Protecting your creations: Landscape of Latin …...Protecting your creations: Landscape of Latin America, China and South-East Asia With IP experts Elio de Tullio and Franz Ruz 07

Protecting your creations: Landscape of Latin America, China

and South-East Asia

With IP experts Elio de Tullio and Franz Ruz

07 March 2018

Welcome to the Webinar!

Helika Jurgenson Project OfficerChina and South-East Asia IPR SME Helpdesk

César E. FernándezTraining Manager & IP AdvisorLatin America Helpdesk

07 March 2018 Copyright © 2018 South-East Asia, Latin America & China IPR SME

Helpdesk. All rights reserved.

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Today’s Speaker

Name: Franz RuzFirm: Ecija Law & TechnologyLocation: Madrid, SpainEmail: [email protected]

With a clear international profile, Franz Ruz is a highly regarded expert in IntellectualProperty, Entertainment and Technology Law, and internationalization of companies inthe TMT sector in Latin America. He has more than 13 years of experience as a legaladvisor and strategic consultant to companies in the technology, creative and mediaindustries, and governments, international agencies and commercial associations.Among others, Franz Ruz has worked on projects at the Spanish Institute for ForeignTrade (ICEX, Ministry of Economy), at the Economic Commission for Latin Americanand the Caribbean (United Nations), and collaborated with the World IntellectualProperty Organization (WIPO), European Commission, and governments of Chile,Argentina and Costa Rica. Currently, he works as IP & IT Attorney and Partner andHead of LatAm Desk at ECIJA Law & Technology.



Today’s Speaker

Name: Elio de Tullio Firm: De Tullio & Partners Location: Rome, Italy Email: [email protected]

Elio De Tullio is an Italian lawyer admitted at the bar of Bari and trade mark attorney.After 10 years of experience in IP matters, he founded in 2005 the law firm De Tullio &Partners, with offices in Rome and Bari and a liaison office in New York. ManagingPartner of De Tullio & Partners, he acts as trade mark attorney in the strategicassessment of IP protection and in prosecution and opposition processes at domesticand international level. He is also a litigation lawyer before the Italian Courtsspecialized in Intellectual Property.He specializes on trademark, design and patent issues, from a strategy, businessintelligence, competition, filing and prosecution perspective. He has written somearticles on Italian and European law on intellectual property rights which have beentranslated into Chinese and South-East Asia languages.



mailto:[email protected]

7

Agenda

• How can I protect my creations?

• What are IPRs?

• Types of IPRs

• Legal framework

• Protecting creations: Copyright (what, where, who, how long, etc.)

• Protection & Enforcement: case studies

• Q&A

7



How can I protect my creations?

If you have created, developed or invented

something you can ensure its protection through

INTELLECTUAL PROPERTY RIGHTS (IPRs)



What are IPRs?

IPRs are special rights granted by law to the creators (authors, inventors, etc) over their creations or inventions.

IPRs give their holders an exclusive monopolistic right to:

– Freely use their creations and authorize or prohibit others to use them, in any manner or form.

– Benefit from the exploitation of their creation

– Prevent others from using their creations in the market without their authorization



Types of IPR

There are several types of IPR, which are useful to protect different assets:

– Copyright (or author rights and related rights) Works (e.g. novels, visual arts, motion pictures, software, videogames)

– Designs The shape of products (e.g. furniture, mobile phones, bottles, etc.)

– Trademarks – Patents Industrial inventions (e.g.

machines, industrial processes, chemical products, etc.)

– Utility models (aka petty patents or short-term patents) Simpler mechanical inventions



Types of IPR

COPYRIGHT (author’s and related rights)

DESIGNS

UTILITY MODELS

TRADEMARKS

PATENTS



Another means of protection: Unfair competition

Unfair competition is not an IPR but it is another way to protect your creations.Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition, in particular:

– Acts of confusion– Acts of denigration– Acts of mislead

Protection of creations on the basis of IPRs and on the basis of unfair competition can be relied on simultaneously.



