Copyright Enforcement by Administrative Measure under Decree 131/2013/ND-CP: Practice Assessment and Proposals for Revisions

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Sanctioning administrative violations in the field of authors’ rights (copyright) and neighbouring rights (related rights) is the IP rights enforcement by administrative measures. Bross & Partners would like to share below the speech of attorney Le Quang Vinh, who was invited by the Vietnam Copyright Office (COV) to present at the Conference on summarizing and evaluating Decree 131/2013/ND-CP (Decree 131) held in Hanoi in the morning of April 7, 2023.

Assessments of Implementation Practice of Decree 131

Enforcement of intellectual property rights is one of the contents of state management of intellectual property that the National Assembly assigns to the Government and relevant ministries to organize and implement, including activities of inspection, surveillance of obedience of the legislation on intellectual property and handling violations of the intellectual property law. Accordingly, handling of organizations and individuals that violate IP rights including copyright is the task of state management of the Ministry of Culture, Sports and Tourism (“MCST”).

From the perspective of protecting IP rights (also a type of civil right), the right holder also has the right to request a competent authority to handle copyright infringements by administrative measures. That means an IP right infringer may be administratively sanctioned. Therefore, enforcement of copyright and neighboring rights by administrative means has a dual significance, namely, it both performs the function of state management of copyright and related rights and ensures the enforcement of rights and legitimate interests of right holders conferred by law throught applying administrative sanctions. Administrative measures applied in enforcing copyright and related rights are understood as a legal measure in the administrative legal system of Vietnam in which provides for administrative violations, sanctioning forms, remedy measures, and competence imposing penalties for administrative violations.

According to the MCST’s report 758/BC-BKHCN dated March 23, 2023 (“Report 758”) sent to the Government related to the program of joint action to prevent IP infringement, in 2022 the MCST’s Inspector set up 2 inspection teams for inspecting 23 karaoke business establishments for copyright of musical works; 03 inspection teams for inspecting legal compliance at the art exhibitions; inspecting the observance of legal regulations on cinematographic activities (Star Cinema); and currently processing 10 requests for handling copyright infringement on computer programs.

Given that copyright, related rights are civil rights belonging to civil legal relations, so as a result, determination of copyright infringement is subject to administrative penalties would be difficult, complicated, and even causing confusion to the enforcement forces. This is also considered the key reason why Report 758 shows the number of cases as well as the results of administrative sanctions under Decree 131 during the past 10 years has been very modest.

Through our study on the law and practice, we find that IP right enforcement via administrative measure is effective only when all 5 conditions are available:

(1) There is a legal basis for applying administrative measure to a particular IP right infringement, that is, there must be provisions of law describing or naming the infringement, form of sanction, remedy against infringers.

(2) There are legal provisions on procedures, order allowing IP right holders to denounce, or request enforcement agencies to apply administrative measures; legal provisions on procedures and order permitting enforcement agencies to proactively detect and handle legal violations in the field of intellectual property rights.

(3) It also needs competent enforcement agencies or competent persons those who are granted by the law functions, duties, and powers, including sanctioning competence, when dealing with a case by administrative measure.

(4) There is professional support delivered by infringement assessment agency (expert opinion) which can make conclusion on availability or unavailability of copyright infringement element, or goods containing suspected infringement are pirated copyright goods or not.

(5) Enforcement agency that receives the petition has the knowledge, experience, and capacity to confidently accept and issue a decision on administrative violation sanction.

7 Key Isssues to be Revised

In our opinion, Decree 131 should focus on amending and supplementing the following 7 main issues to ensure the updatedness, completeness, and consistence with the legal regulations on sanctioning administrative violations in Vietnam in the field of copyright and related rights:

1. Decree 131 should be restructured to be more scientific and complete. For example, Chapter II (Articles 4-7 can can be kept unchanged) will structure specific administrative offenses related to copyright infringement listed under Article 28 of the IP Law, next, the same structure for related rights infringement listed in Article 35. Chapter III of Decree 131 currently lacks general provisions on determining the jurisdiction of competent authorities. In our view, it is possible to amend the existing Article 36 on general jurisdiction, another article stipulating that the Inspectorate of Culture, Sports and Tourism (“ICST”) has the authority to sanction violations of the provisions of this Law. Chapter II (a particular article) sets out that the Inspectorate of Information and Communication (“IIC”) has the authority to sanction violations of the specific provisions of Chapter II.

