PUBLIC CONSULTATION BY THE EUROPEAN COMMISSION
ON THE EVALUATION AND MODERNISATION OF THE
LEGAL FRAMEWORK FOR THE ENFORCEMENT OFINTELLECTUAL PROPERTY RIGHTS
Response on behalf of the CREATe Centre by Elena Cooper, Theodore Koutmeridis andMartin Kretschmer*

April 2016
CREATe (www.create.ac.uk) is the Centre for Copyright and New Business Models in theCreative Economy, a UK national research hub jointly funded by the AHRC (Arts &Humanities Research Council), EPSRC (Engineering & Physical Sciences Research Council)
and ESRC (Economic & Social Sciences Research Council). The research programme has astrong empirical focus. CREATe is a consortium of seven universities, centred at the
University of Glasgow.

1. Introduction
In April 2004, the EU adopted the Directive on the Enforcement of Intellectual
Property Rights, the so-called IPRED.1 More than a decade after, some of the past
problems seem to persist, while there are new challenges associated with theincreasing digitisation of the European and the global economy. The European
Commission (EC) has published a public consultation on the evaluation andmodernization of the legal framework for the enforcement of intellectual property
rights (IPR). The Commission seeks to receive by April 2016 views from allinterested parties, such as rightholders, the judiciary and legal profession,intermediaries, public authorities, consumers and civil society, on the question ofwhether the legal enforcement framework is still fit for purpose.
In its Digital Single Market strategy the Commission indicated its determination totake actions that foster the cross-border digital economy but also the aim to ensure asafe online environment for business operators and consumers.2 The Strategyemphasised the Commission’s horizontal approach to IPR enforcement, andinterventions that could modernise the enforcement of IPR by depriving commercialscale infringers of revenues (the 'follow the money' approach) and improving thecross-border applicability of enforcement.

*

Dr Elena Cooper, CREATe research fellow in Copyright Law, History and Policy(elena.cooper@glasgow.ac.uk); Dr Theodore Koutmeridis, CREATe research fellow in Economics(theodore.koutmeridis@glasgow.ac.uk); Prof. Martin Kretschmer, Professor of Intellectual Property
Law (martin.kretschmer@glasgow.ac.uk).
1
Corrigendum to Directive 2004/48/EC of the European Parliament and of the Council of 29 April
2004 on the Enforcement of Intellectual Property Rights (OJ L157, 30.4.2004), [2004] OJ L195/16-25:
http://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32004L0048R(01).
The Directive was due to be implemented in all EU Member States by 29 April 2006, a timetable notachieved. For instance, the UK implemented it in 2006, the Netherlands in 2007, France in 2008 andSweden in 2009.
2
The Digital Single Market strategy is available here: http://ec.europa.eu/growth/singlemarket/digital/index_en.htm

12. Existing evidence
CREATe’s earlier response to the enforcement section of the 2014 Consultation on
The Review of EU Copyright Rules3 noted that any intervention on the enforcementof intellectual property rights should be based on an understanding of the causes andeffects of unlawful behaviour. In particular, there should be a thorough examinationof the existing cross-country and cross-industry evidence that reveals strengths andweaknesses associated with the data and methods used.
CREATe has since developed an online resource (www.CopyrightEvidence.org4) tocollect and categorise existing empirical evidence relevant to copyright policy. The
selection approach was to invite users to identify potentially relevant research, using
Wiki technology. Wikis are peer-produced collaborative platforms that enable
contributors to add and alter information. Since the open source MediaWiki software
automatically tracks contributions and edits, it provides a simple solution to the
problem of maintaining transparency in a public resource. The Wiki approach is also
particularly suited to a field where the direction of policy is strongly contested, as it
offers a form of a dynamic live literature review.
Figure 1 illustrates the distribution of existing research by policy topic, based on
about 500 studies catalogued at www.CopyrightEvidence.org as of March 2016(multiple selection of topics was possible).
Enforcement
Licensing and Business models
Nature and Scope of exclusive rights
Fair remuneration
Exceptions
Mass digitisation/orphan works

Figure 1: CopyrightEvidence.org – Distribution of studies by Policy Field
Almost half of the existing studies address empirical issues relating to enforcement,
typically in the context of unauthorised consumer behavior (often called “piracy”).5
Given this focus, it is unsurprising that the majority of studies examine the musicindustry, software and films.
3

Kretschmer, M., R. Deazley, L. Edwards, K. Erickson, B. Schafer, D. J. Zizzo (2014). ‘The European
Commission’s public consultation on the review of EU copyright rules: A response by the CREATe
Centre’, European Intellectual Property Review, 36(9): 547-553.
4
Koutmeridis, T., Erickson, K., & Kretschmer, M. (Eds.). (2015). The Copyright Evidence Wiki:
Empirical Evidence for Copyright Policy. www.CopyrightEvidence.org. CREATe Centre: Universityof Glasgow.
5
For a thorough review of the literature up to 2011, see Handke, C. (2011). Economic effect of
copyright: The empirical evidence so far. Report for the US National Academies of Science.