Legal framework: WIPO & The Berne Convention

• The Berne Convention for the Protection of Literary and Artistic Works is an international treaty signed and ratified by 175 countries, including all countries in Latin America and Europe.

• It establishes a minimum set of rules for the protection of authors and their works in all the member countries to ensure a certain level of uniformity throughout them.

• The Berne Convention applies to (in an extensive sense):

Literary works

Artistic works



• You can benefit from the protection and the rights granted by the Berne Convention if you are an author that is a:

– National of a member country

– National of a third country residing in a member country

– National of a third country having published your works for

the first time in a member country.

Legal framework: WIPO & The Berne Convention



Legal framework: Principles of the Berne Convention

Automatic protection

Independence

NationalTreatment

Works originating in one of the Contracting States mustbe given the same protection in each of theother Contracting States as the latter grants to theworks of its own nationals.

Protection must not be conditional upon compliance with any formality.

Protection is independent of the existence of protection inthe country of origin of the work. If, however, a ContractingState provides for a longer term of protection than theminimum prescribed by the Convention and the work ceasesto be protected in the country of origin, protection may bedenied once protection in the country of origin ceases.



An overview of Paris and Berne Convention applicability in China and SEA

• China, Singapore, Indonesia, Malaysia, Vietnam, Brunei,Philippines, Laos and Thailand are members of the BerneConvention for the Protection of Literary and Artistic Works.Myanmar and Cambodia are not currently members of the BerneConvention.

• China, Singapore, Indonesia, Malaysia, Vietnam, Brunei,Philippines, Laos, Thailand and Cambodia are contracting parties ofthe Paris Convention for the Protection of Industrial Property.Myanmar is currently not a signing party.

• Myanmar is a party to the TRIPS agreement. The new CopyrightLaw will grant protection for works created by nationals of otherstate members of the TRIPS agreement.



Copyrights Designs



What can be protected?


• Copyright, or author rights, are a very special type of IPR

granted to the author of a work.

• A work is an original intellectual creation expressed by any

means or in any form, whether tangible or not.

• Therefore, copyright protects the expression of ideas by

any means, the creativity of the author materialised.







“Copyright protection extends to expressions and not to ideas, procedures, methods of

operation or mathematical concepts as such.”




Examples of worksNovels, essays, lectures, pamphlets.

Music

Dramatic and musical-dramatic pieces

Coreographies

Motion pictures

Sculptures, paitings, drawings, engravings, lithography

Illustrations, maps, plans, designs of architectural works

Photographies

Software, videogames, apps



• When making business in Latin America, a company must be careful on how to use local cultural heritage.

• Some states have special provisions regarding the protection of Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs)– TK is knowledge, know-how, skills and practices that are developed, sustained

and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity.

– TCE, also called "expressions of folklore", may include music, dance, art, designs, names, signs and symbols, performances, ceremonies, architectural forms, handicrafts and narratives, or many other artistic or cultural expressions.



What can be protected?Latin America

What can be protected?China

• Creative traditional works such as books, paintings,photographs, films, plays, music, sculptures, recordings or evenchoreography, databases or compilations if derive from a selectioncreative data shall be protected.

Also:

• Software• Industrial designs and graphics• Applied art and architectural buildings



What can be protected?South-East Asia

• Generally, in SEA countries creative works in the field of literature, art andscience can be protected.

• In Malaysia, creative works such as literary, artistic, musical and dramatic works,sound recordings, published editions, films, performer’s rights can be protected.There is no formal requirement in order for copyright to be claimed orrecognised.

• In Vietnam, the main types of works that can be protected are organized inliterary, artistic and scientific works, which include: literary and scientific works,textbooks, teaching courses, lectures, speeches and press works, musical, stage,photographic and cinematographic works, plastic art works and applied artworks, sketches, plans, maps and architectural works, computer programs anddata collections.

