Questions on Copyright Enforcement in Vietnam
1. Are there any statutory enforcement agencies in Vietnam and, if so, are they used by rights holders as an alternative to civil actions?
KENFOX: Copyright infringement in Vietnam, besides being settled under civil route, is handled under administrative route or criminal route. Per Article 200, Vietnam IP Law, Vietnamese enforcement bodies include:
+ Copyright enforcement bodies under administrative route:
(i) Inspectorates of Ministry/Departments of Culture, Sports and Tourism.
(ii) Market Management Offices;
(iii) Customs Offices;
(iv) Police Agencies.
+ Copyright enforcement bodies under judicial route:
For IPR cases, proceedings must be commenced in the court for the province where the defendant resides or works or has its head office or if a dispute is relating to compensation for non-contractual damages, the plaintiff may request the Court of the locality in which his/her residence, work place or head office is located or where the case causing damage occurs to hear the matter (Article 40.1(d), Civil Procedure Code 2015)
2. Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work?
KENFOX: Other than the copyright owner, an assignee, successor, the license holder of the exclusive licensing and the collective licensing bodies in Vietnam may file an infringement lawsuit. collective management of copyright and related rights which is known as collective management organisations (CMOs). In Vietnam, as far as we know, there are following collective licensing bodies: (i) Vietnam Literary Copyright Center (“VLCC”) (Website: http://vlcc.vn/), (ii) Recording Industry Association of Vietnam (“RIAV”) (Website: http://riav.org.vn), (iii)Vietnam Center for Protection of Music Copyright (“VCPMC”) (Website: http://vcpmc.org/vcpmc/), (iv) Vietnam Reproduction Rights Organization (“VIETRRO”) (Website: http://vietrro.org.vn) and (v) Association for Rights Protection of Music Performing Artists (APPA) (Website: http://appa.org.vn). Each of the above-mentioned collective management bodies in Vietnam will manage and grant licences to types of work as basically covered by their names
3. Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary infringement?
KENFOX: Under Vietnam IP Law, secondary infringement is not provided. However, per by-law some provisions guiding the implementation of Vietnam IP Law concerning secondary infringement are found. In detail, per Joint Circular No. 07/2012/TTLT-BTTTT-BVHTTDL on Stipulations on the Responsibilities for Intermediary Service Providers in the Protection of Copyright and Related Rights on the Internet and Telecommunications Networks (in force since August 2012), intermediary service providers are under obligation, among other things, to remove and erase digital content in violation of copyright and related rights, and to cut off, stop and temporarily disconnect an internet cable or telecommunication transmission upon receipt of a written request by the Ministerial Inspectorates of Ministry of Information and Communications or the Ministry of Culture, Sports and Tourism or other competent ministries.
Also, intermediary service providers are liable directly for damage recovery due to their copyright or related rights infringmeent in some cases, namely: (a) when they are the initial source that uploaded, transmitted or provided digital content through a telecommunication network and internet without the permission of copyright or related rights holders; or (b) when they modified, distorted or reproduced digital content in any form without the permission of the copyright or related rights holder.
4. Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement?
KENFOX: Fair use are provided under Article 25 and 32 of Vietnam IP Law, whereby others may freely use published copyright or related rights without needing to seek permission and to pay royalties or remuneration from the copyright holder on the condition that such use does not conflict with a normal exploitation of the work or related rights and does not unreasonably prejudice the legitimate interests of the author.
There are 10 defence circumstances on fair use relating to a published copyrighted work as follows:
(i) Making one copy of the work for scientific research or teaching purposes;
(ii) Reasonable quoting from a work in order to comment on or illustrate one’s own works, without misrepresenting the author’s views;
(iii) Quoting from a work in order to write an article published in a newspaper or periodical, in a radio or television broadcast or in a documentary, without misrepresenting the author’s views;
(iv) Quoting from a work in a school or university for lecturing purposes without misrepresenting the author’s views and not for commercial purposes;
(v) Copying a work by a library for archival and research purposes;
(vi) Performing of a stage work or other art work in mass cultural, communication or mobilisation activities without collecting fees in any form;
(vii) Audio-visual recording of a performance in order to report current events or for teaching purposes;
(viii) Photographing or televising plastic art, or an architectural, photographic, or applied art work displayed in a public place in order to present images of such work;
(ix) Transcribing a work into braille or into characters of other languages for the blind; and
(x) Importing copies of another’s work for personal use.