2

Figure 2: CopyrightEvidence.org – Distribution of studies by Industry
The literature usefully identifies the importance of assessing the costs of enforcement,
and also distinguishes supply and demand side measures. Supply side interventions
include web blocking, targeting financial intermediaries, and increasing consumers’
awareness with clean sites lists. Demand side interventions include targeting
individual infringers with measures such as graduated response letter warnings,
slowing down Internet speed (throttling), termination of access, fines andimprisonment.6 There are improvements in our understanding of consumers’ online
media behaviour from large scale surveys.7 Recent advances in behavioural6

For an overview, see BOP Consulting with DotEcon (2015). International Comparison of Approaches
to Online Copyright Infringement: Final Report. Research commissioned by UK IPO (Report 2015/40).
For an empirical assessment of enforcement approaches, see Adermon, A., & Liang, C. Y. (2014).
Piracy and music sales: The effects of an anti-piracy law. Journal of Economic Behavior &Organization, 105, 90-106; Danaher, B., Smith, M. D., Telang, R., & Chen, S. (2014). The effect ofgraduated response anti‐piracy laws on music sales: evidence from an event study in France. Journal ofIndustrial Economics, 62(3), 541-553; Danaher, B., Smith, M. D., & Telang, R. (2015). Copyright
Enforcement in the Digital Age: Empirical Economic Evidence and Conclusions. WIPO/ACE/10/20(suggesting that global interventions, such as closing down Megaupload are more effective thannational policies, such as UK site blocking).
7
Kantar Media (commissioned by the UK communications regulator Ofcom and the UK Intellectual
Property Office) conducted six waves of a survey of a representative sample of the UK population aged
12+ since 2012, a method that allows the tracking of changing behaviour over time. CREATe has madethese data available for interrogation through a web-based interface (create.ac.uk/omeba). The EUIntellectual Property Office (under the European Observatory on Infringements of Intellectual Property
Rights) commissioned from GFK the “IP Youth Scoreboard” in order to understand better the attitudesof 15-24 year olds. An online survey of representative panels in the 28 Member States is expected to berepeated on a regular basis (https://www.oami.europa.eu/ohimportal/sv/web/observatory/ip-youthscoreboard).

3

economics have explored the evaluation of proposed measures experimentally against
their desired behavioural effects.8
The issue of intermediary liability, and specifically takedown obligations, has
attracted a large literature.9 An important new empirical study is UC Berkeley’s report
Notice and Takedown in Everyday Practice that examines a random sample from over
100 million notices (generated during a six-month period) to establish who is sending
notices, why, and whether the takedown requests are valid.10
There is also a growing literature on litigation behaviour. When infringement is
detected and the rights holders choose action instead of inaction, a relevant distinction
relates to the type of action and in particular to the options between judgment,
settlement and Alternative Dispute Resolutions (ADR), such as mediation andarbitration.11
Overall, the enforcement literature is predicated on the assumption that subject matter,term and scope of copyright are correctly calibrated for the desired quantity andquality of new products, the volume of sales, innovation, creativity and ultimately
welfare. Otherwise perfect enforcement would be enforcement towards a suboptimal
outcome.
There are very few empirical studies that address more technical legal issues, such as
the costs and effects of the disclosure of information by third parties or the allocationof damages, which are at the centre of this Consultation. In the following, we respondwithin the structure of the survey questionnaire, focusing on the questions where thelegal experience in the UK points into clear directions (while indicating where further
research may be needed).