2. Acts of infringing upon copyright and related rights in Decree 131 may interfere with, overlap, or conflict with the infringements in other domains with respect to copyright and related rights (eg. Article 64 Decree 98/2020 on sanctioning of administrative violations in the field of e-commerce, Article 20 Decree 53/2022 guiding the Law on cybersecurity). This may lead to a conflict of jurisdiction between the ICST and IIC. To solve this problem, it is proposed that the Information and Communication Inspectorate be added as a competent subject sanctioning acts of non-performance or incomplete implementation of regulations to be exempted from liability of intermediary service providers (“ISP” or “OSP”) under Article 198b of the IP Law.

3. Market management authority (“MMA”) is a force that can make an important contribution to the enforcement of copyright and related rights. Therefore, Decree 131 should clearly and fully define the competence of this force. For example, MMA has the authority to sanction violations (in a particular articles) in the course of production, trading in, transportation, and storage of goods in the domestic market. During dealing with administrative violations, if the manufacturer of such goods is discovered (eg. establishments making pirated printouts), MMA has the right to continue handling violations at that print establishment.

4. Decree 131 lacks regulations on identification of material evidences and means of violation. Because Article 60 of the Law on Handling of Administrative Violations only provides general provisions on this issue, Decree 131 needs to determine more specifically the value of infringing material evidence, especially infringing material evidence which are pirated copyright goods according to Article 213(4) of the IP Law to establish a basis for determining the fine frame and sanctioning competence.

5. Pirated copyright goods under Article 213(4) of the IP Law can be understood as the act of producing goods containing copies of copyright or related rights without permission of the right holder. In essence, this is the act of making/creating a (full) copy of a work, phonogram, or video recording associated with a certain type of physical goods. Piracy is considered a dangerous act for society and can be criminally prosecuted under Article 225 of the Penal Code if the quantity of pirated copyright goods reaches on a commercial scale (eg. infringing goods are worth from 100 million VND or more). Decree 131 does not seem to stipulate how to fully handle this act because Article 8 of Decree 131 only deals with the act of transporting, storing pirated goods, not the act of producing pirated goods bearing copyrighted works, sound recordings, video recordings. If it is considered that the act of producing/creating/making copies of works, phonograms and video recordings was regulated, such as at Articles 18, 27, 33 of Decree 131, the boundary seems unclear. There is a difference between acts of copying and piracy, which can cause difficulties and confusion in the practice of handling administrative violations, including the situation of transferring administrative violation dossiers to criminal investigation agencies when the case has criminal signs.

6. Act of violating the regulations on assessment of copyright and related rights in Article 6 of Decree 131 is relatively sketchy, so it should be more specific. On the other hand, there is an overlap and inconsistency between regulations on assessment of infringement element (expert opinion) of copyright and related rights under Decree 105/2006 and regulations on judicial assessment under Circular 07/2014/TT- BVHTTDL and Circular 02/2019/TT-BVHTTDL. Due to the similar nature like the industrial property assessment, we believe that the Drafting Committee can refer to Article 8 of Decree 99/2013.

7. Decree 131 does not stipulate the order and procedures for handling administrative violations, which has caused some limitations on practice of implementation of copyright and related rights. We believe that Decree 131 should develop a separate chapter providing for the right to request handling of administrative violations and proactively handle administrative violations, petitions, receipt, consideration and accepting requests, providing evidence, and determining violations, handling cases when there are disputes, refusing or stopping handling violations, coordinating with other agencies in handling complicated cases.

11 Specific Proposals to Amend Decree 131

1. Regarding the scope of regulation, Decree 131 should supplement the procedure for filing a request for handling of violations; sanctioned subjects; competence and procedures for dealing with requests for handling of violations.

2. Regarding the subjects to be sanctioned for administrative violations, Decree 131 should identify Vietnamese or foreign individuals and organizations that commit administrative violations in the Vietnamese territory as the subjects to be sanctioned, especially sanctioned subjects may also include foreign enterprises or branches, representative offices of foreign enterprises providing telecommunications services, internet, digital content.

