Criminal enforcement measures
In addition to civil enforcement measures harmonised by the Enforcement Directive and the Information Society Directive, EU Member States also apply criminal procedure and penalties to ensure enforcement of intellectual property rights, in line with Article 61 of the TRIPS Agreement.
Criminal proceedings against infringers of intellectual property rights are normally initiated by a complaint of the rights holder, but judicial authorities can sometimes initiate proceedings ex officio when an infringement is classified as a public crime.
This is normally the case when certain aggravating circumstances occur, such as infringements involving money laundering and/or carried out by organised criminal groups. In most cases, criminal prosecution involves procedures that apply both to infringement of intellectual property rights and other kind of illicit behaviour, such as forgery, fraud, conspiracy and inchoate offences like assisting the commission of an offence.
Criminal sanctions include imprisonment, with maximum possible sentences ranging from two to ten years. In most Member States surveyed, the penalties available are organised in a broad range, starting with the imposition of fines for less severe offences.
The Enforcement Directive mandates Member States to provide rights holders with the possibility of applying for injunctions against intermediaries, but leaves to national law to determine the conditions and procedures relating to such injunctions. While in all Member States such injunctions require judicial proceedings, in Italy they can also be granted by AGCOM, the authority of telecommunications, following an expedite administrative procedure.
The targets of such procedure are ‘mere conduit’ and ‘hosting’ services. The procedure allows rights holders to request an internet service provider to remove or block access to websites hosting allegedly copyright infringing material, or a website to take down infringing content and refrain from re-uploading it. AGCOM can impose fines in case of non-compliance with the orders.
A similar procedure has been recently established in Greece. Under this procedure, rights holders can file an application to a dedicated Committee set by the Hellenic Copyright Organisation, which is vested with authority to request internet service providers to remove of block access to infringing content.
Customs measures regarding streaming devices
According to European crime assessment reports, IPTV piracy is expected to grow in the future with the diffusion of applications for computers, phone and tablets which will probably replace IPTV devices. Meanwhile, import and trade of set-top boxes (STB) is still under way and represents a key asset for the leading business models in the IPTV piracy ecosystem.
The IP Enforcement Directive requires Member States to adopt enforcement measures to protect IP rights, including seizure of goods suspected of infringing to prevent their entry into the market. In addition, the Regulation on customs enforcement of intellectual property rights allows certain customs activities including seizure and detainment of goods suspected to be infringing IP rights such as patents, utility models, trade marks, registered geographical indications, registered designs and models, copyright and related rights.
Enforcement in the field of illegal IPTV, however, presents specific challenges. This is because while fully loaded STB are infringing copyright, and they fall squarely within the scope of the Enforcement Directive and the IP Customs Regulation, ‘vanilla’ devices (i.e. STB that are not yet configured to receive illegal streaming) do not directly infringe any intellectual property right.
These devices can be sold as such to end users, who will then configure them themselves by following instructions provided by the reseller or found on forums and discussion groups. However, ‘vanilla’ devices manufactured by dubious businesses may present hazardous features that make them illegal under EU safety standards. This may in turn represent an alternative path for enforcement.
The Radio Equipment Directive of 2014 (RED) in fact establishes a legal framework for marketing radio equipment. This directive sets health and safety requirements, electromagnetic compatibility, and the efficient use of the radio spectrum.
Interestingly, the directive also regulates some other aspects such as privacy and personal data protection, and measures against fraud. Further regulated matters include interoperability, access to emergency services, and compliance regarding the combination of radio equipment and software.
According to the RED, ‘radio equipment’ means an ‘electrical or electronic product, which intentionally emits and/or receives radio waves for the purpose of radio communication and/or radiodetermination, or an electrical or electronic product which must be completed with an accessory, such as antenna, so as to intentionally emit and/or receive radio waves for the purpose of radio communication and/or radiodetermination’.
Arguably, this definition may apply to IPTV devices, insofar as they emit or receive radio waves (for instance by using Wi-Fi/WLAN, bluetooth or other electronic communication protocols). In this respect, ‘vanilla’ devices must fulfil the requirements laid down by the RED and other national regulations in Member States. These regulations require that ‘radio equipment’ be subject to a conformity assessment procedure and should carry technical documentation.
In addition, such equipment should carry a declaration of conformity, and affix the CE marking to the product. The name, trade mark and address of the manufacturer should also be displayed on the product, including a serial number or other identification. Importantly, according to the 2017 UK Regulations the manufacturer of such equipment must also cooperate with the enforcing authorities and provide them information upon requests.
All the above is particularly relevant for enforcement against actors of business models based on resale and import of IPTV streaming devices, particularly at customs level. Accordingly, the EU enforcement framework for products safety includes a specific customs procedure to prevent incompliant goods from entering the Union market.
The lack of consistency of the required certifications, marks, labels or information on producer or trader calls the Customs to block the goods at the border and to start a fast notification procedure to the market surveillance authorities in the Member State.