8

A CREATe study identified five “utilities” that consumers derive from unauthorised copying. The
enforcement debate predominantly has focused on the financial and legal utility – the attraction of
consuming for free. The project analyses other potentially relevant factors such as experiential utility,
technical utility, social utility, and moral utility. Watson SJ, Zizzo DJ, Fleming P (2015) Determinantsof Unlawful File Sharing: A Scoping Review. PLoS ONE 10(6): e0127921http://journals.plos.org/plosone/article?id=10.1371/journal.pone.0127921; Fleming, P., Parravano, M.
and Zizzo, D. J. (2016). To Pay or Not to Pay? Determinants of Unlawful Product Acquisition.
CREATe Working Paper 2016/01: http://www.create.ac.uk/publications/to-pay-or-not-to-paydeterminants-of-unlawful-product-acquisition/
9
A useful map of the variation in legal approaches is offered by Stanford’s intermediary liability
project (edited by former CREATe researcher Giancarlo Frosio): https://cyberlaw.stanford.edu/ourwork/projects/world-intermediary-liability-map-wilmap
10
Urban, J. M., Karaganis, J., Schofield, B. L. (2016). Notice and Takedown in Everyday Practice, UC
Berkeley Public Law Research Paper No. 2755628: http://takedownproject.org/
11
Weatherall, K., Webster, E., & Bently, L. (2009). IP Enforcement in the UK and Beyond: A
Literature Review. Strategic Advisory Board for Intellectual Property Policy Report EC001; Hall, B.,
Helmers, C., Rogers, M., & Sena, V. (2014). The Choice between Formal and Informal Intellectual
Property: A Review. Journal of Economic Literature, 52(2), 375-423.

4

3. Response to the EC Consultation Questionnaire
Public consultation on the evaluation and modernisation of the legal framework for the enforcementof intellectual property rights: Judiciary and Legal Profession
CREATe Centre’s responses appear in bold and are underlined
JUDICIARY AND LEGAL PROFESSION
A. Identification
A.1.

Identify yourself

Judge sitting at a specialised IP court

Judge sitting at a specialised IP chamber in thegeneral civil/commercial court
Judge sitting in the general civil/commercial
court, reviewing IP cases
Legal academic

IP-specialised single judge
Legal counsellor
Other: please specify

B. Your views and opinion on the scale of IPR infringements and general issues of IP litigation
B.1.

To your knowledge and experience, are IPR-infringements cases taking a considerable
part of the overall civil/commercial litigations in your country?

Yes

No

Don't know

If "yes" or "no"B.2.

What is approximately the percentage of IP cases of the overall civil/commercial
litigation in your country?

[..] % of the overall civil/commercial law court cases.
B.3.

Do you think that IP rightholders are frequently using litigation as a means ofprotecting their IPRs?

Yes
If "no"B.4.

NoDon't know

In your opinion, what is the reason for this?

The costs for litigation and legal representation
are too highProcedures are too complex
Alternative dispute resolution mechanisms canachieve better results in terms of time and money

Civil court proceedings take too long
The outcome of litigation is not predictable
There are other means available to protect IPR(notice-and-action procedures, voluntarycooperation with intermediaries, etc.)

Other: Please specify
Please explain
B.5.
In your experience, do SMEs12 litigate to protect their IPR?
Yes: In the UK, a special court - the IP Enterprise
12

No

According to Commission Recommendation of 6 May 2003 concerning the definition of micro,
small and medium-sized enterprises, 2003/361/EC: enterprises which employ fewer than 250 persons
and which have an annual turnover not exceeding EUR 50 million, and/or an annual balance sheet total
not exceeding EUR 43 million (http://ec.europa.eu/growth/smes/business-friendly-environment/smedefinition/index_en.htm).

5

Court - has been established with a view to enable
SMEs to litigate. The experience of this court iscurrently being researched at CREATe.
http://www.managingip.com/Blog/3546274/Guestpost-Why-the-CJEU-is-learning-on-the-job.html
If "no"B.6.

In your opinion, what is the reason for this?

The costs for litigation and legal representation
are too highProcedures are too complex
Alternative dispute resolution mechanisms canachieve better results in terms of time and money

Civil court proceedings take too long
The outcome of litigation is not predictable
There are other means available to protect IPR(notice-and-action procedures, voluntarycooperation with intermediaries, etc.)

Other: please specify
Please explain
C. Functioning of key provisions of Directive 2004/48/EC on the enforcement of intellectual
property rights
This section aims to provide the Commission with stakeholder' views, opinions and information about
the functioning of the overall enforcement framework and of key provisions of IPRED.
C.1.
Overall functioning of the enforcement framework[Only for legal counsellor] N/A
In which Member States do you litigate?
[Please choose up to three jurisdictions in which you litigate most]Austria
Italy
Belgium
LatviaBulgaria
Lithuania
CyprusLuxembourg
Croatia
Malta
Czech RepublicNetherlands
Denmark
PolandEstonia
Portugal
FinlandRomania
FranceSlovakia
Germany
Slovenia
GreeceSpain
Hungary
SwedenIrelandUnited Kingdom
For these jurisdictions please provide your overall experience and satisfaction with the legal
framework for civil enforcement of IPR?
[Member State 1]
500 words max[Member State 2]
500 words max[Member State 3]
500 words max
Do you think that the existing rules – as provided by the Directive and implemented at national
level – have helped effectively in protecting IP and preventing IPR infringements?
Yes
No

6

Partly

No opinion

Please explain.
C.2.
Measures, procedures and remedies provided for by IPRED
Responses to this section should be based on the overall experience with the measures, procedures andremedies provided for by IPRED as implemented and applied at national level. If appropriate please
specify in your response, to the extent possible, particular national issues or practices and thejurisdiction concerned.
C.2.1.