However, it is worth noting that the circumstances in (i) and (iv) indicated above shall not be applied to architectural works, plastic works and computer programs.
The four defence circumstances as fair use regarding the published related rights consist of:
(a) Making one copy of a work for personal scientific research purposes;
(b) making one copy of a work for teaching purposes, except for performances, audio-visual fixation or broadcasts which have been published for teaching purposes;
(c) reasonable quoting from a work in order to provide information; and
(d) making provisional copies of a work by a broadcasting organisation for broadcasting purposes when such organisation has the broadcasting right.
5. Are interim or permanent injunctions available?
KENFOX: Preliminary/Interim or permanent injunctions are available under the laws of Vietnam concerning copyright infringement.
Preliminary injunctions are referred to as “emergency measures” or “provisional urgent measures” which are common terms found in the legal documents of Vietnam. IPR holders are entitled to request a competent court to grant a preliminary injunction at the time of (or after) lodging their claim with the court. Per Article 207 of Vietnam IP Law, the preliminary injunction that may be ordered by a competent court includes retention, seizure, sealing, prohibiting any alteration of the original state, prohibiting any movement and other provisional urgent measures as provided under the Civil Procedure Code.
To seek preliminary injunction, under Article 206 of Vietnam IP Law, IPR holders should prove that in the absence of adequate measure(s):
- there appears a likelihood of irreparable damages sustained by IPR holders, due to alleged infringement; or
- there is a risk that infringing goods or other material evidence pertaining to such alleged infringement is destroyed or cannot be traced
For a preliminary injunction to be accepted, the IPR holder must perform some security measures. Per Article 136 of Civil Procedure Code 2015, the IPR holder/petitioner of preliminary injunctive “must submit to the Courts guarantee invoices deposit a money sum, precious metals, precious stones or valuable papers as determined by the courts, which must be equivalent to the property obligation to be performed by the obligor in order to protect the interests of the persons against whom the provisional emergency measures are applied and to prevent the abuse of right to petition the application of the provisional emergency measures by petitioners”. The security measure is further specified under Article 208.2 of Vietnam IP Law under which the requester of preliminary injunction must deposit “a sum of money equal to twenty (20) per cent of the value of the goods subject to the application of provisional urgent measures, or at least twenty million (20,000,000) dong (approx. US$ 900) where it is impossible to value such goods”.
To request a Court in Vietnam to apply a preliminary injunction, per Article 133 of Civil Procedure Code 2015, the requester must submit a request to the court.
6. On what basis are damages or an account of profits calculated?
KENFOX: Damages claimed under a civil proceeding may include material and spiritual damages. The extent of damage shall be determined on the basis of actual losses suffered by the holders due to acts of infringement. Practically, courts require strong evidence on damage to determine on specific amount of compensation to be paid by the infringers. In some cases, legal fees may be accepted as part of damage.
Damages shall be calculated based on one of the following:
Option 1: The total physical damage determined in an amount of money plus the profits gained by the defendant as a result of infringement if reduced profits of the plaintiff have not yet been included in the total physical damage. The total physical damage could include the property loss, reduce in income and profit, loss of business opportunity, and reasonable expenses for injunction and remedy;
Option 2: The value of the transfer of the right to use the IPR subject matter with the presumption that the defendant has been transferred by the plaintiff with the right to use that IPR subject matter under an agreement for using such IPR subject matter to the extent equivalent to the act of infringement committed;
Option 3: Where it is impossible to determine a rate of compensation for physical damages, a rate shall be fixed by the court depending on the loss level but not exceeding VND 500 million (~ US$21,700)
Apart from compensation of material damages, in case the plaintiff can prove their spiritual detriment caused by the IPR infringement acts, the amount of damage for spiritual detriment may be decided by the court in a range from VND5-50 million (~US$217-2,170).
In addition, the plaintiff may request the infringer to pay the reasonable lawyer fees.
7. What are the typical costs of infringement proceedings and how long do they take?
KENFOX: If an alleged copyright infringement is handled under administrative route, we will charge the service fee on the time cost basis, at the hourly rates of US$ 250/hour. It is noted that generally, the fee ranges from US$6,000 to 10,000 for handling one IPR infringer at one location in accordance with administrative procedure. No official fees are required.
