Questions on copyright in Vietnam
I. Civil Action against Copyright Infringement in Vietnam
1. Please provide us with your insights on primary/direct liability position of the operator of a stream ripping site for copyright infringement under Vietnamese law:
Copyright and copyright related rights are categories in intellectual property rights which is codified and recognized under Vietnam Intellectual Property Law 2005, revised in 2009 (“Vietnam IP Law”).
Copyright related rights (related rights) are a special type of copyright and are separate from the author’s rights. Related rights are defined as rights of an organization or individual to performances, audio and visual fixation, and broadcasts and satellite signals carrying coded programmes (Article 4.3, Vietnam IP Law).
Published audio and visual fixation means audio and visual fixation which has been published with the permission of the related right holder in order to distribute it to the public in a reasonable amount of copies (Article 4.9, Vietnam IP Law).
Related rights shall arise at the moment a performance, audio and visual fixation, broadcast or satellite signal carrying coded programmes is fixed or displayed without causing loss or damage to copyright (Article 6.2, Vietnam IP Law).
Audio and visual fixation shall be protected if it belongs to audio and visual fixation producers protected pursuant to an international treaty of which the Socialist Republic of Vietnam is a member (Article 17.2, Vietnam IP Law).
Producers of audio and visual fixation shall have the exclusive right to exercise, or to authorize others to exercise, the following rights: (a) to directly or indirectly copy their audio and visual fixation and (b) to distribute to the public their original audio and visual fixation and copies thereof by sale, rent or distribution by whatever technical means which are accessible by the public. Producers of audio and visual fixation shall be entitled to material benefits when such recording is distributed to the public (Article 30, Vietnam IP Law).
Deliberately destroying or de-activating the technical solutions applied by the related right holder to protect his or her rights” is deemed an act of infringement over related rights (Article 35.7, Vietnam IP Law)
Where an international treaty of which the Socialist Republic of Vietnam is a member contains provisions different from those in this Law, such international treaty shall apply (Article 5.3 of Vietnam IP Law). Vietnam is a signatory to the Berne Convention on copyright. Thus, Bern Convention, in principle, serves as an applicable source of law to settle a copyright/related right infringement case in Vietnam if Vietnam national copyright legislation contains provisions different from Bern Convention.
The operator of a stream ripping site which converts licensed streamed content into unlicensed downloads, allows people to download converted files from YouTube links and other sources for offline use without permission from the owner of copyright/related rights. Act of the operator of a stream ripping site has constituted an infringement over related rights of the owner of the visual fixation in that he/she circumvented the copy-protection technology on a visual fixation in order to rip’ it to, for example, mp3 format for public use.
(ii) Chance of success in taking actions against of the operator of a stream ripping site for copyright infringement under Vietnamese law
The operator of the stream ripping sites which convert licensed streamed content into unlicensed downloads, allows people to download converted files from YouTube links and other sources for offline use without permission from the owner of copyright/related rights. Act of the operator has constituted an infringement over related rights of the owner of the visual fixation in that he/she circumvented the copy-protection technology on a visual fixation in order to rip it to, for example, mp3 format for public use.
Generally, as owner of copyright/related rights in Vietnam, he/she is entitled take the following measures for protection of his/her copyright/related rights in Vietnam:
- Taking technological measures to prevent infringement of copyright;
- Requesting organizations, individuals that have committed acts of infringement of copyright/related rights to terminate the infringing acts, apologize, publicly rectify and compensate damages;
- Requesting the competent state agencies to settle acts of infringement of copyright;
- Initiating a lawsuit at a competent court or an arbitrator to protect their legitimate rights and interests.
As a matter of practice, settling copyright or related rights infringement case indicates that (i) disputes on copyright/related rights remain a relatively new and complicated issue in Vietnam, (ii) not many copyright/related right infringement cases have been settled in Vietnam under civil and/or administrative measure, (iii) administrative bodies (Inspectorate of Ministry of Culture, Sports and Tourism, Market Management authority, Police, etc.) as well as courts in Vietnam are not familiar to this type of infringement. No specialized IP court has been established in Vietnam up to now. Court judges and administrative officers in Vietnam generally lack knowledge and experience in handling copyright/related right cases. Thus, the enforcement authorities are reluctant to determine an act amounts to copyright infringement if it is not a very clear case.
In light of the foregoing, negative outcomes were reported when taking enforcement actions against copyright/related right infringement.
The foregoing fact is believed to pose a lot of difficulties to the owner of copyright/related right holder in case copyright infringement proceedings are brought in Vietnam.
2. Please let us know the secondary liability position of stream ripping sites in respect of infringements carried out by their users in downloading infringing files
Currently, Vietnam IP Law only governs acts of IPR infringement which are direct, but do not regulate acts of indirectly infringing upon intellectual property rights causing damage to owners. There is no secondary/contributory infringement provided for under Vietnam IP Law.
However, some regulatory provisions guiding the implementation of the IP Law regarding “secondary” infringers are found, for example, in 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 and still effective now). Under this joint circular, intermediary service providers are obliged to, among others, 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.
In addition, intermediary service providers are liable to pay damages due to their copyright or related rights violation 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.
In light of the foregoing, as a service provider, the owner of stream ripping sites in Vietnam may be sued for claiming damages under civil proceedings in Vietnam.
3. Please let us know the type and scope of relief available, including preliminary and final relief and damages
Copyright infringement may be dealt with under administrative route, civil route or criminal route. 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 remedies may be imposed on copyright infringers: (i) forcibly removing copies of works, performances, phonograms, video recordings, or broadcasts which are infringed in electronic form, on internet and digital environment; (ii) forcible refund of royalties, remuneration, or material benefits obtained from committing violation, to copyright or related right holders
As regards civil remedies, Vietnamese courts may apply the following civil remedies in handling organizations and individuals that have committed acts of infringing upon copyrights: (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.