Evidence (Articles 6 and 7)

Would you consider that the measures provided by IPRED are effective means for presenting,obtaining and preserving evidence?
Yes

No

No opinion

If "no": Please explain
In view of your experience with the implementation and application of the rules for having accessto and preserving evidence do you see a need to adjust the application of that measure, inparticular with regard to preserving evidence in the digital environment and in cross-bordercases?
YesNo
If "yes": please explain
C.2.2.
Right of information (Article 8)
What are the requirements for a request for information to be proportionate and justified when
exercising the right of information against an infringer?
The courts balance the claimant’s right to property against rights to privacy and the protectionof personal data. As each are considered to be of equal weight, the result of the balancing test
depends on the particular facts of the case at hand. See Golden Eye v. Telefonica [2012] EWHC
723 (Ch), which approach was approved by the House of Lords in Rugby Football Union v.
Consolidated Information Services [2012] UKSC 55, para. 45.
What are the requirements for a request for information to be proportionate and justified when
exercising this right of information against another person (e.g. an intermediary)?
The same test is applied to third parties, as to infringers.
How do you define "commercial scale" in your jurisdiction?
There is no requirement of ‘commercial scale’; an order for information is available against any
party that has become involved in the infringing transaction. In this respect, the UK provides abroader scope than that required by the Directive (as permitted under Art 2(1)).
What is the scope of the assessment of the admissibility and the merits of a request for information?
An order will be made if it assists the claimant to determine whether to commence a claim andthe basis for such claim, unless the claim is weak and speculative.
What is the burden of proof and evidence required to demonstrate the existence of an
infringement?
There is no requirement that infringement be proven.

7

What are the procedural safeguards in your jurisdiction to ensure the proportionate use, therelevance of the information for the identification of an infringer and the accuracy andcorrectness of the identification of the infringer, in particular when information is to be provided
by a third person, for example an intermediary service provider, for such purposes?
The safeguards stem from the principle that the aim of the procedure is to do justice, which inturn involves the careful exercise of discretion.
In your experience, what are the main reasons for not obtaining the requested information?

Unjustified/disproportionate request
Protection of confidentiality of
information
Right to respect for private life
and/or right to protection of personal
data
Information not available (anymore)
Information provided in the request
inaccurate
Other: please specify

Very relevant
X

Relevant

Less relevant

Not relevantX

X: theprotection ofproperty

In view of your experience with the application of the right of information do you think that theexisting rules have helped effectively in protecting IP and preventing IPR infringements?
Yes: This is a well establishedprocedure in the UK andcommonly used in IP cases.

No

No opinion

Please explain.
Do you consider the application of the rules on the right of information to be clear andunambiguous, in particular with regard to requests for information held by intermediaries?
Yes

No

No opinion

If "no": Please explain.
In view of your experience with the application of the right of information do you see a need toadjust the provisions for the application of that measure?
Yes

No: This is a well establishedprocedure in the UK which is
generally felt to be working
well.

No opinion

Please explain.
Do you see a need to clarify the criteria used to reconcile the requirements of the right to respect
for private life/right to protection of personal data on the one hand and the right to effective
remedy on the other hand when assessing requests for disclosure of personal data for the purposeof initiating judicial proceedings?
Yes

No: These have beenadequately developed throughjudicial decisions.

Please explain.
C.2.3.
Procedures and courts, damages and legal costs

8

No opinion

In your experience, what are the reasons for taking infringer to court?
Very relevant
Damages
Provisional and precautionary
measures
Injunctions
Other: please specify

Relevant
X

Less relevant

Not relevant

XX
X: deliveryup

Do you encounter specific problems when dealing with legal actions in a cross-border situation(applicant or defendant incorporated or resident in another EU Member State)?
Yes

No: There are well developed privateinternational law rules for the recognition andenforcement of judgments.

Please explain.
In your jurisdiction the award of damages as a compensation for the prejudice suffered as aresult of an infringement can include?
Yes
Lost profit
Unfair profits
Moral prejudice
Lump sum
Other: please specify

No

X
X
X
X
X: Notional royalty for each
infringement; consequential
damages that are a reasonably
foreseeable result of thewrong; in exceptional cases,
exemplary damages to teachthe defendant that
infringement does not pay; incopyright cases, additional
damages as the justice of thecase requires.

