Copyright Enforcement

Table of Contents

Enforcement of Copyright

There are a number of mechanisms for the enforcement of copyright. There are both civil actions for infringement and criminal sanctions. An owner of copyright and an exclusive licensee may take infringement proceedings.

The right may be exercised by the holder of the copyright. This may be the original copyright holder or an assignee.

Certain rights may be exercised by a person who is an exclusive licence holder. In some cases but the exclusive licensee and the owner may take action. They may both require to be joined as parties to the action. Where there is an entitlement to an award of damages or an account of profits, there may be an apportionment between the copyright holder and the exclusive licensee.

In an action for infringement of the copyright in a work, all relief by way of damages, injunction, an account of profits or otherwise is available to the plaintiff as it is available in respect of the infringement of any other property right.

Damages by way of compensation or on account of profit may be sought. An injunction may be sought to restrain the infringement. Infringing material may be required to be delivered up and destroyed.

Proof issues

Where in an action for infringement of the copyright in a work, the defendant does not admit that the plaintiff is the owner of the copyright, the court may direct that evidence in relation to the ownership of the copyright be given on affidavit and the court may decide the issue having considered any affidavit presented to it unless it is satisfied that any conflict of evidence between the affidavits may not be resolved other than by hearing oral testimony in which case the court may order that oral evidence may be adduced. Hearsay evidence may be accepted for this purpose.

Copyright is presumed to subsist in works until the contrary is shown. In a claim, the plaintiff’s entitlement to the copyright is presumed unless it is positively challenged. The claimant is presumed copyright owner unless otherwise proved.

Delivery Up

The copyright owner may apply to court for an order directing certain types of infringing materials to be delivered up, as the court directs. The District Court may order the seizure of infringing copies that are being sold or are held as stock.

The copyright owner may apply to seize infringing copies, plates and other devices where they are being sold in public. 30 days’ notice of the seizure must be given to the Gardai and force may not be used. If there is a dispute regarding the seized materials, the matter may be referred to the District Court.

Pre-trial search

There is a general civil right in legal proceedings to apply for a pre-trial order, where the defendant might destroy evidence of infringement in advance of a hearing. A so-called Norwich Pharmacal order may be granted by the court, which allows nominated persons to enter premises and seize evidence of infringing materials. It is in effect, a pre-trial order for discovery.

A Norwich Pharmacal order may be made against third parties who are not involved in the infringement. The courts will not readily grant such orders, but they will do so where there is a legitimate reason and the interests of the copyright owner justify it.

The order will be more readily granted against the alleged infringer than against an innocent third party. The courts balance the rights of private parties and IP rights holders. The orders may be narrowly tailored to balance the rights.

A person who is aware of the importation of infringing material may give notice to the Revenue Commissioners. He may require Revenue Commissioners to treat the goods as prohibited and seize infringing copies under Customs laws.

Damages

The court may, in an action for infringement of copyright, award such damages as, having regard to all the circumstances of the case, it considers just. Without prejudice to any other remedy, where, in an action for infringement of the copyright in a work, it is shown that at the time of the infringement, the defendant did not know and had no reason to believe that copyright subsisted in the work to which the action relates, the plaintiff is not entitled to damages against the defendant. In exercising its powers in addition to or as an alternative to compensating the plaintiff for financial loss, the court may award aggravated or exemplary damages or both aggravated and exemplary damages.

Where damages are sought for infringement, the amount is generally the loss to the claimant. The defendant’s materials may be cheaper, so the loss may exceed the defendant’s profit. The claimant may be able to give proof of loss in terms of lost sales and lost sales volume. The claimant may be able to show a loss of reputation and wider damage beyond quantifiable loss of profit. Exceptionally, a court may grant punitive or exemplary damages where the defendant has unfairly profited from his wrongdoing.

The court may measure damages with reference to the level of a hypothetical license fee that would have been payable had it been sought. This may not be appropriate if a license would not be available if sought. Even if financial loss is difficult to prove, the courts will be inclined to grant some compensation to reflect the breach of rights. Where the breach is flagrant, aggravated damages may be awarded.

The courts may award damages for conversion, if it considers just to do so. Conversion, in this context, arises from the principle that the claimant’s property rights are reflected in the infringing article. Conversion damages are based on the value of the items concerned. In this case, the measure is independent of the loss of profits and is independent of whether the infringing items adversely affect the claimant’s reputation.

Where the defendant was unaware of and had no reasonable grounds for believing that copyright existed, the person concerned will not be liable for damages. He may still be liable for an account of profits and be subject to other remedies arising from the infringement. A mistake as to the existence or ownership of copyright is not a defence. Therefore, if a person who is not entitled to copyright gives consent which is taken as sufficient in good faith, there will nonetheless be infringement.

Account of profits

An account of profits is a claim similar to conversion. It is based on profits wrongfully obtained by a person by misusing another’s property.

It may even be available against an innocent infringer who has profited. An account of profits requires that the infringer yield up the profits which he has made by reason of the infringement.

Injunction

A court may grant an injunction to restrain a breach of copyright. A pre-trial injunction may be available where damages would not be an adequate remedy in the ultimate hearing. An applicant for a pre-trial injunction may take place at short notice and, in the first instance, without notice at all, where necessary. See the section on interlocutory injunctions.

The effect of a pre-trial injunction may be to foreclose the issue. The full hearing may not occur because the parties do not prosecute the proceedings.

It’s possible to apply for an injunction on the basis that a future breach of a legal right is apprehended. This principle applies in the realm of copyright and may be available in exceptional circumstances where damages or monthly compensation would not be adequate.

After a full hearing of a case, a final or perpetual injunction may be granted, declaring rights and restraining the defendant from future infringement. Breach would constitute contempt of court in the usual way.

