery process.

The Court held that a limited discovery of the defendant’s confidential information to an expert

witness was not sufficient given that the information was crucial to the plaintiff’s case.

3.3. Is there a need to ensure that

(a) personal computers can be searched/seized in order to establish evidence for an

IPR infringement committed via the Internet?

(b) screenshots are accepted by courts as evidence for infringements committed via

the Internet?

It is probably not necessary, in the case of trade marks, to extend the provisions of Articles 6, 8 and

9 of the Enforcement Directive to “non-commercial” infringements. However, in the case of

copyright infringement there is certainly an argument to be made that this limitation might be

prohibitive for rightsholders. The issue is that individuals will often download e.g. music or film for

non-commercial use on a large scale and pursuant to e.g. Article 9 of the Enforcement Directive,

there is no obligation on Member States to order deliver up movable property under Article 9(2)

unless the situation involved infringement on a commercial scale. On that basis a personal computer

might not be ordered to be seized where same is the storage device for unlawful downloads. Under

Irish law the courts can order this subject to limitations.

A number of respondents have argued that the transient nature of much infringing material on the

internet is such that proper evidence of infringement may only be available on personal computers

used by infringers, or through the taking of screenshots at the time of infringement. They consider

that this is a critical requirement in the case of criminal investigation, as is the need to forensically

match such data to ISP logs (timestamping) of subscriber activity. These forensic issues in addition

to the status of computer evidence and screenshots should, in their view, be dealt with to remove

uncertainty.

3.4. Is there a need to clarify the term “under the control” relating to evidence in Article 6 of

the Enforcement Directive?

A number of respondents consider that the term should be clarified to encompass evidence in the

control, possession or procurement of the opposing party/suspect. It should also be extended to

provide for an order for production of evidence in the control of third parties, as this may be

material and indeed critical forensic evidence in proving a case.

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4. Intermediaries

4.1. Is there a need to introduce a common definition of intermediaries in the Enforcement

Directive?

Three Articles in the eCommerce Directive (2001/31/EC) provide defences to Internet providers

who transmit copyright material. These defences arise where an Internet Service Provider

establishes that they are a mere conduit (carrier) (Article 12); caching (temporarily storing)(Article

12); and hosting (storing) (Article 14).

Under the eCommerce Directive (transposed in Ireland by Regulations SI 68 of 2003), Intermediary

Service Providers (ISP) are not liable for information transmitted by them in a communication

network, where the ISP is a 'mere conduit', or is 'caching' or 'hosting' the information concerned.

An ISP is a person whose business consists of connecting persons to the Internet. ISPs are not

liable for any illegal downloads of digital content. However, where they are notified of unlawful

activity they must expeditiously remove the material or block access to it.

However, the limitations of the liability of Intermediary Service providers established in this

Directive do not affect the possibility of injunctions of different kinds; such injunctions can in

particular consist of orders by courts or administrative authorities requiring the termination or

prevention of any infringement, including the removal of illegal information or the disabling of

access to it.

Given that the enforcement is for all types of intellectual property, there could be any number of

different type of intermediaries not just in the online context, the view has been expressed that it

would be valuable to have a common definition of intermediaries. One way this might be done

might be by way of using broad headings of intermediaries. .

A number of respondents have expressed their view that any common definition should not be

restrictive. Intermediaries can be defined by reference to the function which they serve as

intermediary.

Respondents have pointed out that some member states have taken the view that injunctions against

intermediaries, permitted under section 8(3) of the Copyright Directive in order to stop

infringements at their ‘choke point’, are only allowed if the intermediary itself is also liable for the

infringement. It has been argued in some quarters that this has the unfortunate unintended

consequence of encouraging rights owners to try to hold the intermediaries liable, even where

legislation like the E-Commerce Directive says they should not be. Making clear that third-party

injunctions against intermediaries do not depend on the liability of the intermediary would be

helpful. (Article 3.3) They also note that that injunctions should not be allowed to require content-

level filtering against innocent service providers or against infringing and non-infringing users

indiscriminately.

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4.2. Does your law contain specific provisions on injunctions against intermediaries, or do such

injunctions have to be requested under the general rules? If there are specific provisions,

what are these and are they used often?

The transposing legislation does not contain specific provisions on injunctions against

intermediaries and such injunctions would be available as a remedy under Irish Common Law.