If an alleged copyright infringement is handled under civil route, our fee ranges from US$12,000 to US$18,000 for obtaining each court’s verdict in accordance with different procedures depending on the nature and complicatedness of the infringement. Court fees for dispute cases that having no monetary value are not much, roughly US$ 15-150. However, court fees for dispute cases that having monetary value are calculated on the value of disputed assets.
8. Is there a right of appeal from a first instance judgment and if so what are the grounds on which an appeal may be brought?
KENFOX: Yes. In case that a party does not agree with the first instance court’s verdict, the party may make appeal in accordance with the appellate procedures. The appellate court for verdicts of the provincial people’s court in the IPR disputes is the supreme people’s court. The time limit for appeals is 15 days which runs from the date of judgment or, if the appellant was absent from the hearing, from the date the appellant receives a copy of judgment or the date when the judgment was posted (Articles 273.1, Civil Procedure Code 2015).
Appellant must pay the advance of the court’s fee in accordance with notice issued by the first instance court. Within 15 days from the receipt of the advance payment, first instant court shall send the appeal application together with the case’s file to the appellate court. The advance of court fees in the appellate courts are VND300,000 (~US$13) for civil disputes or VND2,000,000 (~US$87) for commercial disputes (Resolution 326/2016/UBTVQH14). Within 2 months from the date of acceptance (Article 286.1, Civil Procedure Code 2015), the appellate court shall make one of the following decisions:
a) To suspend the appellate trial over the case;
b) To terminate the appellate trial over the case;
c) To bring a case to appellate trial.
Within 1 month (or 2 months in case of having reasonable causes) from the date of the decision to bring the case to hearing acceptance (Article 286.2, Civil Procedure Code 2015), the hearing shall be held in accordance with the appellate procedures. The appellate court hearing will involve the following procedures, namely, (i) procedures for opening an appellate court session (Articles 293-300, Civil Procedure Code 2015) and (ii) oral argument in appellate court session (Articles 201-315, Civil Procedure Code 2015),during this procedure, the appellate court judgment will be issued.
9. What is the period in which an action must be commenced?
KENFOX: The statute of limitation for initiating a copyright infringement lawsuit, where profit is directed at by both the plaintiff and defendant, is two years starting from the date on which the plaintiff knew that his or her right and legal interest was infringed. Where an infringement is dealt with via administrative remedy, the statute of limitation would be the same.
10. Are there any criminal offences relating to copyright infringement?
KENFOX: Yes. Infringement over copyright or related rights can be subject to criminal liability under Article 225 of Criminal Code 2015 of Vietnam which provides that:
[A person who, without the consent of the holders of copyrights and relevant rights, deliberately commits any of the following acts which infringe upon copyrights and relevant rights protected in Vietnam and earns an illegal profit of from 50 million dong to under 300 million dong or causes a loss of from 100 million dong to under 500 million dong to the holders of such copyrights and relevant rights, or with the violating goods assessed at from 100 million dong to under 500 million dong shall be liable to a fine of from 50 million dong to 300 million dong or face a penalty of up to three years’ community sentence: (a) reproducing works, phonograms or video recordings, or (b) distributing to the public copies of works, phonograms or video recordings. In the case a crime that has been committed in any of the following cases shall carry a fine of from 300 million dong to 1 billion dong or a penalty of three to six years’ imprisonment: (a) the offence is committed by an organised group; (b) the offence has been committed more than once; (c) the illegal profit reaped is 300 million dong or over; (d) the loss incurred by the holders of copyrights and relevant rights is 500 million dong or over; and (e) the illegal goods are assessed at 500 million dong or over].
The offender might also be liable to a fine of between 20 million dong and 200 million dong and prohibited from holding certain positions or doing certain works for one to five years.
Punishments incurred by a corporate legal entity that commits any of the offences specified in this article are as follows: (a) any corporate legal entity that commits an offence specified in clause 1 of this article despite the fact that it previously incurred a civil penalty or has a previous conviction for the same offence which has not been expunged shall be liable to a fine of from 300 million dong to one billion dong; (b) a corporate legal entity that commits this offence in the case specified in clause 2 of this article shall be liable to a fine of between one billion dong and three billion dong or have its operation suspended for six to 24 months; and (c) the violating corporate legal entity might also be liable to a fine of between 100 million dong and 300 million dong or is prohibited from operating in certain fields or raising capital for one to three years.