3. Regarding sanctioning forms and remedial measures, Decree 131 should provide more general principles on sanction in Article 3 of Decree 131, specifically fine is the main form of sanction; additional sanctions (such as confiscation, deprivation of the right to use, suspension of production and business activities); remedial measures for example forcible removal of infringing elements, forcible distribution or non-commercial use of pirated goods, forcible destruction of pirated goods, material evidence and means of violation if infringing elements cannot be eliminated.

4. Concerning the determination of the value of material evidence of violation, Decree 131 should supplement regulations on the value of material evidence and means of violation in a more specific direction than the principles specified in Clause 2, Article 60 of the Law on sanctioning administrative violations, in which, for example, especially for material evidence and means that are pirated goods (fake goods), price of such material evidence and means is the market price of real goods or goods of the same nature and uses at the time of detecting administrative violations. Decree should also stipulate that the determination of the value of material evidence and means of administrative violations used as a basis for determining the fine frame and sanctioning competence.

5. With respect to request for handling of violations, Decree 131 should have provisions on the right to request for dealing with violations for all three groups of subjects including rights holders, organizations/individuals detecting violations, and competent authority (eg. Customs Authority) to actively deal with acts of intellectual property forgery, which further stipulates that the competent authority is responsible for examining, coordinating with rights holders, organizations/individuals detecting violations, verifying and handling violations; or for the customs, to actively inspect, inspect and detect pirated goods.

6. Regarding authorization to request handling of violations, Decree 131 should contain provisions on authorization to handle violations, specifically copyright and related rights holders, if they do not directly file a petition, they may authorize the heads of their representative offices, branches and agents in Vietnam, intellectual property representative organizations, law firms, collective management organizations (CMOs). The authorization can be made in the form of a power of attorney, or an authorization contract signed by a legal representative, which must be notarized if the authorizing party is a foreign individual or organization.

7. Regarding a request for handling of violations and consideration of a request for handling of violations, the right holder must prepare a written request for handling of violations in which identifying copyright to be infringed, infringement, alleged infringer, handling measure required together with the applicable legal grounds, documents, and evidence, including assessment conclusions or expert opinion (if any). The allegedly infringing party has the right to explain and present evidence that it has not violated the right holder’s legal rights within a maximum period of not more than 30 days from the date of making the inspection minutes or minutes of violation.

8. Decree 131 should contain provisions on handling the request in the event of a dispute, specifically after the request has been accepted, but there is a complaint or dispute over ownership or eligibility to file request handling of infringement, conditions/scope of protection of copyright and related rights, the competent authority may (a) request the parties to carry out the procedures for requesting settlement of complaints at the competent authority, (b) request that the applicant commits to take responsibility so as to be continuously processed, (c) recognize the conciliation measure between the parties involved and stop handling the case.

9. Decree 131 should stipulate rules for refusing or stopping handling. Circumstances of refusal comprise: (a) there is a dispute at the time of submission, the applicant does not satisfy the request for additional explanation, supplementing evidence, (b) there is a conclusion of another agency notifying that there are not enough grounds to handle the violation, (c) the verification results show no violation. Circumstances of stopping the handling include: (a) there is a complaint arising after it has accepted but must wait for the settlement result of another agency, (b) the parties agree to settle the case by themselves, (c) applicant withdraws the request. However, the competent agency that has accepted the case may not refuse or stop processing if the violation is related to pirated copyright goods.

10. Regarding the coordination mechanism, if the case shows signs of being complicated or involves many organizations or individuals, the accepted agency may request coordination with other competent agencies in handling the case. In case there are different opinions and decisions between competent authorities on determination of violations and handling measures, an advisory council of reputable experts in the field of relevant expertise may be established to assist the competent person to decide the case.

11. Regarding the secondary responsibility of OSP (ISP), Decree 131 should stipulate that the cases where the ISP is sanctioned administrative violations include: failure to set up a mechanism to receive and handle complaints (notice and takedown process) about copyright and related rights infringement; failure to build up and report on the establishment of a contact point in charge of copyright and rights related to the MCST and the Copyright Office; do not warn users of their legal responsibility when infringing copyright and related rights; failure to remove or block access to digital content within the prescribed time limit; failure to fulfill the obligation to notify the requesting party of removal or the party having digital content being requested within the prescribed time limit.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has litigation experience against IP infringement via administrative measure and legal proceedings before Vietnamese courts.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.