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Erhvervsudvalget 2010-11 (1. samling)
KOM (2010) 0779 Bilag 1
Offentligt

The Danish Government’s response to the Commission’s Report on the application of

Directive 2004/48/EC on the enforcement of intellectual property rights

Introduction

As from 11 January 2011 to 31 March 2011 the Commission has launched a consultation on

the Commission’s report on the application of Directive 2004/48/EC of the European Parlia-

ment and the Council of 29 April 2004 on the enforcement of intellectual property rights,

COM(2010) 779 final, (Evaluation

Report)

including the related

Staff Working Document,

SEC(2010) 1589 final, and the

Issues Paper,

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dency questionnaire.

This response comprises feedback from the Danish Government on the Evaluation Report

including the Staff Working Document and the Issues Paper. As requested by the Commission

the structure of this response is aligned with the structure of the Issues Paper.

The Evaluation Report and The Staff Working Document have also been sent in consultation

with external parties. As recommended by the Commission such parties will provide their

answers directly to the Commission through the Commission’s consultation portal. Neverthe-

less, in this response from the Danish Government the Danish Government has also taken in

to consideration feedback from external parties.

1. Digital environment

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

current toolbox of Directive 2004/48/EC (Enforcement Directive) is not entirely suitable

to handle?

IPR infringements over the Internet pose a unique and specific set of challenges. The Danish

Government therefore supports the Commission’s endeavour to limit the increasing problem

of IPR infringements in the digital environment.

The internet challenges are comprehensively addressed in specific legislation i.e. the E-

Commerce Directive (2000/31/EC) and the Information Society Directive (2001/29/EC).

Consequently, this existing regulation should be taken in to consideration when amendments

to the Enforcement Directive are considered.

1.2. What kind of specific measures are in your view suitable to combat such infringe-

ments? Which measures should be taken at EU level?

The Danish Government supports the Commissions’ endeavours to limit IPR infringements in

the digital environment.

In doing so it is important to maintain a broad approach – focus should be given to enforce-

ment as well as availability of legal online services, new business models and legal opportuni-

ties to download and use copyright protected works in a way easily available for the consum-

ers.

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Measures that are effective, balanced and proportionate to combat IPR infringements on the

Internet should be developed and harmonized at EU level. Such measures should be imple-

mented in the most suitable way to address these kinds of infringements. The Danish Gov-

ernment urges the Commission to analyse, evaluate and recommend best practice measures,

procedures and remedies related specifically to IPR infringements on the internet.

The digital environment has become a major forum for distribution of creative content. This

development has resulted in new opportunities for innovation and use of creative content as

well as challenges related to IPR-infringements such as illicit file-sharing and other use and

distribution of IPR-protected material without the consent of the right holder.

The European Commission has made the creation of a digital single market one of the highest

priorities in Europe’s 2020 flagship initiative the Digital Agenda. The Danish Government

has expressed its support to the promotion of legitimate cross-border online services within

the European Union in its contribution to the European Commissions hearing on Creative

Content in a European Digital Single

Market.

1.3. Is there a need to lay down rules regarding the

liability of online service providers

(and

limitations

thereto) in the Enforcement Directive beyond those already existing in

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

de-

fine the term

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

Online service providers play an important role when it comes to distribution in the digital

environment.

The Commission should take in to consideration, that limitations to the liability of online ser-

vice providers are regulated in the E-Commerce Directive (2000/31/EC) when the role of in-

termediaries is considered in connection with the revision of the Enforcement Directive.

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

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

order

online service providers,

regardless of their liability, to

disclose information

relat-

ing to

individual subscribers

who have allegedly committed IP infringement? If yes, what

should be the

preconditions

and

limits

for such orders (e.g. infringement has to be on a

commercial scale, only judicial authorities may order such measures, infringement pro-

ceedings have to be in progress, only certain types of data may be provided, limitations

for safeguarding rights to privacy and protection of confidential data)? What should be

the

sanction

for non-compliance with such orders? Should these measures be limited to

IP infringements? (See also question 5.3.)