• In Indonesia, creative works such as books, computer programs, pamphlets,visual aids, typographical arrangements, and all other written or spoken workscan be protected, as well as songs, dramas, other art works and applied artsincluding paintings, drawings, carvings, sculptures, architecture works,translations, interpretations, adaptations, anthologies, databases and othersimilar works.



What cannot be protected?Latin America

• Ideas, thoughts• Methods of operation and processes• Math formulas, algorithms or principles• In most countries, works of

government organisations, judicial resolutions, laws and regulations.

• Domain names• Data and facts• Common knowledge• Inventions• Business practices



In South-East Asia as in China:

• Ideas and concepts

• Names, titles, short phrases, slogans; ideas, principles,concepts; processing methods, algorithms, operationalmethods;

• underlying news contents of factual happenings orgovernment publications; mathematical theories;

• works that passed into the public domain.



What cannot be protected?China & South-East Asia


• Copyright includes several types of rights:

a) Moral rights: Intimately connected to the author such as

the right to claim authorship and to object to derogatory

actions (distortions, mutilations or modifications of the work):

– Non-transferable

– Limitless duration

– Unwaivable



Who can be protected? AuthorshipLatin America

• In most countries in Latin America, the author is naturally the owner of the copyright from the very creation of the work. There a few exceptions were corporations are also included.

• The author is the person who creates the work.

• However, in the creation of two or more people may intervene which gives rise to:

– Joint works: The work is the result of the collaboration of several authors and belongs to them jointly

– Collective works: The work has been created at the initiative and under the direction of a person that divulges it under its name (the editor), despite several authors have taken part in its creation. The work, as a whole, belongs to the editor.

– Composite works: The work incorporates a pre-existing work (e.g. adding a poem as the lyrics to a pre-existing music)



Who can be protected? AuthorshipLatin America - Software

✓ A computer program is a set of instructions that controls the

operations of a computer to enable it to perform a specific

task, such as the storage and retrieval of information.

✓ Software is protected under the copyright laws of a number

of countries as well as under the WIPO Copyright Treaty

(WCT) (1996).



Who can be protected? AuthorshipLatin America - Software

• Rights over software belong to its author.• In cases where software is created by a group of people

at the initiative and under the direction of another natural or legal person, software should be considered as a collective work and rights will belong to the latter.

• If software is created within the context of a labour relation, the employer will be entitled to the rights, if it was within the employee’s tasks to create such software.

• In some countries, like Chile, rights over software created on demand, will belong to the person ordering it.



Who can claim copyright? AuthorshipChina & South-East Asia

• Generally speaking, the owner of the copyright is the creator of thework or his employer.

• In China and in the SEA region, in case of commissioned work, theowner of the copyright is the third party who commissioned thework (unless the contract provides otherwise).

• As regards service works, in case the employee used the businessresources of the employer in order to develop the work, theemployee is the owner of the moral rights while the employer is theowner of the economic rights (unless the contract providesotherwise).

• However, in Indonesia, even if the work is developed during theemployment relationship, the owner of the copyright is notautomatically the employer. The ownership of service works must bespecifically provided in the employment contract.




b) Exploitation rights: Rights to commercially use the work

and obtain profit therefrom.

– Limited in time

– Transferable



What can be protected?Latin America

b) Exploitation rights:

Limitations and exceptions:

– Quotation

– Teaching

– Private use

– Parody

– Etc.



What can be protected?Latin America - Limitations

• Quotation: It is permissible to make quotations from a work which has already been lawfully made available to the public. Mention must be made to the author (e.g. Bolivia).

• Illustrations for teaching: In many countries it is permissible to reproduce literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching. Mention must be made to the author (e.g. Paraguay).