In your jurisdiction damages are usually granted in full?
Yes: Subject to rules of
causation in respect of lost
profits and reasonable
foreseeability in respect ofconsequential losses.

No

Don't know

If "no"What are the main reasons for not granting damages in full? N/A
Limitations in law
Other: please specify

Unjustified request / lack of evidence

Is it possible in your jurisdiction for the right holder to claim damages from a third party who
actively and knowingly facilitates infringements of IPRs?
Yes: Only where that party is adefendant to the action andagainst which a claimant has
obtained judgment. Liability

No

Don't know

9can be established on a numberof bases, including‘authorisation’ in the case of
copyright infringement and/or
liability as a joint tortfeasor(on the basis of inducement orcommon design).
If "yes": please specify
Overall, in view of your experience with the application of the rules for setting damages do you
think that the existing rules have helped effectively in protecting IP and preventing IPR
infringements?
Yes

No

No opinion

Please explain.
In view of your experience with the application of the rules for setting damages do you see a needto adjust the provisions for the application of that measure?
Yes

No: These have been wellestablished through judicial
precedent.

No opinion

Please explain.
The reimbursement of legal costs incurred by the successful party can cover?
Yes
Court fees for instituting
proceedings
Other court fees
External expert(s) costs
In-house costs
Attorney's charge
Additional attorney's fees

No

X
X
X
X
X
X

Are there any limitations on the recoverability
legislation/established by case law in your jurisdiction?

of

legal

costs

stipulated

in

the

Yes: The requirement thatNo
Don't know
costs are reasonable andproportionate usually meansthat only 60% of costs arerecoverable. The exception iswhere costs are awarded on theindemnity basis, e.g. due to theunreasonable behaviour of theparty against whom the orderis made (where an award will
be around 80% of all costs
incurred).
If "yes": Please specify
In view of your experience with the application of the rules for the reimbursement of legal costs
do you think that the existing rules have helped effectively in protecting IP and preventing IPR
infringements?
Yes: the availability of a costs
order is an incentive for parties
with strong cases to litigate.

No

No opinion

Please explain.

10In view of your experience with the application of the rules for the reimbursement of legal costs
do you see a need to adjust the provisions for the application of that measure?
Yes

No

No opinion

Please explain.
C.2.4.
Provisional and precautionary measures and injunctions
From your experience what kind of provisional measures and injunctions are most frequently
requested?
Provisional measures against an infringer
Injunction against an infringer
Provisional measures against an intermediary
Injunction against an intermediary[The question is open to interpretation; we have assumed that the adjective ‘provisional’ also
relates to ‘injunction’ i.e. that this is question about interim relief, not final injunctions.]
What is usually the geographical scope of the provisional measures and injunction requested?
Domestic
Non-EU jurisdiction

Another EU jurisdiction
Multi-jurisdictional

From your experience what are the reasons for applying for a provisional and precautionary
measures?

Prevent an imminent
infringement
Forbid the continuation ofan alleged infringement
Lodging of guarantees
Seizure or delivery up of
the goods suspected of
infringing an IPR
Blocking alleged
infringer’s bank accounts
and other assets
Precautionary seizure ofother movable andimmovable property of
the alleged infringer
Other: please specify

Very relevant
X

Relevant

X

X

X: To order aparty to disclose
information
relevant tolitigation (e.g.
the identity of
infringers); toorder a searchof premises andthe seizure ofmaterial
relevant toallegedinfringement, topreserve
evidence fortrial.

11

Less relevant

Not relevantWhat are the reasons for not obtaining provisional and precautionary measures against an
infringer?
Very relevant
Insufficient evidence
Measure requested
disproportionate
No likelihood of successon the merits of the caseProtection ofconfidentiality of
information
Request for a security oran equivalent assurance
Right to respect for private
life and/or right toprotection of personal data
No commercial scale
infringement
Infringer established inanother jurisdiction
Other: please specify

Relevant

X: Interim
injunctions: if
there is anabsence of aserious case to
be tried, or if
the claimant
could beadequately
compensatedthroughmonetary
compensation,or if the generalbalance of
convenience isin favour of not
granting an
injunction.
Search andseizure orders:
where there isno urgency or
the interests ofjustice are notsatisfied or if
there is a lack ofevidence of
relevantmaterial in the
defendant’s
possession or
there is no riskof destruction ofthat material.