The European Data Retention (2006/24/EC) and Data Protection Directives (95/46/EC and

2002/58/EC as amended by 2009/136/EC) are quite specific in their balancing of principles

and exceptions related to data retention for specific purposes and the protection (use and

deletion) of data. Any considerations regarding retention of data for the purpose of disclosing

information related to IPR infringements should respect these fundamental principles while

also securing the proportionality of any new obligations related to data retention placed on

intermediaries on the internet.

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

need to amend the existing legal framework relating to

the liability or legal obligations of

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online service providers

(including search engines and online market places) whose ser-

vices are directly used in infringing activities (not necessarily on a commercial scale)? If

yes, which legal instrument should be amended (the Directive on electronic commerce,

the Enforcement Directive or the Trade Mark Directive)?

The existing regulation of online service providers’ liability in the E-Commerce Directive

(2001/31/EC) should be taken in to consideration when the role of intermediaries is consid-

ered in connection with the revision of the Enforcement Directive.

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

ity of taking measures against

websites facilitating such infringements

or against

advertis-

ers

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

P2P file sharing? Do you see a need for such measures to be included in the Enforcement

Directive?

The Danish copyright act does not contain specific legal measures against P2P file sharing,

since this is covered by the general copyright rules regulating the scope of the copyright pro-

tection, which states that copyright implies the exclusive right to control the work by repro-

ducing it and by making it available to the public.

The rules of the Danish Administration of Justice Act regarding temporary injunctions can be

used by the courts to order an ISP to block subscriber-access to websites facilitating online

2010.

2. Scope of the Directive

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

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

The Danish Government believes that it is not necessary to apply the measures provided for in

the Directive also to rights that are currently not covered by the Directive.

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

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

see them as being linked to IPR or do you consider them more an issue of unfair compe-

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

Protection of trade secrets and domain names and protection against parasitic copies (look-

alike marketing) is not seen as being linked with IPR unless one or more of the intellectual

property rights as defined in the “Statement by the Commission concerning Article 2 of Di-

rective 2004/48/EC of the European Parliament and the Council on the enforcement of intel-

lectual property rights (2005/295/EC)” (Statement) are infringed in connection with the in-

fringement of trade secrets, domain names and marketing rules.

2.3. Is there a need to provide

a list of intellectual property rights

in the Enforcement Di-

rective? If yes, what should be the relation of this list to the scope of the Directive (ex-

haustive list, indicative list, minimum list)? Should such a list be included in the Articles

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

in such a list?

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A non-exhaustive list of intellectual property rights in line with the above mentioned State-

ment could be developed.

3. Evidence

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

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

difficulties in this respect?

(a) According to the Danish Administration of Justice Act an order of disclosure etc. cannot

be issued if it will produce information about matters about which the individual would be

excluded or exempted from testifying as a witness pursuant to Sections 169-172, see Section

298, Section 299, Section 306, Subsection 4, and Section 653, Subsection 5.

According to Sections 169-170, public servants, ministers of religion, defence counsels etc.

are as a general rule excluded from testifying about matters to which they are bound to ob-

serve professional secrecy.

According to Section 171, the nearest relatives of a party are as a general rule exempted from

testifying. Also according to Section 171 a witness is always exempted from testifying if the

testify presumably exposes the witness to penalty etc. According to Section 172 editors etc.

are as a general rule exempted from testifying about source references etc.

Finally, according to Section 653, Subsection 4, the court entirely or partly rejects a request

for a search if the search in consideration of the sanctity of private life, business secrets, or

other reasons presumably will harm or cause inconvenience to the alleged infringer in a way

that is disproportionate to the interests of the claimant.

Furthermore, the Danish Act on Processing of Personal Data shall apply to processing of per-

sonal data in connection with orders of information according to the Danish Administration of

Justice Act Section 306 (which corresponds with Article 8 of the Directive). The person who

is ordered to provide information according to Section 306 may process personal data, since

the processing is necessary for compliance with a legal obligation to which the controller is

subject.

(b) The Danish Government has no information of difficulties encountered in this respect.

3.2. What are the conditions, under your law, to

obtain banking, financial or commercial

documents?

The limits mentioned in section 3.1 above also apply to the obtaining of banking, financial

and commercial documents. Obtaining these documents is not limited to cases of commercial

scale.