• Information on current topics: It is permitted to reproduce a work when informing the public on current topics, if the source, where applicable, can be indicated. (e.g. Venezuela)

• Private use: In some countries, it is permitted to make private copies of a work lawfully acquired for private use only, i.e., without pursuing any commercial or economic ends (e.g. Brazil).

• Parody: Many jurisdictions (e.g. Chile, Colombia) allow the parody or satire of a work, usually provided that It does not cause damage to the original work



What can be protected? Related rights

• Related or neighbouring rights are IPRs granted by law to intellectual creators other than authors in compensation for their creative efforts or their contribution to the dissemination of works.

• The following subjects may have related or neighbouring rights in certain jurisdictions:

– Performers (actors, dancers, singers) over their performers (Rome Convention)

– Producers of phonograms (record labels) over their recordings (Rome Convention)

– Broadcast entities (Rome Convention)– Producers of audiovisual works– Creators of mere photography – Editors of unedited works in public domain or unprotected works



Where do I protect? Territoriality

• IPRs are territorial, i.e., they are only protected in the specific territory where they are registered (trademarks, patents, etc.)

• Therefore, registration with the competent authorities will determine where you have rights and where you can enforce them.



Where do I protect? TerritorialityLatin America

• International treaties Berne Convention

• Copyright protectable works Automatic protection in all the Latin American countries



Where do I protect? TerritorialityChina & South-East Asia

Copyright is a right that arises automatically inthe belonging country upon the creation of thework.

As soon as any of these works are created in anycountry which is a signatory to the BerneConvention, copyright protection automaticallyarises in every other country which is also partyto the Convention.

In Myanmar, copyrights from other countries arenot recognized and protected.

In Cambodia, foreign works are notautomatically protected.



How long do I have an exclusive right?

• Copyrights are limited in time.

• Depending on the type of work (e.g. anonymous, mere photography, software, etc.) the duration is different.

• There is no international single duration and each country has its own rules regarding the term during which an IPR is in force.



How long do I have an exclusive right? Latin America

• Generally speaking:

• the author’s life plus 50 to 100 years after the death of

the author (or after publication in certain cases)



How long do I have an exclusive right? Latin America

Country Copyright Related rights

Chile 70 years 70 years

Costa Rica 70 years 70 years

Colombia 80 years (30 years if holder is a legal person)

80 years (30 years if holder is a legal person)

Brazil 70 years 70 years

Argentina 70 years (50 years for anonymous works belonging to a legal person and for movies and 20 years for photographies)

70 years

Paraguay 70 years 50 years

Bolivia 50 years 50 years

Venezuela 60 years 60 years

Uruguay 50 years 50 years

Mexico 100 years 75 years07 March 2018 Copyright © 2018 South-East

Asia, Latin America & China IPR SME Helpdesk. All rights reserved.

How long do I have an exclusive right? China & South-East Asia

• China: protection of the moral right to publication and of theeconomic rights lasts as long as the life of the author, plus 50 yearsfrom his death; the protection of all the other moral rights (right toauthorship, disclosure, modification and integrity) is unlimited.

• In the SEA region, copyright owner’s moral rights are protected for anindefinite term. The duration of economic rights is variable:

• Malaysia: protection lasts the life of the author plus 50 years after theauthor's death; for unpublished works the protection lasts for 50 yearsafter the year following the publication.

• Indonesia: until 70 years from the death of the author or 50 yearsfrom the end of the year in which the work was firstpublished/performed (20 years for broadcasting rights).



How long do I have an exclusive right? China & South-East Asia

• Singapore: the duration of protection depends on the nature of thecopyrighted work, generally it lasts until 70 years from the death ofthe author or from the end of the year in which the work was firstpublished/performed (50 years for broadcasts and cable programs).

• Vietnam: the exclusive rights to publish the work and authorisesomebody else to do so, and the economic rights, last for the lifetimeof the author plus 50 years (with the exception of cinematographicworks, photographs, plays, applied art works, and anonymous works,which are protected for 50 years from the date of first publication,with no possibilities for extension).