Orders v ISPs

The courts have made orders based on traditional property law principles to enforce breaches of copyright undertaken through the Internet. They have granted orders against Internet service providers to reveal the name of persons infringing certain copyright. Agreements have been entered between Internet service providers and major copyright holders, such as those in the record industry, in relation to measures to detect breaches of copyright.

Court orders have been granted requiring Internet service providers to block and restrict websites engaged in large-scale infringement.

The owner of a copyright may apply for an injunction against Internet intermediaries service provider. The court, in considering an application for an injunction, is to balance the rights of persons affected and those of the holder of the intellectual property rights.

Delivery up

Where a person n the course of a business, trade or profession, has in his or her possession, custody or control an infringing copy of a work, has in his or her possession, custody or control an article specifically designed or adapted for making copies of a copyrighted work, knowing or having reason to believe that it has been or is to be used to make infringing copies, or has in his or her possession, custody or control a protection-defeating device, the owner of the copyright in the work may apply to the appropriate court for an order that the infringing copy, article or device be delivered up to him or her or to such other person as the court may direct.

A person to whom an infringing copy, article or device is delivered up p shall, where an order under as to the disposal of the infringing copy, article or device is not made, retain it pending the making of an order, or the decision not to make an order.

An application may be made to the appropriate court for an order that an infringing copy, article or device delivered up or seized and detained shall be— forfeited to the copyright owner or ) destroyed or otherwise dealt with as the court may direct. The court may make such an order or such other order as it thinks fit. In considering what order, if any, should be made, the court shall consider whether other remedies available in an action for infringement of the copyright in a work would be adequate to compensate the copyright owner and to protect his or her interests.

District Court order of seizure

Where the owner of the copyright in a work applies to the District Court, it may, where satisfied that there are reasonable grounds for believing that there are being hawked, carried about or marketed—

infringing copies of the work,
articles specifically designed or adapted for making copies of a work, knowing or having reason to believe that it has been or is to be used for making infringing copies of a work, or
protection-defeating devices, authorise by order a member of the Garda Síochána to seize without warrant the copies, articles or devices and to bring them before the District Court.

On being satisfied that any copy, article or device is an infringing copy, specifically designed or adapted for making copies of a work, which the person hawking, carrying about or marketing those articles knows or has reason to believe that they have been or are to be used to make infringing copies of a work, or a protection-defeating device, the District Court may order the copy, article or device to be destroyed or to be delivered up to the owner of the copyright or otherwise dealt with as the Court may think fit.

Where it would be impracticable for the owner of the copyright in a work to apply to the District Court for an order, a copy, article or device referred to in respect of which the copyright owner would be entitled to apply for an order for delivery up, may be seized and detained by the copyright owner or a designated representative thereof where the copy, article or device is found being hawked, carried about or marketed.

Thus right to seize and detain) is exercisable, is subject to any decision of the court relating to the disposal of infringing copies, articles or devices. Other conditions apply. A person who seizes any infringing copies, articles or devices under this section shall apply to the District Court for an order to dispose of those copies, articles or devices within 30 days of the seizure.

DC Process

Before any infringing copies, articles or devices are seized, notice of the time and place of the proposed seizure shall be given to a member of the Garda Síochána in the District Court Area in which the copies, articles or devices are to be seized. A person exercising the right to seize and detain) may enter premises to which members of the public have access.

A person exercising the right to seize and detain) may not seize anything in the possession, custody or control of a person at his or her permanent or regular place of business, trade or profession, and may not use any force.

A person exercising the right to seize and detain may make an inventory or prepare other evidence of infringement of copyright or potential infringement of copyright.) At the time when any infringing copies, articles or devices are seized there shall be given to the owner, occupier or person in charge of the place where the copies, articles or devices have seised a notice, in the prescribed form, informing the person of the right of the owner of the copies, articles or devices being seized to apply to the District Court for the return of the copies, articles or devices on the grounds that they are not—

infringing copies of a work,
articles that have been or are to be used to make infringing copies, or
protection-defeating devices.

Procdure

The owner of any copies, articles or devices seized under this section may apply to the District Court for the return of those copies, articles or devices. Where there has been an exercise of the right to seize and detain, the court may, on the application of a person aggrieved by it, award damages against a person who exercises that right as it considers just, on being satisfied that) no infringement of copyright has been established, and (the person had no reasonable grounds for such seizure. Rights of owner of copyright in respect of infringing copy.

A person who, for financial gain, makes a claim to enjoy search and seizure rights which is, and which he or she knows or has reason to believe is, false, shall be guilty of an offence and shall be liable on conviction on indictment to a fine, not exceeding€130,000, or to imprisonment for a term not exceeding 5 years, or both.

If the court finds that has been an infringement of intellectual property rights involving goods, the rights of the owner may apply to the court for an order requiring the defendant to take appropriate measures at its expense in relation to the goods and any material used in the creation of manufacture including further destruction recall and removal of channels of commerce.

Criminal Issues

It is an offence criminal offence to undertake any of the following without the consent of the copyright owner

making infringing copies available for sale, rent or loan;
offering, exposing, selling or importing infringing copies into the State in the course of business;
having infringing copies in one’s possession or control or making available then to the public;
making infringing copies available to the public otherwise than in the course of business, thereby prejudicing the interests of copyright holders

It is a criminal offence to possess, sell, rent or import articles designed to facilitate copying or protection defeating devices knowing or having reason to believe it has been used is to be used in making infringing copies. It is an offence for a person to cause a work to be performed a broadcast that includes a cable programme in the case of public performance playing or broadcasting works is guilty of an offence.

In criminal proceedings, the court may order delivery of infringing copies or detection-avoiding devices. Search warrants may issue for seizures of suspected infringing copies and other material suspected to be linked to a breach of copyright.