However, the situation is currently being examined in Ireland.

4.3. Is there a need to clarify in the Enforcement Directive that not only permanent

injunctions are available against intermediaries but also interlocutory injunctions? Should

other provisional or precautionary measures be available against intermediaries (see also

question 5.1.)?

Irish Customs authorities have indicated that they have not encountered these difficulties to date.

Some respondents consider that there is a need to clarify that the Directive provides a right on the

part of a copyright owners, against intermediaries, to permanent injunctions, interlocutory

injunctions and also to interim or “quia timet” injunctions granted on an ex parte basis, subject to

safeguards. This is to take account of the transient nature of internet infringement and the need for

immediate action where it occurs or may occur.

4.4. Taking into account that certain measures are available against intermediaries even when

they cannot be held liable for the infringing acts, is there a need to clarify the standing of an

intermediary in IP infringement proceedings? Can an intermediary be deemed an

“unsuccessful party” when an injunction is issued against it without establishing its liability

for the infringement (e.g. relating to cost issues)?

Some respondents consider that there is a need to clarify the standing of intermediaries to confirm

their duty to act to terminate and prevent infringing activity. As intermediaries may gain financially

by not acting against infringing activity, there should be provision for liability for matters such as

costs in such circumstances.

4.5. Should intermediaries (transport service providers, Internet platforms, ISPs) be involved

to a greater extent in the prevention or termination of IP infringements? If yes, what ways

would you deem appropriate?

Respondents felt that co-operative efforts among governments, rights owners, service providers and

other intermediaries are an important way to help deter counterfeiting and piracy with respect to

complex on-line uses of copyright material. The EU’s stakeholder dialogues under the aegis of the

EU Observatory, are making good progress in this area – a Memorandum of Understanding relating

to on-line commerce in physical counterfeits is about to be signed. The underlying liability rules, as

set forth in the 2000 E-Commerce Directive with respect to such activities, provide market certainty

and a helpful basis for driving these cross-industry dialogues. These respondents consider that the

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underlying liability rules do not need to be changed.

An alternative view, expressed by some respondents, is that the obligation of intermediaries to take

measures to prevent or terminate infringement should require them to take positive measures, such

as blocking or filtering, without general monitoring. This reflects the fact that they are the party

who exercise control over their network. In their view there should be an obligation to enter into

positive protocols regarding identification of infringements and termination procedures.

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5. Right of information

5.1. Is there a difficulty in applying IP enforcement measures (especially rules on right of

information) together with rules on data protection or right to privacy in your country?

In Ireland, recent judicial decisions would suggest not. The key issue from a data protection

perspective is to ensure that there is a correct balance between the enforcement of intellectual

property rights and the right to privacy. In this respect any system providing for the disclosure of

subscriber details to private sector entities must have some form of judicial oversight. It would be

too much for such details to be provided directly between private parties without some form of

oversight and official involvement.

It is recognised that having to apply to the High Court each time subscriber details are needed is

potentially prohibitive but it does mean at present that there is no question of excessive and

frivolous requests for personal data of subscribers by rights holders. It would appear to be the case

at present that personal data in relation to subscribers can only be provided to rights holders by ISPs

on foot of a Court Order to do so. It is somewhat difficult to conceive of a situation where rights

holders by simply attesting harm would be able to require an ISP to provide subscriber details.

It should also be noted that Article 1.3a of the Framework Directive (Directive 2002/21/EC as

amended by Directive 2009/140/EC) concerns the rights of end-users’ access to the Internet. Any

measures taken by Member States affecting an end-user’s rights of access must include effective

judicial protection and due process.

Furthermore, as noted in paragraph (1) of the Directive, new and hybrid intellectual property and

associated value chain models are a major enabler of business and innovation. Greater support for

open linked data initiatives, at national and at European levels, would allow aspects of many one-

off responses to Freedom of Information requests to be pre-empted and largely bypassed, and

business and other data to be collected for general use. This is just one example of where an open

linked data initiative can become an enabler of business and innovation.

Some respondents in Ireland pointed out that it would be helpful to have provisions setting out the

extent of entitlement to information. Moreover, where it is determined that the information is false

or inaccurate, the Courts should be able to order disconnection of the site (for example where the

operators of website have provided the hosting provider with false names and addresses, the right

holder will have no recourse and therefore disconnection of the site is the only remedy).

