Copyright Committee Update: A Cross-Jurisdictional Look at Criminal Copyright Enforcement

Published: March 1, 2020

Nicholas Huskins, Inc. Seattle, Washington, USA

Lorne Lipkus Kestenberg Siegal Lipkus LLP, Toronto, Ontario, Canada

The Copyright Committee’s Copyright Enforcement Subcommittee recently completed a 20-country criminal copyright enforcement survey. The report, titled Criminal Enforcement of Copyrights: An Anthology for IP Practitioners, details each jurisdiction’s criminal copyright enforcement scheme across a wide range of related topics, connecting common themes and highlighting distinct characteristics. Brand professionals with a global practice can draw on this report when assessing worldwide enforcement options.

Status and Results

The 20 countries surveyed in the report were selected to serve as a representative cross-section of jurisdictions with varied approaches to criminal copyright enforcement. The survey explored 13 topics and looked at 6 jurisdictions in the Americas (Brazil, Canada, Columbia, the Dominican Republic, Peru, and the United States), four jurisdictions in the Asia-Pacific (Australia; Hong Kong SAR, China; India; and New Zealand), and ten jurisdictions in Europe, the Middle East, and Africa (EMEA)-(France, Germany, Luxembourg, Pakistan, Poland, South Africa, Spain, Switzerland, Ukraine, and the United Kingdom).

The topics provide insight on three broader aspects of each jurisdiction’s enforcement approach:

  1. Maximum, minimum, and typical prison sentences and monetary penalties;
  2. Key characteristics of the local copyright statute (for example, statute of limitations, registration requirement, extradition, jurisdiction over foreign infringers, and asset confiscation/forfeiture); and
  3. The establishment of specialized law enforcement bodies or courts for intellectual property crimes.

Notable Observations

While copyright enforcement procedures differ from one jurisdiction to the next, there are also consistencies across most territories.

For example, while every country surveyed allows for criminal enforcement in theory (including Internet-based and/or digital copyright violations, such as piracy), in practice, prosecution is rare. Prison sentences resulting from a criminal copyright conviction are even more rare (and usually can be avoided with community service or compliance with a court order), but in such cases, sentences generally range from six months to two years.

On the other hand, monetary penalties are much more common, though there is significant variance across each territory’s statutory framework in determining the appropriate fine. Similarly, most countries permit extradition of criminal infringers, allow for confiscation/forfeiture of assets after conviction, and consider criminal copyright crimes a predicate offense to money laundering and racketeering.

The report also identifies those aspects of enforcement in which certain territories substantively and significantly depart from common practice. One notable callout is the U.S. registration requirement. Indeed, the United States is the only territory where copyright registration is a prerequisite to criminal prosecution.

Practitioners evaluating enforcement remedies should take note of another procedural outlier: the fact that Canada, France, India, Pakistan, and Switzerland do not exercise long-arm jurisdiction (the ability of local courts to exercise jurisdiction over foreign defendants) over foreign infringers, even when the infringement causes harm in their jurisdiction.

Key Takeaways

As mentioned, one consistency among the surveyed territories is the scarcity of criminal copyright prosecution. Given the necessary role of governments in (1) criminal prosecution, (2) cases involving high-impact offenders, (3) organized criminal groups, and (4) public health and safety, threats are most likely to garner the interest of local law enforcement. From a copyright perspective, such offenders may include counterfeiters, pirate site operators, and infringers involved with other nefarious activities, including bribery, money laundering, and black market dealing.

Likewise, criminal copyright enforcement is most often used for large-scale offenders with industry-wide impact, particularly those that operate outside the reach of civil enforcement, or that require investigative resources beyond the scope of a single firm or company. Indeed, criminal copyright enforcement cases almost always involve industry participation and partnership with law enforcement.

Even with a narrow focus and limited application, criminal enforcement can be an effective enforcement alternative for practitioners, particularly from a deterrent standpoint. Large-scale infringers are likely to take the threat of criminal prosecution more seriously than the threat of civil litigation, and successful criminal enforcement actions often have a downstream deterrent impact among similarly situated, smaller-scale infringers.

The key takeaways from the report are not necessarily the deviations among each jurisdiction’s criminal copyright enforcement policies, but rather the varied approaches that identify appropriate circumstances to pursue criminal prosecution for copyright crimes.

Concluding Remarks

Criminal Enforcement of Copyrights: An Anthology for IP Practitioners offers high-level guidance on relevant points of interest related to criminal copyright enforcement that should help law firm practitioners better advise their clients and help in-house counsel to benchmark their company’s copyright enforcement strategy across various territories.

The Copyright Enforcement Subcommittee will periodically review and update the report, and supplement the report with information from additional jurisdictions, with the goal of creating a comprehensive resource guide for criminal copyright enforcement worldwide.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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