3.3. Is there a need to ensure that

personal computers

can be searched/seized in order to establish evidence for an IPR

infringement committed via the Internet?

b) screenshots

are accepted by courts as evidence for infringements committed via the

Internet?

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Even now the evidence gathering mentioned can be carried out according to the Danish Ad-

ministration of Justice Act. Therefore, according to Danish law there is no need to ensure the

evidence gathering.

3.4. Is there a need to clarify the term “under

the control”

relating to evidence in Article

6 of the Enforcement Directive?

According to the Danish Administration of Justice Act the court can order a party to present

documents that are under the control of the opposing party, see Section 298. The party shall

state the facts that the requested documents shall establish, and state the reasons supporting

that the documents are under the control of the opposing party, see Section 300.

4. Intermediaries

4.1. Is there a need to introduce a

common definition of intermediaries

in the Enforce-

ment Directive?

According to Danish law injunctions against intermediaries have to be requested under the

general rules, see section 4.2 below. Therefore, there is no need to introduce a common defi-

nition of intermediaries.

4.2. Does your law contain

specific provisions on injunctions against intermediaries,

or do

such injunctions have to be requested under the general rules? If there are specific pro-

visions, what are these and are they used often?

Danish law does not contain specific provisions on injunctions against intermediaries. As

mentioned at page 15 in the Staff Working Document injunctions against intermediaries have

been used according to those general rules.

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

junctions are available against intermediaries but also

interlocutory injunctions?

Should

other provisional or precautionary measures be available against intermediaries (see

also question 5.1.)?

See section 4.1 and 4.2 above.

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

when they cannot be held liable for the infringing acts, is there a need to

clarify the

standing

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

deemed an “unsuccessful

party”

when an injunction is issued against it without establish-

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

See section 4.1 and 4.2 above.

The predictability of the intermediaries and market players’ rights and standing is important.

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

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

what ways would you deem appropriate?

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Online service providers play an important role when it comes to distribution in the digital

environment.

The Commission should take in to consideration that the liability of online service providers

is regulated in the E-Commerce Directive (2000/31/EC) when the role of intermediaries is

considered in connection with the revision of the Enforcement Directive.

Involvement of intermediaries (e.g. transport service providers, Internet platforms, ISPs) to a

greater extent in the prevention or termination of IP infringements should be reasonable and

balanced in relation to their possibilities’ of carrying out their businesses.

5. Right of information

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

of information) together with rules on

data protection

right to privacy

in your country?

The Danish Government has no information about difficulties regarding this subject.

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

issues? Is there a need to amend the Enforcement Directive (or other EU legal instru-

ments) in order to accommodate such conflicts?

As described under section 3.1, the Danish Act on Processing of Personal Data shall apply to

processing of personal data in connection with orders of information according to the Danish

Administration of Justice Act Section 306 (which corresponds with Article 8 of the Di-

rective). The person who is ordered to provide information according to Section 306 may pro-

cess personal data, since the processing is necessary for compliance with a legal obligation to

which the controller is subject.

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

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

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

judicial authorities, i.e. that

providing information

may also be ordered as a

provisional

measure?

Is the usefulness of this interpretation in strengthening the IP enforcement

framework enough to outweigh that providing information is by definition “irreversi-

ble” and that in certain cases the addressees of such orders are third parties (intermedi-

aries) not being party to the litigation?

According to the Danish Administration of Justice Act Section 306, Subsection 1, the right of

information may be invoked in the context of proceedings as foreseen by the directive.

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

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

same time this information might need to be provided when requested by the public au-

thorities. How do online service providers in your country respond to such requests

from the public authorities when they are no longer in the possession of the information

needed?

The right holders in Denmark have not reported this as being an issue of concern.

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5.5. Can information that in your country would normally be subject to the banking se-

crecy, be requested by using the right of information?

See section 3.1 and 3.2 above.

6. Commercial scale

6.1. Have you defined "commercial

scale"

in your country – either in law or by juris-

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

No, see page 5 in the Staff Working Document.