Some respondents also felt that whilst both personal privacy and intellectual property are

fundamental rights, and both need to be respected, these need to be reconciled so that civil

investigation actions in particular are possible against infringers in all Member States. Some take

the view that rights owners cannot investigate Internet infringements (or do so automatically)

because it involves the collection of Internet Protocol addresses, which they consider in all cases

personal data even though the rights owner cannot tell who the person is without disclosure by the

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ISP (which can only be achieved in court). This has the unacceptable consequence of

circumscribing civil enforcement in violation of the TRIPs agreement’s guarantee of effective civil

remedies. Data protection rules need to be clarified to allow investigation and civil litigation

against Internet infringers, subject to confidentiality requirements as well as ISP disclosure of user

data to rights owners only by court or other government-sanctioned order.

5.2. What are the limits of the right of information in your country, in view of privacy issues?

Is there a need to amend the Enforcement Directive (or other EU legal instruments) in order

to accommodate such conflicts?

It is our understanding that personal data in relation to subscribers can only be provided to rights

holders by ISPs on foot of a Court Order to do so. It is somewhat difficult to conceive of a situation

where rights holders, by simply attesting harm, would be able to require an ISP to provide

subscriber details.

Some respondents have expressed the view that it would be helpful, for the sake of clarity and

uniformity, to further define the right to information to ensure that infringers cannot hide behind

privacy issues.

5.3. Is there a need to clarify that the right of information pursuant to Article 8 of the

Enforcement Directive may also be invoked before the infringement (and, where appropriate,

the acts having been carried out on a commercial scale) was established by the judicial

authorities, i.e. that providing information may also be ordered as a provisional measure? Is

the usefulness of this interpretation in strengthening the IP enforcement framework enough

to outweigh that providing information is by definition “irreversible” and that in certain cases

the addressees of such orders are third parties (intermediaries) not being party to the

litigation?

Regulation 3 of S.I. 360 of 2006 deals with orders for disclosure of information. A claimant may

apply to the court for an order that information regarding the origin and distribution networks of

goods or services which infringe an intellectual property right shall be disclosed to the claimant by

one or more of the relevant persons specified in the Regulations.

As indicated above, data is not available – either in absolute terms or as a percentage of the total –

on the number of cases where courts ordered access to information on names, addresses, quantities

and prices.

Information from stakeholders has referred, however, to a decision which mentioned a provision of

the Directive. As outlined above, in the case of ‘Irish Distillers Ltd V. Cooley Distillery PLC (2008)

IEHC 236’, the plaintiff sought an order directing the defendant to disclose the whereabouts of all

labelling and packaging of the product and all information in documentary form in its possession or

procurement which identifies or assists in identifying those who are involved an any activities

which might infringe or might have infringed the plaintiff’s rights in relation to the product. This

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order was sought under S.I. 360 of 2006, implementing this aspect of the Directive. The reported

decision of this case does not mention whether the order was granted but it points to the type of

information which can be sought under this S.I., which might not have been available previously

until a decision issued.

A number of respondents have expressed the view that the nature of internet infringement, among

other areas, requires a clarification. However, the provisions should not permit the use of the

process by one party to unfairly obtain sensitive commercial or sensitive personal information from

another party.

5.4. Due to data retention laws, online service providers sometimes do not possess the

requested information about the infringements (e.g. it was subject to deletion). At the same

time this information might need to be provided when requested by the public authorities.

How do online service providers in your country respond to such requests from the public

authorities when they are no longer in the possession of the information needed?

The Communications (Retention of Data) Act 2011 requires that traffic or location data and the

necessary data necessary to identify a subscriber or user must be retained for a specified period of

time. Telephone service providers must retain data for 2 years whereas Internet service providers

must retain data for one year. Data must be retained in a way that it can be disclosed without undue

delay pursuant to a disclosure request. Service Providers who retain data are required to take

certain security measures in relation to that data, such as protecting it against accidental or unlawful

destruction, accidental loss, alteration or unauthorised or unlawful storage, processing, access or

disclosure. Furthermore, data (with the exception of data accessed and preserved as a result of a

disclosure request) must be destroyed at the end of the specified data retention period. However, a

grace period of one month after the retention period has expired is provided in order to facilitate last

minute requests.