How do I protect? Registration

Copyright protection over works arises uponcreation of the work automatically.

Requirements: originality



How do I protect? - Originality

• The main requirement for copyright protection is originality.

• Originality is deeply involved with the authors personal mark and manifests the author’s particular way of expressing.



How do I protect? RegistrationLatin America

Copyright does not have to be registered; it is granted tothe creator (author) by the sole act of the creation of thework.

It is, however, recommended in some case, but has totake into account:✓ Which is your business model and if registration is

needed or required to operate✓ The complexity of the market of destiny



How do I protect? RegistrationLatin America

• Registration before National Copyright Office:

– Normally inexpensive (at least compared with

other intangible assets such as trademarks).

– Authorship presumption Useful in case of

litigation or dispute.

– In some countries, mandatory in case of

assignment or license (e.g. Colombia)



How do I protect? RegistrationChina & South-East Asia

• Any work published in by a Chinese or a foreign citizen, automaticallyenjoys protection. If the work is published abroad, it will enjoy theautomatic protection as if it was published in China or if its author was acitizen of a State party of international agreements in this area (i.e. theBerne Convention).

• Copyright is an automatic right that arises the moment a work is created,without the need of formal registration; however, registration isrecommended because the proof of ownership obtained with copyrightregistration saves time and money during disputes.

• Generally speaking, three conditions must be fulfilled in order for a workto be protectable by copyright: expression in a particular form, originalityand a creative effort of the author.




• China: there is no requirement to register a copyright; copyright is a rightthat arises automatically upon the creation of the work. It is possible toregister copyright before the Copyright Protection Centre of China.

• Generally speaking, in SEA countries, copyright is a right that arisesautomatically upon the creation of the work.

• Singapore: No system of registration of copyright is provided. Copyrightprotection is conferred automatically to the author as soon as it isexpressed or fixed in a material form (e.g. paper, tape and film) fromwhich it is capable of being reproduced.

• Myanmar: actually there is no registration system for copyright; however,the New Copyright Law (only a draft of the law is at the moment available)will provide for copyright registration.

• Brunei: there is no system for copyright registration.




• Indonesia: copyright protection is conferred automatically to the author andarises automatically after a work is created in a material form. Copyright is notrequired to be recorded in order to have it protected, however, many smallbusinesses operating in Indonesia choose to record copyright as proof ofownership. The competent authority is the DG Intellectual Property Rights.

• Malaysia: there is no formal requirement of registration in order for copyrightto be claimed or recognised. It is possible to proceed with a voluntaryregistration before the Intellectual Property Corporation authority.

• Vietnam: Registration of copyrights can be done with the National CopyrightOffice of Vietnam, or the Department of Culture in the locality where theSME’s office is located.

• In Cambodia, Philippines, Laos and Thailand it is also possible to registercopyright before the competent National Authorities.



How do I protect? Other means

1) Document the process of creation and publication of the work by means of:

• registers• contracts (in case of work-for hire,

subcontractors and freelancers),• licenses and • Etc.

2) Include an identifiable sign (i.e. a symbol or your name or pseudonym)




3) TPM and DMS systems: Online protection

a) Protection Measures (TPM)

b) Digital Rights Management (DRM) systems



• A TPM is any technology, device or component that, inthe normal course of its operation, is designed toprevent or restrict acts, in respect of works, which arenot authorised by the rightholder of any copyright

• Types of TPM:

– Anti-copying measures

– Access control measures (e.g.):

• Encryption

• Password-protected access.

• Digital watermarks




• DRM is the set of TPM by you can prevent the use of digital content in ways that may affect its commercial value. Restrictions on such uses as downloading, printing, saving and emailing content are encoded directly in the products or the hardware needed to use them.

• Some jurisdictions (e.g. Colombia) have rules in effect to criminally repress the circumvention of DRM and TPM.

