Draft evaluation and review of the IPR enforcement directive – Making IP enforcement fit for the digital age

Different stakeholders ask for a clarification of the scope of provisional and permanent injunctions, in particular with regard to intermediaries. A broad call is also made to generally strengthen the involvement of intermediaries in IPR enforcement.

In order to meet at least some of these demands, the Directive could define the term “intermediary” whose services are used by a third party to infringe IPR. In addition, clarify that preliminary and provisional measures as well as permanent injunctions would be explicitly available not only to bring to an end IPR infringements by users of the intermediary but also to prevent further infringements of that kind (“take down and stay down”). An injunction however could then only be granted against intermediaries which services are actually used by a third party to infringe an IPR.

To avoid the risk of injunctions being granted against intermediaries very distant to the infringement (such as an electricity company), under this option the proposal would stress the need for the judicial authorities to apply the proportionality principle on a case by case basis, to ensure that only intermediaries that contribute in a significantly directly and material manner to the infringement are enjoined.

In addition, this option would codify the approach of the EJC that for the injunction against an intermediary to be effective and dissuasive a judicial authority should finally be able to grant an injunction that does not only bring to an end an infringement of a right by users of that intermediary but also prevents further infringement of that same kind.

The injunction could however not entail a general monitoring obligation which would be incompatible not only with Article 15 of the e-Commerce Directive but also with Article 3 of IPRED (proportionality). Obligations of the intermediary would be based on a judicial decision linked to a concrete infringement of a right and the direct follow-up to be given to ensure its elimination.

A more far reaching option would be to harmonise the liability of intermediary service provider (either within the directive or through a separate stand-alone legal instrument) if they fail to act having knowledge that their services are used by a third party to infringe an IPR.

Self- and co-regulatory agreements aimed at depriving commercial scale IPR infringers of their revenue streams and involving right holders and different types of intermediaries can be effective means to complement the legal IPR enforcement framework. In order to promote and strengthen such agreements an option would be to reinforce the role of codes of conduct and voluntary cooperation initiatives involving different intermediaries in the protection of IPR.

As the Directive so far does not explicitly refer to the use and presentation of digital evidence but only physical evidence it was suggested a package of complementary measures on digital evidence, including a definition of digital evidence, a clarification of the access to and preservation of such evidence and consequences for the destruction of digital evidence.