12Less relevant

Not relevantAgainst which type of intermediary provisional and precautionary measures and injunctions aremost frequently requested? No opinion is given.
Advertising service provider13
Mobile apps marketplace
Contract manufacturing service provider14
Press and media company15
16
Business-to-business data storage provider
Online marketplace
Business-to-consumer data storage provider17
Payment service provider
Content hosting platform18
Retailer
Domain name registrar
Search engine
Domain name registrySocial media platform
DNS hosting service provider
Transport and logistics company
Internet Access Provider
Wholesaler
Other: please specify
Other: Precautionary measures and injunctions are most frequently requested against
communications platforms, such as Google, Twitter, Facebook or open Wi-Fi administrators.
Whether they are liable for their users’ behaviour remains a hotly debatable subject, while its
link to innovation, freedom of expression and aggressive online activity, renders this issue as a
key concern for enforcement. There is an increasing body of evidence relating to the causes andeffects of Take-Down policies (see introductory section at 2).
In your jurisdiction does the availability of provisional and precautionary measures against anintermediary depend on whether or not the infringer has been identified?
Yes

No

Don't know

Is it possible in your jurisdiction to obtain provisional and precautionary measures against any
intermediary or is an injunction subject to an active involvement (responsibility/liability) of theintermediary in the infringement?
Any intermediary

Only intermediaries actively
involved in the infringement:(that is for ‘authorising’
infringement or as joint
tortfeasors) but final
injunctions are available
against intermediaries withknowledge of the infringement
under s.97A CDPA (discussed
below).

Don't know

Please explain.
Is it possible in your jurisdiction to obtain an injunction against an internet intermediary
forbidding the continued access to the material that is allegedly infringing IPR when thatinjunction does not specify the exact measures which that access provider must take?
Yes
If ‘yes’No

Don't know

13

Advertising agencies, advertising broker.
Contract manufacturing is an outsourcing of certain production activities previously
performed by the manufacturer to a third-party. This may concern certain components for the productor the assembly of the whole product.
15
Newspaper, broadcaster.
16
Data storage space and related management services for commercial user.
17
File-storing or file-sharing services for personal media files and data.
18
Platforms providing to the user access to audio and video files, images or text documents.
14

13

How do courts guarantee the judicial oversight of the measures chosen by the intermediary withregard to the need to ensure compliance with the fundamental right of internet users to freedomof information?
Through the exercise of judicial discretion, in deciding whether to make an order, and theprinciple of proportionality.
In your experience, what are the reasons for not obtaining provisional and precautionary
measures against an intermediary?
Very relevant
Insufficient evidence
Measure requested
disproportionate
No sufficient link between
the intermediary and theinfringement
No likelihood of successon the merits of the caseProtection ofconfidentiality of
information
Right torespect for private life
and/or right to protectionof personal data
Bank secrecy
No commercial scale
infringement
Intermediary establishedin another jurisdiction
Other: please specify

Relevant

Less relevant

Not relevant

X: In respect ofinteriminjunctions,
there is no
arguable case asto‘authorisation’by theintermediary; inrespect oforders todisclose theidentity of
infringers:
proportionality.

Are you aware of problems in cases of application for provisional and precautionary measures ina cross-border situation (for example infringer or intermediary established in another Member
State)?
Yes: particular problems occur where
infringer/intermediary is in a non-member state
as private international law rules are weaker.
If "yes": Please explain.

14

No

Are you aware of problems when executing provisional and precautionary measures in a crossborder situation (judicial authority in another jurisdiction and infringer or intermediaryestablished in your jurisdiction)?
Yes: no specific examples available.

No

If "yes": Please explain.
In your jurisdiction can an injunction against an infringer be issued only to stop an actual
infringement or also to prevent further infringements in the future?
Only actual infringement

Also further infringements inthe future

Don't know

If "also further infringements in the future":
How do you define "further infringements"?
Any infringement by the defendant of the IPR in question.
What are the reasons for not obtaining an injunction against an infringer?
Very relevant
Insufficient evidence
Measure requested
disproportionate
Protection ofconfidentiality of
information
Protection of personal data
No commercial scale
infringement
Other: please specify

Relevant

Less relevant

Not relevant

X: Trivial
infringement or
adequacy offinancial
remedies or
oppressive
impact of
injunction on
defendant or
litigation was
vexatious or no
future threat of
infringement.

What are the reasons for applying for an injunction against an intermediary with regard to third
parties using their services infringing an IPR?

Block access toinfringing content online
Stay down of infringing
content online
Adopt technicalmeasures such asfilteringDe-indexing infringing
websites
Permanent terminationof domain
Permanent termination

Very relevant
X

Relevant

Less relevant

Not relevant

X
X
X
X
X

15

of subscriber accountDiscontinue providing
payment services
Discontinue providing
advertising services
Discontinue providing
transport services
Discontinue
manufacturing of
infringing products
Termination of lease forcommercial premises
Other: please specify

X
X
X
X
X

Is it possible in your jurisdiction to obtain an injunction against any intermediary or is an
injunction subject to an active involvement (responsibility/liability) of the intermediary in theinfringement?
Any intermediary: incopyright cases, provided thatthe intermediary has actual
knowledge of the infringement(s.97A CDPA 1988).