How do I protect? DRM



Advantages Disadvantages

Protect copyrighted works online Not infallible

Secure licenses in a fast and easy way In some cases, easily circumvented

Control the usage of the content

Collect information about usage

Reduces piracy

How do I protect? DRM & TPM



How do I monetize: Transmissibility

• Copyrights (economic rights) can be traded with.

• They can be assigned or licensed to others:

– Assignment Transfer of the right to another person whether natural or legal.

– License Authorise others to use the right in any manner or form. A license might be:

UNLIMITEDLIMITED (in time, in

scope, in territory)

NON EXCLUSIVE (multiple licensees)

EXCLUSIVE (only one

licensee)



How do I monetize: Types of licenses

• Bilateral or multilateral agreements

• Browse Wrap license

• Risks and advantages of open licenses (open source,

creative commons)

Always in written!



• Agreements between the IPR holder and another natural or legal person that grants the latter permission to use the right in a certain form.

• Must be always in written.• Some jurisdictions (e.g. Colombia) demand assignments and

licenses to be registered in order to have effects against others.

• The agreement must determine the term, the territory and the concrete rights licensed, as well as, where applicable, the specific uses allowed.

• Some countries (e.g. México) have special restrictions regarding the time for which rights can be licensed or assigned.

How do I monetize? Agreements



• Open Source Software (OSS) is a type of software that allows access to the programming code, facilitating modifications by people other than the author (e.g. Mozilla Firefox, Open Office). There are several types of OS license, for instance:

– GNU General Public License

– GNU Lesser General Public License

– Mozilla Public License

– Berkeley Software Distribution License

– MIT License

How do I monetize? Open licenses



• Creative Commons (CC) is a type of license that permits the authors to make available their works to the public under the conditions of their choice. Authors can combine 4 conditions that give rise to 6 types of license. Conditions of the license can be easily modified.

How do I monetize? Open licenses



• Browse-wrap licenses (BWL) are license agreements thatcovers access to a website or a downloadable work.

• BWLs are posted within a website usually using a hiperlinkthat leads to the terms and conditions of use.

• BWLs are different from clip-wrap agreements in that in thelatter consent to the terms and conditions must beexpressly given by clicking on a “I agree”-like (e.g. wheninstalling software). In BWLs, on the other hand, consent ispresumed if the user proceeds to the download or accessthe website.

How do I monetize? Browse-wrap licenses



Protection & Enforcement: Case studies

• The first thing that a creator has to do is to protect itsintangible assets.

– Any company wishing to participate in the market has todevelop a policy of management of IPR which wouldinclude: Timely registering any intangible assetssusceptible of being protected

– Managing the portfolio of IPR

– Strategically determine whether certain assets are morevaluable when publicly protected through an IPR or ifkept in secret (trade secret).



Protection & Enforcement: Enforcement

• The holder of an IPR can exclude other from using it.

• However, it is not uncommon that IPRs are infringed upon by others.

• In these cases, right-holders have to enforce their rights against those infringing them.

• There are several possibilities:

– Bilateral negotiations

– Commercial mediation

– Arbitration

– Judicial remedies: criminal and civil



IPR Enforcement in China

✓Civil : • Filing a complaint with the Civil Division of the People’s Court;• Preliminary or permanent injunctions (i.e. to preserve evidence or order the

destruction of goods), compensation of damages.✓Criminal:

• Filing a compliant with to the Public Security Bureau (PSB);• Imprisonment and monetary fines.

✓Administrative:• The National Copyright Administration of China (NCAC) and local copyright

administrative offices are competent for such actions• No compensation of damages is possible• Such authorities can order the stop of the infringement, the seizure of illegal income,

the seizure or destruction of the goods, fines.✓Customs:

• It is possible to file a complaint to the General Administration of Customs (GAC) inorder to seize suspected infringing goods.

