On 26 April 2023, Decree No. 17/2023/ND-CP (“Decree No.17”) was issued by the Government to guide a number of articles and measures to enforce the Amended Intellectual Property Law 2005 (“Amended IP Law”) with regard to copyright and related rights. Decree No.17 took effect immediately.
Decree No.17 is a significant piece of legislation that encompasses various regulations pertaining to the Amended IP Law. In particular, there are two crucial aspects that require special attention: (i) Intermediary Services Providers (ISP) and (ii) infringement of copyright and related rights.
i) Intermediary Services Providers (ISP)
If the previous IP Law did not have regulations relating to ISP, the Amended IP Law (Article 198b) and Decree No.17 provide specific provisions regarding the liability of ISP. A special feature is that ISP can be held liable for the copyright infringement and violations of related rights that occur on their platform if they fail to satisfy the conditions for exemption from liability. Such regulation aims to ensure that ISP bear responsibility for safeguarding copyright and related rights on the telecommunications networks and the internet.
Which services does ISP provide?
There are three services that are provided by ISP, namely:
- “Mere conduit” service: The transmission of digital content or the provision of access to the digital content.
- “Caching” service: The transmission in a telecommunication network of information provided by a user characterized by the automatic storage, temporary, intermediate, and for the sole purpose of making the transmission of information to another user more effectively.
- “Hosting” service: The storage of service users’ digital content at their request.
Liabilities of ISP
- If an ISP directly carries out the infringement of copyright and related rights, the ISP will be liable according to the provisions of law.
- If the infringement of copyright and related rights is carried out on an ISP’s platform by a service user, and such ISP does not take the necessary actions to be exempted from liability, this ISP will be jointly liable with the infringing service user.
Conditions for ISP to be exempted from liability
To trigger the liability exemption, upon reception of the copyright holder’s request, the ISP providing hosting services need to comply with the following:
- Within 72 hours upon the receipt of a request, the ISP must temporarily remove or prevent access to the suspected digital content and notify the parties of temporary removal or prevention of access to such digital content, along with documents and evidence provided by the requesting party.
- Within 10 working days from the date of the temporary removal or prevention of access to digital content and notification of the involved parties, if no opposition and evidence are raised by the requested party, the ISP will officially remove or prevent access to such digital content. However, if the requested party opposes and provides supporting evidence, the ISP will restore the temporarily removed or prevented digital content within 72 hours. The ISP shall notify the requesting party for their consideration and comment.
- In case of opposition and if neither party initiates a lawsuit nor requests the enforcement agency to sanction infringement or in case any such claim is rejected by the court and the enforcement agency, the ISP reinstates the removed or prevented digital content. If the court or enforcement agency rules in favor of the claim, the ISP will abide by the decision of the court or enforcement agency.
In relation to live-streamed digital content, the copyright holder must provide to the ISP evidence proving the infringement at least 24 hours before the live-stream. The ISP must then temporarily remove or prevent access to the digital content immediately, notify the parties, and continue to carry out the steps as mentioned above.
Notably, the request submitted to the ISP to remove or prevent access to the infringing digital content serves as evidence to demonstrate that the ISP is aware of the infringing digital content. Therefore, the ISP providing the hosting service is not exempted from liability if they fail to carry out the required removal or prevention of access.
To implement all of the above steps, the ISP need to develop tools (i.e. software, website, email, or e-portal) to receive the request of copyright holder and enforcement agency. Furthermore, the ISP should also raise-awareness of and provide appropriate training to their employees to comply with the regulations.
ii) Infringement of copyright and related rights
Compared with the previous regulations, Decree No.17 also specifically stipulates (a) what constitutes an infringement of copyright and related rights, (b) how to claim for the damage caused by the infringement, and (c) how to handle infringement.
What constitutes an infringement of copyright and related rights according to the Amended IP Law?
There are four cumulative requirements:
- The suspected infringing product is within the scope of products entitled to copyright and related rights protection.
- There is an infringing element of copyright and related rights is in the suspected subject.
- The infringing party is not the copyright holders.
- The acts of copyright infringement occurred in Vietnam (including the suspected acts occurring on the telecommunications network and the internet and aimed at the service users or consumers in Vietnam).
How to claim for damage?
The acts of copyright infringement directly cause the actual damage (which includes material loss and mental loss). To claim damages, the affected person must evidence that:
- the material and mental benefits are actual and owned by the affected person;
- should the acts of copyright infringement not have occurred, the affected person would have gotten the related material and mental benefits;
- there is a cause-and-effect relationship between the acts of copyright infringement and decrease or loss of benefits of the affected person. In particular, before the copyright infringement occurred, the affected person had certain material and mental benefits, which decreased or was lost because of the infringement.
The determination of the extent of damage depends on the evidence provided by the parties, the assessment conclusion, and the list of damage.
How to handle the acts of copyright infringement?
- The copyright holders can undertake measures on their own to protect their legitimate right upon uncovering a copyright infringement. The first and simplest action they can take is to notify and request the infringing party to terminate the infringement immediately (i.e. cease-and-desist letter).
- If the infringing party does not terminate the acts of copyright infringement, the copyright holder can require the competent authority (i.e. court, courts, inspectorates, market management offices, customs offices, police offices and people's committees at all levels) to impose the following measures:
- Compulsory distribution or use of the infringing products for non-commercial purposes
- Compulsory destruction of the infringing products;
- Confiscation of the infringing goods.
The enforcement agency will apply the measure to enforce the removal of infringing products and any other appropriate measures on a case-by-case basis.
Decree No.17 regulates many contents of the Amended IP Law, however the above two salient points relating to ISP and infringement of copyright and related rights should retain your attention as they will be helpful in protecting copyright and related rights on the telecommunications networks and the internet, as well as ensure fairness and assistance in handling disputes in case of IP rights abuse. With the rise of IP infringements in the internet era and in line with Vietnam’s commitments pursuant to recent trade agreements, the issuance of Decree No.17 is essential to the protection of IP rights in Vietnam.
If you have any questions or require any additional information, please contact Nguyet Nguyen of KPMG Law in Vietnam.
This alert is for general information only and is not a substitute for legal advice.
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