Only intermediaries actively
involved in the infringement

Don't know

If "only intermediaries actively involved in the infringement":
What are the criteria for determining if an intermediary is actively involved in the infringement?
N/A
Please explain.
In your jurisdiction can an injunction against an intermediary be issued only to stop an actual
infringement or also to prevent further infringements in the future?
Only actual infringement

Also further infringements inthe future.

Don't know

If "also further infringements in the future":
How do courts define "further infringements" without imposing on intermediaries generalmonitoring obligation in the meaning of the E-commerce Directive?
By restricting the relief to the specific IPR in issue.
To you knowledge what are the reasons for not obtaining an injunction against an intermediary?
Very relevant
Insufficient evidence
No sufficient link between
the intermediary and theinfringement
Measure requested too
severeProtection ofconfidentiality of
information
Right torespect for private life
and/or right to protectionof personal data
No commercial scale
infringement

Relevant
X

Less relevant

Not relevant

X
X
X
X

X

16

Other: please specify

X: In copyrightcases, where theintermediary
does not haveactualknowledge oftheinfringement(as required bys.97A, CDPA
1988).

However no cases have been brought which have failed and so no clear evidence can be given. In
the opinions we have where orders were made, the judge went through an exercise to establish
the order was proportionate, taking into accounts rights to privacy, the costs to ISPs and theeffectiveness of the order. However a very low level of efficacy seems sufficient. Complete
circumventability would however seem to be reason for an order not to be made, as would
disproportionate costs to ISPs.
Are you aware of problems in cases of application for an injunction in a cross-border situation(infringer or intermediary established in another EU Member State)?
Yes: no specific examples available.

No

Please explain.
Are you aware of problems when executing an injunction in a cross-border situation (judicial
authority in another jurisdiction and infringer or intermediary established in your jurisdiction)?
Yes: no specific examples available.

No

Please explain.
In view of your experience with the application of the rules for provisional and precautionary
measures and injunctions do you see a need to adjust the application of these measures, also
bearing in mind the cross-border application?
Yes

No

No opinion

Should the Directive explicitly establish that all types of intermediaries can be injuncted?
Yes: but only on the basis of aclear criteria, e.g. actual
knowledge of infringement as
per s.97A CDPA 1988.

No

No opinion

If 'yes' or 'no':
As regards search engines, payment intermediaries and advertising intermediaries, it would bebetter for there to be some kind of transparent judicially supervised legal process than thecurrent UK situation where pressure is put on intermediaries through extra legal and nontransparent means. Similar concerns exist regarding search engines and delisting/delinking anddomain name registrars and blocking/removal of domain names. However such extension would
require considerable enquiry to discourage delay and unintended consequences.
Should the Directive explicitly establish that no specific liability or responsibility (violation of any
duty of care) of the intermediary is required to issue an injunction?
Yes

No

No opinion

If 'yes' or 'no':
To provide effective measures against on-line infringement.

17

Should the Directive explicitly establish that national courts must be allowed to orderintermediaries to take measures aimed not only at bringing to an end infringements alreadycommitted against IPR using their services, but also at preventing further infringements?
Yes.

No

No opinion

If 'yes' or 'no':
Stay down is a disproportionate imposition on ISPs and sites and is so far not one the ECJ has
mandated, with considerable care. It is not something even the UK courts, who have been morerobust on blocking, have mandated though we believe it is common practice in Germany. Thereis no consensus in the EU for it as necessary nor is it clear why costs of enforcement should betransferred to intermediary when take down is available. Furthermore enforcing it against nonEU sites will be impossible which will simply encourage offshoring.
In that respect should the Directive establish criteria on how preventing further infringements is
to be undertaken (without establishing a general monitoring obligation under the E-Commerce
Directive)?
Yes

No

No opinion

If 'yes' or 'no':
Please specify why or why not.

Do you see a need for criteria defining the proportionality of an injunction?
Yes

No

No opinion

If 'yes' or 'no':
Because of the importance of this concept.
Do you see a need for a definition of the term "intermediary" in the Directive?
Yes

No

No opinion

If 'yes' or 'no':
We see a need for clarification of the term “provider of information society services” in the ECommerce Directive. Defining a new class of intermediaries as the Platforms consultationelsewhere tries to do seems an untested attempt to expand the scope of intermediary
responsibilities without fully realised process and safeguards, and with possibly severe impact oninnovation.