• Moreover, it is possible to register copyright with GAC and obtain a notice in case ofsuspected shipments.



IPR Enforcement in Indonesia

✓ Civil:• Compensation for damages suffered; nevertheless, there are no rules for calculating

damages.• Permanent injunction to cease the infringement.• It is important to collect and prepare as much evidence as possible; evidences have to

be legalized.• Civil prosecution is more expensive than criminal raids and whatever it is the outcome

of proceedings, each party bears its own legal costs.

✓ Criminal:

• IPR infringements are «complaint based» crimes, so it is necessary to file a complaintto the Police.

• Raids are very expensive (approximately 3.000-19.000 €).• Imprisonment up to ten years and pecuniary sanctions up to approximately € 266.000.

✓ Other remedies:

• Private mediation is more effective than judicial proceedings.• Settlement agreements, which can include a compensation for damages, the

destruction of infringing goods



IPR Enforcement in Singapore✓ Civil:

• Compensation for damages suffered (or an account of profits) and statutory damages.• Injunction to cease the infringement.• Disposal of infringing goods.

✓ Criminal:

• Copyright Act provides for criminal penalties.• Prosecution can be initiated by the owner of the infringed IPR or on initiative of IPR Branch of the

Criminal Investigation Department.• Imprisonment and pecuniary sanctions.

✓ Customs:

• In Singapore there is no registration system with Customs.• However, in case of suspected infringement of a registered copyright, it is possible to file a written

complaint to the Customs in order to block suspected counterfeiting goods. In this case, it isnecessary to file a judicial proceeding claiming infringement of the prospected violated IP rightswithin 10 days.

✓ Other remedies:

• Warning cease and desist letters• Private mediation is more effective than judicial proceedings.• Settlement agreements, which can include a compensation for damages, the disposal of infringing

goods.07 March 2018 Copyright © 2018 South-East

Asia, Latin America & China IPR SME Helpdesk. All rights reserved.

IPR Enforcement in Malaysia

✓ Civil:• Compensation for damages suffered.• Injunction to cease the infringement.• civil cases must proceed to trial within nine months from the date of filing.

✓ Criminal:• The IP right owner can file a complaint to the Enforcement Division of the Ministry

of Domestic Trade, Cooperatives and Consumerism with the following documents:proves of their rights, an investigation report to show the infringing activity, and aletter of complaint.

• It is possible to obtain the seizure of products and raid actions against suspectedcounterfeiter

• Need to support the investigation before the authorities with evidential elementssuch as the identification of the assets seized and the presence of any witnesses



IPR Enforcement in Vietnam

✓ Civil enforcement:

• More suited in case of larger scale infringements

• It is necessary to file a complaint and the necessary documents to the court within two

years from the date of the discover of the violation.

• Provisional measures (preliminary injunctions) and claims for damages usually based on

the amount of lost sales or the infringer’s profits; if the amount of damages owed cannot

be determined, the maximum amount is VND 500,000,000 (approximately EUR 19,500).

✓ Administrative enforcement:

• Actions cost-effective and time-efficient

• This actions can involve different authorities depending on the nature of the violation;

• different penalties such as commercial revocations, fines, confiscation and destruction of

counterfeit goods



IPR Enforcement in Vietnam

✓ Criminal enforcement:

• Monetary fine of up VND 1,000,000,000 (EUR 39,322) and imprisonment for up to three

years

• For a corporate legal entity monetary fine of up VND 3,000,000,000 ( EUR 117,966) or its

operation may be suspended for six (6) to twenty-four (24) months

✓ Customs:

• Ban on the importation and exportation of goods that infringe copyrights

• Fines and confiscations of infringing goods



CASESTUDY: Chile (digital entrepreneurship)

CASESTUDY: Mexico (copyright management)



CASESTUDY: Brazil (merchandising)



CASESTUDY: Colombia (Smart cities)



Example five: Costa Rica (global services)



CASE STUDY: Copyright in China

• This case is about a company active in the production of ceramics characterized by peonyflowers (“Company A”); products of Company A were included in a book in 2005.