A Service Provider cannot access retained data except (i) at the request and consent of a person to

whom the data relates; (ii) to comply with a disclosure request or a court order; or (iii) if authorised

by the Data Protection Commissioner. A Disclosure Request can be made by a number of parties.

For example, the Garda Siochana (police) may request a Service Provider to disclose data where it

is required for the prevention, detection, investigation or prosecution of a serious offence; the

safeguarding of the security of the State; or the saving of human life. Other parties that may make a

disclosure request are the Permanent Defence Force and the Revenue Commissioners for the

purposes of safeguarding the security of the State and the prevention, detection and investigation of

revenue offences. A disclosure request must be made in writing but in cases of exceptional

urgency, the request may be made orally but it must be confirmed in writing within two days of the

request being made. A Service Provider must comply with a disclosure request.

Given that this legislation is so recent, no data is available in relation to how service providers

respond to such requests.

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5.5. Can information that in your country would normally be subject to the banking secrecy,

be requested by using the right of information?

Information subject to banking secrecy may be requested through an application to the High Court

and may be obtained if a court grants an order against the opposing party or against a financial

institution directing this. A recent High Court decision in Ireland in the case of Koger Inc & Anor V

O’Donnell & Ors examined the balance between the protection of confidential information and the

obligations on disputing parties in the discovery process; however, no jurisprudence specific to

banking secrecy is available.

It has been suggested by some respondents that a provision enabling orders to be sought and

granted in the District (lowest) court would minimize expense and delay.

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6. Commercial scale

6.1. Have you defined "commercial scale" in your country – either in law or by

jurisprudence? If so, which is the definition that you have chosen?

In Ireland the transposing legislation does not contain a definition of ‘commercial scale’ but states

that an expression used in the transposing legislation and the Enforcement Directive shall have,

unless the contrary intention appears, the meaning it has in the Enforcement Directive. Therefore,

the definition of ‘commercial scale’ as contained in the Enforcement Directive is the relevant

definition in Ireland. There is no evidence of any jurisprudence in Ireland in respect of this

definition.

It might be noted that some respondents consider that the definition of “commercial scale” should

be extended to encompass acts not carried out for economic or commercial advantage, but done to

such an extent as to prejudice the rights of the rights owner (for example where an film is uploaded

to the Internet before theatrical release but the offending party receives no commercial advantage

beyond enhancing his internet rep). Given the nature of infringing networks on the Internet, the

measures provided for in Articles 6(2), 8(1) and 9(2) of the Directive should be extended to

infringement other than on a commercial scale.

An alternative view is that commercial scale is an appropriate concept only for criminal cases, and

is of relevance not only where there is commercial motive or indirect economic gain, but also where

there is infringement on a large enough scale to cause significant economic damage to the rights

owner. Commercial scale is not an appropriate limitation on any civil remedies or sanctions—

which some Member States have tried to say. Rights owners should be able to take action against

any acts of infringement regardless of whether they can be prosecuted by the State.

6.2. Is the definition of “commercial scale” still appropriate in Recital 14 of the Enforcement

Directive? Is there a need to have a definition at all, and if yes, should it be moved to the

Articles of the Directive? Should the link between the commercial scale requirement and the

right of information remain intact?

The transposing legislation in Ireland states that a court shall construe the Regulations in a manner

that gives effect to the Enforcement Directive, and for this purpose the court shall have regard to the

provisions of that directive, including the preambles. This ensures that the definition of commercial

scale in Recital 14 does apply in our transposing legislation. However, if it would improve

consistency and harmonisation across the Member States then the definition should be moved to the

Articles of the Directive.

Ireland’s Customs service has expressed the view that consideration should be afforded to the

possibility of moving it to the Articles of the Directive and that the limit between commercial scale

right of information should remain intact because of the apparent inconsistent enforcement by other

member states.

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Some respondents consider that the definition of “commercial scale” should be extended to

encompass acts not carried out for economic or commercial advantage, but done to such an extent

as to prejudice the rights of the rights owner (for example where an film is uploaded to the Internet

before theatrical release but the offending party receives no commercial advantage beyond

enhancing his internet reputation). Given the nature of infringing networks on the Internet,

consideration might be given to extending the measures provided for in Articles 6(2), 8(1) and 9(2)

of the Directive to infringement other than on a commercial scale.

