Determining Copyright Infringement Constituents

from 16 Suspected Acts under the 2022 IP Law in Vietnam

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Decree 17/2023/ND-CP becoming effective from April 26, 2023 (“Decree 17”) guiding the implementation of the Intellectual Property Law of 2022 (the “2022 IP Law”) provides that 16 forms of acts may be subject to infringement of authors’ rights (copyright infringement). Below are the introduction of those acts and the legal rules for determining copyright infringement constituents.

16 Acts of Copyright Infringements

Defining copyright infringement in the previous copyright regulations were quite sketchy since it merely stated that the element of copyright infringement can only fall into one of five types of acts.[1] Now, according to Decree 17, there are up to 16 types of copyright infringement acts, namely infringements upon moral rights, economic rights, circumvention of technological measures to protect copyrighted materials, and particularly the first time holding jointly liable (secondary liability) intermediary service providers or online service providers (ISP/OSP) if ‘safe harbor’ provisions are not satisfied by these OSPs:[2]

1.     Infringing upon the right to name a work such as changing the name of the work without the permission of the author or co-authors.

2.     Infringement of the attribution right (right to credit) a work, namely impersonating the author, forging names and signatures, not giving credit or intentionally misrepresenting the author's name

3.     Infringement upon the publication right to a work, for example, by publishing it without the permission of the copyright owner.

4.     Infringing upon the right of integrity of a work, damaging the honor and reputation of the author, for instance, distorting the work; modifying, mutilating the work

5.     Infringement upon the right to make derivative works, namely translating an existing work into another language, selecting, adapting, or arranging music without the permission of the copyright owner.

6.     Infringement on the right to perform a work in public, eg. performing, reading, displaying, exhibiting, or performing a work in a public place without the consent of the copyright owner.

7.     Infringement of the right to make reproduction, e.g. duplicating or making copies of a work; copying the work in part, excerpt, assembling without the permission of the copyright owner

8.     Violating the distribution right, e.g. distributing, importing for distribution to the public the original copy or tangible copy without the consent of the copyright owner.

9.     Breach of the right to communicate to the public, e.g. broadcasting, communicating to the public a work via telecommunications, or via the internet without the consent of the copyright holder.

10.  Violation of the rental right to originals or copies of cinematographic works or computer programs without the consent of the copyright owner

11.  Failure to perform or incomplete performance of a legal responsibility to enjoy the exceptions or limitations to copyright infringement under Articles 25, 25a and 26 of the 2022 IP Law

12. Intentionally destroying, invalidating, deactivating technological measures adopted by an author or copyright holder.

13.  Producing, distributing, offering for sale, selling, or advertising equipment or components thereof for the purpose of circumvention of technological measure.

14.  Deliberately deleting, removing, or changing copyright management information upon knowing or having grounds to know that such conduct will induce, make it easier to perform, conceal copyright infringement.

15.  Intentionally distributing, broadcasting, communicating, or making available to the public a copy of the work when knowing or having grounds to know that the performance of such act will induce, facilitate or conceal copyright infringement.

16.  Failure to perform or incompletely implementing the conditions for enjoying ‘safe harbor’ exemptions where the intermediary service providers (ISPs or OSPs) are claimed to be jointly liable for its users’ copyright infringement set out at Article 198b of the 2022 IP Law.

Rule for Determining Copyright Infringement

A suspected infringement would be only considered a copyright infringement if it simultaneously satisfies all four constitutive elements: (1) the suspected subject is within the scope of copyright protection; (2) there is an element of copyright infringement in the suspected subject; (3) persons performing the suspected act are neither the copyright holder nor those entitled to the exceptions or limitations to copyright infringement (no fair use); and (4) suspected acts occurring in Vietnam, including acts occurring on the internet, telecommunications networks in which Vietnamese consumers use digital content in Vietnam.

As a general rule, for the purpose of determination of copyright infringement, it is necessary to identify the scope of protection of a copyrighted work based on the form of expression of the original work, as well as relied upon the character, image, and the way of expression of character’s personality, or in the case of determining an infringing element of a derivative work, it is necessary to consider and compare the images, details of the original work and the derivative work. However, in all cases the consideration of copyright infringement constituents must also take into account the originality in creating the work, the expression of the idea, and not the idea itself.

Products, goods, services created from one of the above copyright infringements shall be considered as those infringing upon copyright. Where a product is made from the act of infringing the right to make reproduction a copyrighted work, it would be deemed as pirated goods according to Clause 4, Article 213 of the 2022 IP Law (Intellectual Property Counterfeit Goods). As a result, an individual infringer or commercial entity infringer or both may be criminally prosecuted for copyright crimes under Article 225 of the Penal Code 2015 as revised if they intentionally duplicated or made copies of works, and the infringing goods seized are valued at 100 million VND (US$4,300) or more.[3]

In order to determine whether a copy or a work contains an infringing element of copyright, it is necessary to use the method of comparing the suspected subject with the original copy of the protected work, originality of the work, date of creation, possibility of access, point of time of access to the original work. Accordingly, there would be an element of copyright infringement in a copy of a work if that copy copied in part or all of a protected work; a work or part of a work that is suspected to contain part or all of a copyrightable prior work; works, parts of works with characters, images, ways of expressing character's personality, images or details of protected previous works.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.

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