• Company A started the procedure for registering the copyright on the ceramics in the periodfrom 2010 to 2012.

• In the meantime, in late 2010, Company A signed a commercial contract with Company B.Company B filed a design patent application and a request for copyright registration for thesame ceramic products on its name.

• In 2013, Company A sued company B for copyright infringement since Company B wasproducing its ceramics without authorization. The respective copyrightregistration certificates were filed as evidence during the litigation proceedings. The date ofthe certificate of Company B was earlier than the date of Company A’s certificate.

• Nevertheless, according to the Court, the fact that the ceramics of Company A were includedin the book published in 2005 clearly showed that Company A created ceramicswith peony flowers before the registration of Company B’s copyright. Moreover, thecontract between the parties proved also that Company B knew that the ceramics wereproduced by Company A. The Court affirmed the copyright infringement by Company B andsentenced the latter to pay damages to Company A in the amount of 300,000 RMB.

Source: http://www.china-iprhelpdesk.eu/sites/china-hd/files/public/v8_How_to_Register_Copyright.pdf



http://www.china-iprhelpdesk.eu/sites/china-hd/files/public/v8_How_to_Register_Copyright.pdf

CASE STUDY: Copyright in Singapore

• This case deals with the illegal download of movies. In particular, two Hollywoodstudios, owners of rights on two movies, detected illegal downloads of their moviescarried out in Singapore.

• The two studios filed a complaint to the Singapore High Court in order to obligethe local ISPs to disclose the details of the internet subscribers who hadillegally downloaded the movies.

• However, in April 2017, the Court dismissed the claim on account ofinsufficient evidence to prove a connection between the IP addresses and thealleged infringers stating that since many people can use the same Internetconnection, an IP address alone is not sufficient to identify the alleged infringer.

Source: http://www.southeastasia-iprhelpdesk.eu/en/content/case-study-copyright-enforcement-actions-against-illegal-downloading-singapore



http://www.southeastasia-iprhelpdesk.eu/en/content/case-study-copyright-enforcement-actions-against-illegal-downloading-singapore

CASE STUDY: Copyright in Malaysia

• In this case, the parties were the authors of artistic works and the publisher of suchworks.

• In particular, according to the authors, the publisher had used their works in a bookwithout their consent.

• The publisher affirmed that the drawings at stake were not protected by copyrightaccording to Malaysian law since they were not original, did not entail a particularcreativity and similar drawings already existed.

• According to the Court, the artistic works were scanned by the publisher and thanpublished by mistake in the book. Therefore there was an infringement of theauthors’ copyright on the drawings.

• The Court awarded to the copyright owners the compensation of damages. Therewas no injunctive order since the publisher had already removed the pictures fromthe book.

Source: http://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/Copyright_english.pdf



http://www.southeastasia-iprhelpdesk.eu/sites/default/files/publications/Copyright_english.pdf

CASE STUDY : Copyright in Indonesia

• The parties of this case were an Indonesian company (active in the field of structuralengineering) and one of its former employees.

• The former employee registered the copyright of a database formula which wasdeveloped by the company’s staff (including the former employee). Moreover, suchdatabase had firstly been used by the company.

• The company sued the former employee and in 2012 the Commercial Court statedthat the owner of the copyright was the company, ordering also the cancellationof the copyright registration in the name of the former employee. Moreover, theCourt rejected the request of the former employee for copyright infringement.

• This case shows that during businesses relationships in Indonesia it is alwaysimportant to specify IPRs ownership. In particular, all businessrelationships contracts should contain a specific clause on the ownership of a workcreated by employees.

Source: http://www.southeastasia-iprhelpdesk.eu/en/node/385



http://www.southeastasia-iprhelpdesk.eu/en/node/385

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