Question 1: Thorough investigation as to the legal and factual conditions for the new legislation

The Max Planck Institute concludes in its article 1 published in GRUR the 01.09.2006 about the directive COM 2006/0168 the following: "(...) the Community legislature is obliged to embark on a thorough investigation as to the legal and factual conditions for new legislation before action is taken. Apart from very general remarks regarding its competence, nothing in the explanatory memorandum to the proposal indicates that such an investigation was undertaken by the Commission, and, if so, what specific results it produced."

1 Did the Commission embark on a thorough investigation as to the legal and factual conditions?

2 If yes, why does nothing in the explanatory memorandum to the proposal indicates that such an investigation was undertaken?

3 If no, do you consider to retract the directive to be able to first solve this essential problem?

The Max Planck Institute furthermore writes: "Whether EU Member States have implemented Art. 61 TRIPS according to their obligations (Art. 300(7) EC) and in an appropriate manner has to our knowledge never been examined. Only when this implementation has proven insufficient is a further harmonisation justifiable.

4 Did you examine whether Member States have implemented Art 61 TRIPS according to their obligations?

5 Do you agree that only when this implementation has proven insufficient a further harmonisation is justifiable?

1 Hilty, Kur, Peukert: Stellungnahme des Max-Planck-Instituts für Geistiges Eigentum, Wettbewerbs- und Steuerrecht zum Vorschlag für eine Richtlinie des Europäischen Parlaments und des Rates über strafrechtliche Maßnahmen zur Durchsetzung der Rechte des geistigen Eigentums, KOM(2006) 168 endgültig; GRUR Int, 55. Jahrgang, 01.09.2006

Question 2: Limitation to clear cases of piracy and counterfeiting; definition of the crime

The Max Planck Institute concludes in its article 1 published in GRUR the 01.09.2006 about the directive COM 2006/0168 the following:

"12. While there is no doubt that combatting counterfeiting and piracy, also by means of criminal law, is an important and urgent task, it is more questionable whether the extension of criminal penalties and prosecution measures to all kinds of IP infringement can be viewed as an appropriate and useful tool to safeguard protection of IP rights. There is even a risk that, by enhancing the threatening potential this entails, the (desirable) freedom of market actors to engage in business is curtailed beyond proportion, which would produce results adverse to the aims of the common market.

13. It follows that harmonisation of criminal law in the field of IP, if admissible at all, must remain confined to cases of clear piracy and counterfeiting. In less straightforward cases in particular when the conflict concerns the scope of protection granted vis-à-vis similar goods or achievements sanctions under civil law can usually be regarded as sufficient from a Community perspective (notwithstanding rules of national law)."

1 Do you agree that harmonisation of criminal law in the field of IP, if admissible at all, must remain confined to cases of clear piracy and counterfeiting?

The Max Planck Institute concludes: "14. Restricting the application of the directive to infringements carried out "on a commercial scale" fails to provide for an appropriate and sufficiently precise definition of the elements of a crime, all the more as it would practically only exclude acts undertaken in good faith by consumers."

2 Do you agree with this conclusion?

The Max Planck Institute concludes furthermore: "15. Indeed, when proper account is taken of the proportionality principle, harmonisation of criminal penalties can only be justified in relation to acts fulfilling the following elements cumulatively:

Identity with the infringed object of protection (the infringing item emulates the characteristic elements of a protected product or distinctive sign in an unmodified fashion assembly, etc.).

Commercial activity with an intention to earn a profit.

Intent or contingent intent (dolus eventualis) with regard to the existence of the infringed right."

3 Do you agree harmonisation of criminal penalties can only be justified in relation to acts fulfilling the said elements cumulatively?

Question 3: Private Joint investigation teams in case of criminal prosecution for violations of intellectual property rights

The Max Planck Institute concludes in its article 1 published in GRUR the 01.09.2006 about the directive COM 2006/0168 the following:

"22. A specific risk of misuse results from Art. 7 of the proposal, according to which Member States are obliged to ensure that the holders of the IP rights concerned or their representatives, as well as experts, are allowed to assist in the investigations by joint investigation teams into the offences referred to in Art. 3. As transpires from the explanatory memorandum, it is foreseen that the victims actively participate in the prosecution, in particular in the search for evidence. The directive obviously does not regard it as sufficient that the holders of IP rights may, at any time during the investigations conducted by the competent public authority, provide information that they have obtained within the framework of legal rules of general application.

23. The privatisation of criminal prosecution in favour of individual stakeholderss interests implied therein should be rejected for reasons of general legal policy. In democratic societies bound by the rule of law, the state is endowed with a legal monopoly over the use of force. Private parties are not entitled to avail themselves of criminal prosecution measures in order to combat violations of the law committed by fellow citizens. Instead, each individual only has the right to claim protection by the state, if necessary to be ensured by means of criminal law. The clearly defined rules of criminal procedure are only binding upon the criminal prosecution authorities. And even if criminal procedural law were equally applicable to all members of joint investigation teams, democratically legitimised control would be lacking, as proprietors of IP rights do not hold a public office and are therefore not bound by internal directions issued by the prosecuting authority. The obligation of Member States to delegate functions within the conduct of criminal investigations to private parties in such a diffuse manner is therefore incompatible with the fundamental structure of a democratic society."

1 Do you agree that the obligation of Member States to delegate functions within the conduct of criminal investigations to private parties in such a diffuse manner is incompatible with the fundamental structure of a democratic society?

2 Do you agree article 7 has to be deleted?

Question 4: Misuse of threats of criminal penalties for violation of intellectual property rights

The Max Planck Institute concludes in its article 1 published in GRUR the 01.09.2006 about the directive COM 2006/0168 the following: "21. Both international and European law require the prevention of misuse of IP rights. Misuse disrupts free competition, in contravention of Art. 28 et seq. and 81 et seq. EC. Consequently, the Member States must be obliged to ensure that the misuse of threats of criminal penalties can be prohibited and/or sanctioned by criminal, civil and procedural measures."

1 Do you agree Member States must be obliged to ensure that the misuse of threats of criminal penalties can be prohibited and/or sanctioned by criminal, civil and procedural measures?

Ipred2QuestionsEn

Question 1: Thorough investigation as to the legal and factual conditions for the new legislation

Question 2: Limitation to clear cases of piracy and counterfeiting; definition of the crime

Question 3: Private Joint investigation teams in case of criminal prosecution for violations of intellectual property rights

Question 4: Misuse of threats of criminal penalties for violation of intellectual property rights