6.2. Is the definition of “commercial

scale”

still appropriate in Recital 14 of the En-

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

moved to the Articles of the Directive? Should the link between the commercial scale

requirement and the right of information remain intact?

See section 6.1.

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

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

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

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

bank accounts as a precautionary measure [Article 9(2)]. For which of the above men-

tioned three situations do you consider the

commercial scale criterion as necessary or

useful?

What risks do you see if this criterion were to be abolished?

See section 6.1.

6.4. If you have made the right of information subject to the commercial scale require-

ment, how do you deal with the problem that sometimes the

rightholder needs additional

information

from an intermediary in order to be able to determine whether the in-

fringement has been committed at a commercial scale?

See section 6.1.

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

concerned,

has its absence lead to abuses,

in certain areas, by right holders? If yes, which

areas are affected?

The Danish Government has no information about abuse.

7. Damages

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

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

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

help this deficiency if recovery of unjust enrichment was to be ordered as an objective

sanction (i.e. not depending on the culpability of the infringer), or should unjust enrich-

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ment of the infringer and other economical consequences play a greater role in calculat-

ing damages?

Case law is still rather limited. In existing Danish judgments damages are often awarded at

the courts’ discretion without being very explicit or detailed on how awarded damages have

been motivated and calculated.

It is important to continue to be entitled to take unjust enrichment of the infringer and other

economical consequences in to consideration when calculating damages. However, recovery

of unjust enrichment should not be ordered as an objective sanction.

Finally, according to information given by the Danish right holders, they often prefer to settle

disputes out of court as the damages awarded are rarely deemed proportionate to the costs of a

trial.

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

lost profits (i.e. royalties or license fees that would have been due in a contractual rela-

tionship)?

See 7.1.

7.3. What is the legal situation under your law relating to the

liability of legal persons

(and the managers thereof for the acts carried out by the legal person)? Is there any

IP-

specific problem

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

In limited liability companies the management is only liable if it has violated the principle of

fault.

The Danish Government can not support any idea as regarding to extending the liability rule

for the management when it comes to IP-specific matters.

8. Corrective measure

8.1. In your judicial practice, what is the

difference between “recall” and “definitive re-

moval”

from the channels of commerce? Is the fact that the infringer is

no longer in pos-

session

of the infringing goods a factor in deciding which measure to apply?

When products by judgment are “recalled” in Denmark the possibility of using the infringing

products at a later stage still exist. This could be the situation, if the infringing products are

recalled until the parties for example have negotiated a solution subject to contract, e.g. a li-

cense agreement. Further, if a patent for example is just about to expire the products could be

recalled until the patent expires.

“Definitive removal”

is a permanent solution in contrary to recall of products. Definitive re-

moval is used if it is not possible only to recall products from the trade.

8.2. Is there a need to clarify in the Directive

the relationship between corrective and pro-

visional measures?

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If the difference between recall and definitive removal is not interpreted uniformly in all

member states, it could be reasonable to clarify the difference in the Directive as it is ex-

plained above.

On page 19 in the Staff Working Document the Commission states that among other countries

Denmark uses the discussed recall instrument as a preliminary measure before proceedings.

The Danish Government would like to rectify that the discussed recall instrument is only used

by judgment after proceedings in Denmark. However, in connection with the use of the inter-

locutory injunction instrument, products can be recalled if the recall can be characterized as a

subsidiary (“accessorisk” in Danish) obligation to act compared to the omission obligation

(“undladelsespligt” in Danish) that is the main purpose of the interlocutory instrument.

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

costs of the de-

struction

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

justified to impose the costs for the destruction of counterfeit goods on the State where

the destruction is in the public interest (in particular because these goods pose a risk to

consumers' health and safety)?

The Danish Government has no comments.

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

impose the costs of destruction of the infringing goods

directly

on the infringer once the

infringement is established?

The Danish Government has no comments.

8.5. Do you see a need to harmonise aspects of

secondary use

(e.g. for charity purposes)

of infringing goods in the Enforcement Directive?

In relation to trademark infringements any harmonisation of secondary use should ensure that

secondary use of goods can not in any way be linked to the infringed trademark.

9. Other issues

The Danish Government has no comments.

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