Wider Developments in IP Protection and Enforcement

Posted on 26 January 2021

European Commission's Action Plan for IP

In November 2020, the European Commission adopted its Action Plan on IP, highlighting the proposed introduction of measures in five areas:

  • Improve IP protection – improving the rules relating to Supplementary Protection Certificates, modernising EU design protection, and strengthening the protection of agricultural geographical indications. As part of this strand, the Commission has also launched an industry dialogue to assess the impact of new technologies such as AI and blockchain on the IP system. The Action Plan also calls upon Member States for a rapid rollout of the Unitary Patent system.
  • Boost the uptake of IP by SMEs.
  • Facilitate the sharing of IP – e.g., of critical IP in times of crisis whilst ensuring return on investment, an improved copyright infrastructure, and proposals to improve transparency and predictability in relation to licensing of standard essential patents.
  • Fight counterfeiting and improve enforcement of IP rights – with imports of counterfeit and pirated goods amounting to 6.8% of EU GDP, and alongside the Digital Services Act package (see further below), the Commission will establish an EU anti-counterfeiting toolbox.
  • Promote a global legal playing field, with the EU as a global standard-setter in IP.

Read more by Anne Rose, co-lead of our Blockchain Group, who wrote on the role of blockchain in the registration and protection of IP rights in the WIPO Magazine.

EU Digital Services Act: Changes to regulation of online intermediary services

In December 2020, the European Commission published a package of measures relating to regulation of internet intermediaries – the Digital Services Act (DSA) – aimed at ensuring a 'safe and accountable online environment' through improved mechanisms for the removal of illegal content, and also effective protection for users' fundamental rights online, such as freedom of expression. The proposed DSA was published at the same time as the Commission's draft Digital Markets Act (DMA) which imposes specific obligations on online 'gatekeepers' to avoid certain unfair practices. These include prohibition against discrimination in favour of their own services, interoperability obligations, and data sharing obligations.

Taking the form of an EU Regulation, the DSA will apply directly across the EU once it is in effect. However, it will not, of course, apply in the UK, though its extra-territoriality provisions do mean that UK-based providers may be in its scope. It will be particularly interesting to track developments relating to the DSA alongside the UK's own recently proposed Online Harms Bill (discussed here).

The DSA updates and incorporates aspects of the EU E-Commerce Directive relating to exemption for liability for online intermediaries. Whilst described by the Commission as a 'cornerstone' of Internet regulation, the E-Commerce Directive is now 20 years old, and so much has changed since it was first adopted, with divergence in implementation across the EU. In relation to the post-Brexit scenario, the UK Government has said it is committed to upholding the liability protections and will maintain the notice and takedown regime.  It also refers to its new Online Safety regulatory framework, but raises questions as to the outlook for the prohibition in the E-Commerce Directive against imposing general monitoring obligations.

Amongst the new obligations imposed on online intermediaries in scope of the DSA are obligations on online platforms in relation to illegal content, and greater due diligence of those that offer products or services to consumers on their platforms. In particular, the DSA introduces a 'trusted flagger' mechanism which will ensure that notices submitted by such entities in relation to illegal content are treated with priority and without delay. Trusted flaggers will be approved entities with particular expertise in detecting illegal content and which represent collective interests, so should be useful for IP right-holders.

The DSA proposal will now make its way through the EU legislative process, by reference to the ordinary legislative procedure, where the European Parliament passes laws jointly with the EU Council.

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WIPO PROOF: WIPO Launches Tamper Proof Evidence Service

In 2020, the World Intellectual Property Organization launched an online global service, WIPO PROOF, which provides tamper-proof evidence that a digital file existed at a specific point in time and that it has not been altered since that specific time.

This could be transformative in enabling creators to protect their digital content, particularly where they cannot rely upon registered intellectual property rights. The ability to provide a timestamp of when a work was created may be particularly helpful when relying on copyright, as it could potentially be used as evidence in legal disputes in some jurisdictions. It will also be helpful for data driven companies who wish to use the tool to manage data for training AI models, for example.

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Right to information under the IP Enforcement Directive

In Constantin Film Verleih GmbH v YouTube C-264/19, the German Federal Court of Justice referred questions to the CJEU relating to the scope of a claimant's right to information under Article 8(2) of the Enforcement Directive, including whether it covers email addresses and telephone numbers of service users and IP addresses used to upload copyright-infringing files.

The CJEU ruled that 'addresses' in Article 8(2) does not cover an allegedly infringing user's email address, telephone number and IP address. As the Enforcement Directive does not define 'addresses', the CJEU gave it its everyday meaning, i.e., postal addresses. Member States do however have the power to allow the courts to order disclosure of email addresses, telephone numbers and IP addresses provided a fair balance is struck between the fundamental rights involved.

The CJEU's literal interpretation appears restrictive in the light of modern day communications methods. There are, of course, other routes available to obtain relevant information in such scenarios including, in the UK, Norwich Pharmacal jurisdiction.

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