Do you see a need for a clarification on how to balance the effective implementation of an
injunction and the right to freedom of information of users in case of a provisional measure or
injunction prohibiting an internet service provider from allowing its customers access toallegedly IPR infringing material without specifying the measures which that service provider
must take?
Yes

No

No opinion

If 'yes' or 'no':
Please specify why or why not.
Do you see a need for other amendments to the provisions on provisional and precautionary
measures and on injunctions?
Yes

No

No opinion18

If "yes"
There is a need for a harmonised form for notice as in US DMCA and for other DMCA features
such as provisions penalising false or overblown claims by rights holders, and rules to protect
intermediaries who act in good faith or under compulsion to protect rights holders resulting inclaims by third parties eg subscribers for breach of contract, or tortious interference withrelationships.

C.2.5.

Publication of judicial decisions

In your experience, do parties request in legal proceedings instituted for infringement of an IPR
the decision to be published in full or in part??
Yes

No: all decisions are published.

Don't know

Please explain.
Are judicial decisions related to the enforcement of intellectual property rights publicly available
in your jurisdiction?
Yes: Official transcripts of all
judgments are available
through the Court Service.

No

Don't know

Please provide detail and reference.
Do you see a need for / added value in a more systematic dissemination of the information
concerning the decision in legal proceedings instituted for infringement of an IPR?
Yes

No: The current position in the
UK is satisfactory.

No opinion

Please explain
C.2.6.
Other issues
Do you think that the existing rules strike the right balance between the need to effectively
protect IPR and preventing IPR infringements and the need to protect fundamental rights
including the right to respect for private life, the right to protection of personal data, the freedom
to conduct a business as well as the freedom of information?
Yes

No

No opinion: We are yet to see
how the courts approach
applying the principle of‘proportionality’, for instance,
in an application for an
injunction under s.97A CDPA
1988, where the infringing
material is not an exact copy
and raises questions of freedomof expression or where there ispublic interest in the material
being available eg academic
papers funded by taxpayer
money.

If “no”: Please explain
Are there any other provisions of the Directive which, in your view, would need to be improved?
Yes: Clarity as regards themeaning of the word‘damages’ in Art. 13. In theNo

No opinion

19

UK, ‘damages’ (assessed on acompensatory basis) are
distinguished from an accountof profits. See further Hollister
v. Medik [2012] EWCA 1419,
para. 60.
Please explain.
D. Issues outside the scope of the current legal framework
D.1.

Specialised courts

Do you have in your jurisdiction dedicated courts, courts' chamber or judges specialised in IP
matters?
Yes: Within Chancery Divisionof the High Court. There isalso an IP Enterprise Court
aimed at SMEs.

No

Don't know

Please provide detail.
Which rights are covered by the competence of the court? All of the below
Copyright
Rights related to copyrightPatent rights (including rights
derived from supplementary
protection certificates)
Plant variety rights

Community trademark rights
National trademark rights
Geographical indications

Utility model rights

Other: please specify

Sui generis right of a databasemakerCommunity design rights
National design rights
Rights of the creator of the
topographies of a semiconductor
product
Trade names (in so far as theseare protected as exclusive
property rights in the nationallaw concerned)
Don't know

Does legal action at a court specialised in IPR matters provide an added value compared to legal
actions at other courts?
No

Yes

No opinion

If "no": Please explain
If "yes":
What is the added value?
Reduce length of proceedings
Build expertise.
D.2.

Reduce costs
Other: please explain: The quality of thejudgments.

In your view and with regard to civil litigation in the area of IPR enforcement do anyof the following procedures provide an added value or alternative to court proceedings
worth considering?

Fast track procedure
Mediation
Online dispute resolution
Other: Opinion Service (non-binding opinion
issued by the IPO on patent infringement andvalidity)

Arbitration
Fact-finding procedures
Cease and desist procedures

20

D.3.
Yes

Do you identify any other issue outside the scope of the current legal framework thatshould be considered in view of the intention to modernise the enforcement of IPR?
No
No opinion

Yes - proper role of the criminal law, if any, in IP enforcement; the desirability of allowing thecourts to grant post-expiry injunctions (e.g. see the UK case of Dyson v Hoover, No. 2, [2001]
RPC 544); the circumstances, if any, in which national courts can grant injunctions relating toacts in other jurisdictions (the current UK approach is that this is exceptional, see Kirin-Amgenv. Transkaryotic Therapies, No. 2, [2002] RPC 203, 216).
E. Do you have any other comments?
Yes

No

Please specify. See introductory review of existing evidence at the beginning of this document.

21