6.3. The criterion of “commercial scale” (as for its definition, see Recital 14 of the

Enforcement Directive) applies to a limited number of specific cases: communication of

banking or commercial documents [Article 6(2)], right of information towards intermediaries

[Article 8(1)], and seizure of movable and immovable property and blocking of bank accounts

as a precautionary measure [Article 9(2)]. For which of the above mentioned three situations

do you consider the commercial scale criterion as necessary or useful? What risks do you see if

this criterion were to be abolished?

Some respondents consider that the criterion of “commercial scale” should not apply to any of the

above with the exception of the blocking of bank accounts. Rather the test should be whether there

is infringement to such an extent as to prejudice the rights of the copyright owner. This is to take

account of the fact that much online activity, for example, by peer-to-peer network participants,

may cause great injury to copyright owners but may be held not to be on a commercial scale.

6.4. If you have made the right of information subject to the commercial scale requirement,

how do you deal with the problem that sometimes the rightholder needs additional information

from an intermediary in order to be able to determine whether the infringement has been

committed at a commercial scale?

The transposing legislation in Ireland provides for the court to order the disclosure of information

by one or more of the relevant persons specified in the legislation. The relevant person can be the

alleged infringer. There is no requirement in that respect for the infringement to be on a

commercial scale and therefore there has been no need to deal with the problem set out in the

question.

It is probably not necessary, in the case of trade marks, to extend the provisions of Article 6, 8 and

9 of the Enforcement Directive to “non-commercial” infringements. However, in the case of

copyright infringement there is certainly an argument to be made that this limitation might be

prohibitive for rights holders. The issue is that individuals will often download e.g. music or film

for non-commercial use on a large scale and pursuant to e.g. Article 9 of the Enforcement Directive,

there is no obligation on Member States to order deliver up movable property under Article 9(2)

unless the situation involved infringement on a commercial scale. On that basis a personal computer

might not be ordered to be seized where same is the storage device for unlawful downloads. Under

Irish law the courts can order this subject to limitations.

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6.5. If under your law commercial scale is not a precondition for ordering the measures

concerned, has its absence lead to abuses, in certain areas, by right holders? If yes, which

areas are affected?

There has not been any abuse of which we are aware.

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7. Damages

7.1. Do you see a deficiency in the practice of awarding damages, i.e. in compensating the

rightholder for damages suffered (including moral prejudice and lost profits)? If yes, is this

deficiency due to the current wording of the Enforcement Directive? Would it help this

deficiency if recovery of unjust enrichment was to be ordered as an objective sanction (i.e. not

depending on the culpability of the infringer), or should unjust enrichment of the infringer

and other economical consequences play a greater role in calculating damages

The Irish courts have a wide discretion regarding the award of damages. The general principle is

that an aggrieved person should be put as nearly as possible in the same position as far as money

can do it, as if he had not suffered injury or loss. Statistics are not collected in a manner which can

reveal how national courts quantified damages, awarded moral damages, allowed for lost profits,

made an award based on profits made by an infringer, awarded costs, or how the "equity principle"

in the meaning of Article 14 has been applied by the courts.

Some respondents consider that there is a massive loss being suffered by the entertainment industry

and others by virtue of the wholesale infringement of their intellectual property rights and unlawful

use of material. Rights holders are obliged to spend vast sums attempting to protect their material.

In contrast, many infringers have either no regard for the economic consequences of their activity,

or in some cases clearly voice a perverse pleasure in it. The measure of damages needs to provide

for the following:-

� Member States should ensure that all elements of direct, indirect and consequential economic

consequences to the rights holder that result from an infringement are compensated, regardless

of whether the infringement has taken place on a commercial scale.

� Legislation should provide that all costs reasonably incurred by the rights holder in investigating

an infringement, taking civil proceedings against the infringer and any other appropriate parties

and rectifying the infringement should be borne by the infringer.