11. What is the threshold for criminal liability and what are the potential sanctions?
KENFOX: In general, administrative, civil, and criminal remedies are available to enforce copyrights in the event of infringement.
As regards administrative remedies, the principal administrative sanctioning form being imposed on a copyright infringer is the monetary fine. Apart from the principal sanctioning form, one or more of the following remedies may be imposed on copyright infringers: (i) forcible bringing out of the territory of Vietnam or forcible re-export of goods, articles or means; (ii) forcible destruction of goods or articles harmful to human health, domestic animals, plants and environment, or cultural products with harmful contents; (iii) forcible correction of untruthful or misleading information; (iv) forcible removal of infringing elements from goods, goods packages, business means or articles; (v) forcible correction of author’s name, name of the work, name of performers; (vi) forcible withdrawal of certificate of copyright registration, certificate of related-right registration; (vii) forcibly removing copies of works, performances, phonograms, video recordings, or broadcasts which are infringed in electronic form, on internet and digital environment; (viii) forcible refund of royalties, remuneration, or material benefits obtained from committing violation, to copyright or related right holders.
As regards civil remedies, Vietnamese courts shall apply the following civil remedies in handling organizations and individuals that have committed acts of infringing upon copy rights: (i) compelling the termination of infringing acts; (ii) compelling the public apology and rectification; (iii) compelling the performance of civil obligations; (iv) compelling the payment of damages; (v) compelling destruction, distribution or use for non-commercial purposes of goods, raw materials, materials and means used largely for the production or trading of infringing goods, provided that such destruction, distribution or use does not affect the exploitation of rights by copy right holders.
As regards criminal remedies, it is duly noted that the criminal liability imposed on copyright and related right violations limit only to the deliberate acts of: (i) reproducing works, phonograms or video recordings; and (ii) distributing to the public copies of works, phonograms or video recordings.
For the infringer who is an individual (a natural person), one of the following main criminal penalties may be imposed on a copyright infringer: (i) a fine of from VND 50 to 300 million or a penalty of up to 03 years’ community sentence in cases of infringement upon copyrights and related rights protected in Vietnam on commercial scale or earning an illegal profit of from VND 50 to under 300 million or causing a loss of from VND 100 to 500 million to the holders of such copyrights and related rights or the violating goods assessed at from VND 100 to under 500 million; (ii) a fine of from VND 300 million to 1 billion or a penalty of 6 – 36 months’ imprisonment if the offence committed in any of the following cases: a) the offence is committed by an organized group; b) the offence has been committed more than once; c) the illegal profit reaped is VND 300 million or over; d) the loss incurred by the holders of copyrights and related rights is VND 500 million or over; e) the illegal goods are assessed at VND 500 million or over. Apart from the main criminal penalties, the individual offender may be additionally subjected to a fine of from VND 20 to 200 million in case the monetary fine is not applied in the main criminal penalties, be prohibited from holding certain positions or doing certain works for 1 – 5 years.
For the infringer who is a legal entity, criminal remedies are as follows: (i) a fine of from VND 300 million to 1 billion if such entity infringes copyrights and related rights on commercial scale or earns an illegal profit of from VND 200 to under 300 million or causes a loss of from VND 300 to under 500 million to the holders of such copyrights and related rights, or the violating goods assessed at from VND 300 to under 500 million; earns an illegal profit of from VND 100 to under 200 million or causes a loss of from VND 100 to under 300 million to the holders of such copyrights and related rights, or the violating goods assessed at from VND 100 to under 300 million while having incurred an administrative penalty for any of the offences or having an unspent conviction for the same offence; (ii) a fine from VND 1 to 3 billion or suspension of operation for 6 – 24 months if the offense committed in any of the following cases: a) the offence is committed by an organized group; b) the offence has been committed more than once; c) the illegal profit reaped is VND 300 million or over; d) the loss incurred by the holders of copyrights and related rights is VND 500 million or over; e) the illegal goods are assessed at VND 500 million or over. Apart from the main criminal penalties, the infringing legal entity might also be liable to a fine of from VND 100 to 300 million in case the monetary fine is not applied in the main criminal penalties, be prohibited from operating in certain fields or raising capital for 1 – 3 years.