� Member States should implement rules for awarding damages and costs in IPR cases that ensure

that no profit or economic benefit of an infringement is derived by the infringer

Other respondents consider that damages, as other remedies under TRIPs, need to be adequate not

only to compensate the rights owner for infringements but also to deter piracy. To that end, the

infringer should not be able to retain any of the economic benefit of his infringement, and the rights

owner should recover his full costs of enforcement. Particularly in software piracy, (corporate) end

users may have an economic benefit to copy rather than buy legitimate product if they only have to

pay damages equal to the software publisher’s lost distributor profit (and only a portion of the

publisher’s legal fees) if they get caught. Damages should include (a) rights owner’s lost profits

and full costs of enforcement (including court and attorney fees, expert fees and costs of corrective

measures), (b) unjust enrichment / ‘additional’ damages in the amount of any additional economic

benefit of the infringer, and ideally (c) fixed-sum or multiple (e.g. 2-3x) damages as an option given

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difficulties of proof. Ten EU Member States already provide for alternative measures of ‘lump-

sum’ or ‘multiple’ damages in certain copyright and/or trademark enforcement cases.

7.2. In your judicial practice, what is the relationship between unjust enrichment and lost

profits (i.e. royalties or license fees that would have been due in a contractual relationship)?

Article 12 of the Directive deals with the issue of pecuniary compensation to be paid to an injured

party. If the Irish courts are of the view that pecuniary damages are an adequate remedy in any

particular case it will then refuse to grant an injunction. This arises from the fact that an injunction

is a discretionary remedy.

Data is not available - either in absolute terms or as a percentage of the total number of cases - with

regard to pecuniary compensation being ordered by a national court in cases dealing with

intellectual property.

The Irish courts have a wide discretion regarding the award of damages. The general principle is

that an aggrieved person should be put as nearly as possible in the same position as far as money

can do it, as if he had not suffered injury or loss.

As stated above, statistics are not collected in a manner which can reveal how national courts

quantified damages, awarded moral damages, allowed for lost profits, made an award based on

profits made by an infringer, awarded costs, or how the "equity principle" in the meaning of Article

14 has been applied by the courts.

7.3. What is the legal situation under your law relating to the liability of legal persons (and the

managers thereof for the acts carried out by the legal person)? Is there any IP-specific

problem in this respect that could be tackled in the Enforcement Directive?

There is provision under Irish law that where there is consent, connivance or approval of a director,

manager, secretary or other officer of a body corporate to commission of a copyright offence, that

person shall also be guilty of the offence. Every member of a partnership other than a partner who is

proved to have been ignorant of an offence or attempted to prevent it, is also guilty of that offence.

Some respondents have argued that there is no provision for a director or manager to be made liable

for damages for infringing acts, and that consideration should be given to making such individuals

personally liable where they gain from the infringing act.

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8. Corrective measures

8.1. In your judicial practice, what is the difference between “recall” and “definitive removal”

from the channels of commerce? Is the fact that the infringer is no longer in possession of the

infringing goods a factor in deciding which measure to apply?

In Irish law, Regulation 3 of S.I. 360 of 2006 deals with an Order for recall, removal or destruction.

If a court finds that there has been an infringement of an intellectual property right involving goods,

the claimant may apply to the court for an order, if the court considers it just and proportionate

having regard to a variety of factors. A range of corrective measures are also provided for

including, in respect of goods, measures for their destruction or their recall or definitive removal

from the channels of commerce’.

Once again, data is not available for corrective measures that may have been asked for/accepted,

nor is such data collected which might indicate any other possible "appropriate measures" not

mentioned in Article 10 (1) of the Directive.

Some respondents have suggested the following as appropriate measures:

� In any proceedings where infringement is identified, there should be provision for a

consequent order for the destruction of the infringing goods and forfeiture of the

equipment used in the infringement, unless the rights holders elect otherwise or if the

principle of proportionality dictates otherwise.

� Items identified in proceedings should be the subject of a consequent destruction order

whether or not the case against defendant is proved.

Respondents have also suggested measures regarding definitive removal/market recall:

� The definitions must be clarified to ensure that market recall as a measure is intended to

temporarily prevent the marketing of products and that removal is a measure that aims at

removing the infringing products definitely.

� A market recall should be available at interlocutory stage and also granted ex parte on an

interim application in appropriate cases

� The costs of storage and destruction should be borne by the infringer, and there should

be a jurisdiction of the court to make an order for financial security for these expenses

against the defendant at the interlocutory stage.

8.2. Is there a need to clarify in the Directive the relationship between corrective and

provisional measures?

See the reply to 8.1 above.

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8.3. Does it happen frequently that the infringer is not able to pay the costs of the destruction

and that those therefore have to be borne by the State? Would you consider it justified to

impose the costs for the destruction of counterfeit goods on the State where the destruction is

in the public interest (in particular because these goods pose a risk to consumers' health and

safety)?

There is no data to show the frequency or existence of instances in which an infringer was unable to

pay costs of destruction. The costs of the destruction of counterfeit goods seized by customs

officials in Ireland are borne by the State in the interest of public health and safety. However, in

civil enforcement cases, it is recognised that the costs of storage and destruction of infringing goods

should at all times be borne by the infringer. In the event that the State had to bear such costs in the

interest of public health and safety, this should only be in the circumstances where the costs would

then be recoverable from the infringer.

8.4. Would it improve the situation if the Directive clarified that courts are entitled to impose

the costs of destruction of the infringing goods directly on the infringer once the infringement

is established?

The courts are already entitled to do so in Ireland.

8.5. Do you see a need to harmonise aspects of secondary use (e.g. for charity purposes) of

infringing goods in the Enforcement Directive?

In the interest of public health and safety, it is rare that the customs authorities in Ireland would

allow secondary use of counterfeit goods that they had seized. In a civil case, the decision normally

rests with the rights holder as to whether they wish to allow a secondary use of the infringing goods.

Rights holders tend to be reluctant to allow goods to be given to charity given the danger that the

goods would end up back in the hands of the infringer or the public safety risks that may ensue.

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9. Other issues

9.1. If you have not implemented one or more optional provisions of the Enforcement

Directive, what were the reasons for that?

In general, it was not considered necessary to incorporate the optional provisions of the Directive

into the domestic legislative code.

9.2. What are the main problems of cross-border IP enforcement arising from the current

rules on jurisdiction (especially Regulation 44/2001/EC, also known as Brussels I Regulation)?

Respondents have not reported specific problems on cross-border enforcement, though this may be

due to the national nature of their activities, which are now becoming increasingly cross-border and

international.

9.3. What specific problems have you encountered in collecting evidence in cross-border cases?

Certain problems have been encountered where a supplier of infringing material on the internet has

been located outside Ireland, and payment has been routed to other countries. See also reply to 9.2

above.

9.4. Are you aware of any codes of conduct that have been signed either between different

parties from the private sector or between parties from the private sector and the public

sector? If yes, what was the form and subject of these codes?

An Anti Piracy Steering Committee was established by the multimedia sector to promote awareness

of the piracy, counterfeiting and illegal copying of their products. The Irish Government also

established a top-level Interdepartmental Committee to Co-ordinate Measures to tackle DVD

Piracy. Regular seminars and training programmes are conducted in Ireland with companies

operating in the information technology sector in conjunction with the enforcement agencies i.e.,

the Garda Siochana and the Customs authorities.

Some respondents have indicated their satisfaction with progress un the EU stakeholder dialogues

under the aegis of the EU Observatory culminating in the Memorandum of Understanding relating

to on-line commerce in physical counterfeits.

9.5. What are the main risks for consumers under the current rules of the Directive? Would it

affect consumers adversely if certain rights of the rightholders were to be reinforced (in

particular the right to information, the rules on collecting evidence etc.)?

Any review of Directive 2004/48 should consider including the necessary safeguards to protect to

the greatest extent possible the confidential data of private citizens. The protections currently

enjoyed by citizens under national data protection legislation should not be diluted as a result of any

review of Directive 2004/48 and particularly so in the case of banking, financial or commercial

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information. Any proposals to extend the provision of Directive 2004/48 in areas such as the right

to information, the rules on collecting evidence etc. should fully respect the tenets of data protection

and the rights of accused persons under the law.

Note should be taken of Article 1.3a of the Framework Directive (Directive 2002/21/EC as

amended by Directive 2009/140/EC) concerning the rights of end-users access to the Internet and

requiring any measures in this area to include effective judicial protection and due process.

9.6. Is there anything else that should be addressed in the review of the Enforcement

Directive?

Some respondents have argued that there should be a general obligation imposed by the Directive

on member states to take legislative and other steps to reduce and take preventative measures

against all forms of infringement of intellectual property rights on the Internet. In their view such

provisions should address the jurisdictional issues, proactively protect consumers, copyright owners

and stakeholders, structurally enhance and encourage enforcement, and in particular facilitate EU

criminal investigation across all member states. It should promote the realisation of the common

good and benefit to the government, consumers and businesses in the member states from a healthy

legitimate economy.

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