Preliminary and final relief and damages
Under civil proceedings, preliminary injunctive relief has its legal basis in Articles 207 of Vietnam IP Law and Article 114 of the 2015 Civil Procedures Code. Under administrative proceedings, preliminary injunctive relief is provided in Article 215 of Vietnam IP Law and Article 119 of Law on handling of administrative violations.
Despite availability of preliminary injunctive relief in conformity with administrative/civil measures, courts and administrative enforcement authorities have never awarded any injunctive relief.
While the use of preliminary injunctive relief has a clear legal basis in Vietnamese law, permanent injunction is not that case. What is normally stipulated is a cessation of the infringement, but not the court order to never commit the infringement again in the future.
Claim for damage compensation in Vietnam
In principle, damages should be recoverable in Vietnam. However, practice indicates that it is often not easy to claim for damage compensation as desired by the IPR holder in Vietnam. To claim for damage compensation, it is required that the IPR holder must provide the competent courts with evidence of actual loss directly caused by the infringer. The proof of damage should be clear and legitimate evidence, showing the direct causal relation between the infringement and the damage.
4. Competent court and the estimated length of time to obtain a decision at first instance
Pursuant to the Civil Code 2015, the Civil Procedure Code 2015 and other legal instruments, IPR holders can file civil proceedings against infringements of their rights and claim for compensation in Vietnam courts. The court of jurisdiction over IP infringements and disputes is the provincial People’s Court where the defendant resides (Article 39, Civil Procedure Code 2015).
In practice, it normally takes about 18-24 months or even longer to obtain the first instance court’s verdict.
5. The level of evidence which would be required to proceed with a claim for copyright infringement, including whether preparing a technical report on the websites and whether expert evidence in the form of a witness statement as to how the websites work is necessary.
Given that copyright and related rights remain a relatively new and complicated issue in Vietnam and enforcement officers in Vietnam generally lack knowledge and experience in handling copyright/related right cases, it is strongly recommended to provide persuasive evidence, supporting our infringement claim and enabling the enforcement officers in Vietnam to be confident in accepting to handle the case. In this respect, we think that IFPI should prepare (i) a technical report on the websites, (ii) a witness statement from IFPI as to how the websites work. In case the court in Vietnam requires an external expert in Vietnam, we will advise you accordingly.
II.Criminal Action against Copyright Infringement in Vietnam
1. How if we decided to proceed with a criminal case in terms of:
a. Next steps
Under the Criminal Procedure Code and the Penal Code, an IP criminal case shall only be instituted at the request of a copyrights/related rights holder as the victim of an IP criminal case.
To handle an infringer for his/her infringement act over copyrights/related rights under criminal procedure, the following actions shall be taken:(i) Institution of a criminal case;
(ii) Investigation of a criminal case;
(iii) Issuance of a decision by procuracy to prosecute the accused before
court by an indictment;
(iv) Hearing in a criminal case (at the first instance court and the appellate
court, if any);
(v) Execution of a criminal verdict
b. The level evidence which would be required;
As advised concerning evidence for civil proceedings above, given that copyright and related rights remain a relatively new and complicated issue in Vietnam and enforcement officers in Vietnam generally lack knowledge and experience in handling copyright/related right cases, it is strongly recommended to provide persuasive evidence, supporting our infringement claim and enabling the enforcement officers in Vietnam to be confident in accepting to handle the case. In this respect, we think that (i) a technical report on the websites, (ii) a witness statement as to how the websites work should be provided. In case the court in Vietnam requires an external expert in Vietnam, we will advise you accordingly.
3. The timing; and
In practice, it normally takes about 18-24 months or even longer to obtain the first instance court’s verdict.
It is noted that generally, the fixed fee ranges from around US$20,000-25,000 for obtaining each court’s verdict depending on the nature and complicatedness of the IP infringement.
III. Cease and Desist Letter
1. Is it typical in Vietnam to send a cease and desist letter concerning copyright infringement?
Cease and Desist Letter (“C&D letter”) is not required before bringing the case to enforcement authorities in Vietnam for settlement. However, in some cases, it is cost-effective and time-efficient. Considering the enforcement of copyright/related rights through the enforcement authorities of Vietnam can be difficult, costly and lacking in certainty of outcomes, we think that we shall firstly focus on issuing a C&D Letter to the infringer. The C&D letter puts the infringer on notice of your concerns, explains the nature of the infringement, and possible consequence that they may face if they do not stop some actions. Our experience is that C&D letters are highly effective when they are accompanied by persistent follow-up. In our most recent warning letter campaign, most of infringers issued with a C&D letter and then subsequently chased with follow-up calls either provided us with an undertaking or ceased the infringing activity.
To put more weight over the case, some court cases which have been settled successfully in other countries should also revealed. The Vietnamese translation of brief court verdicts may be supportive. Our C&D Letter may also be carbon copied to the Police where the infringers are resided to make more pressure them to obtain their voluntary compliance.
2. What options to begin a countersuit upon receipt of our letter? Are there any specific legislative provisions in respect of making threats of infringement?
To begin a countersuit upon receipt of our letter, as an alleged infringer, the operator may submit/present argument, evidence and/or documents to prove they did not infringe on the owner’s copyright/related rights. The following defences may be used in Vietnam:
- Arguments on non-infringement in that the site owner just provides a tool. The tool itself cannot induce an infringement and it is the users who wishes to obtain, an MP3 file, for example, use the tool to trespass on copyright/related rights. Thus,
- Obtaining expert opinions on unlikelihood of copyright/related rights infringement.
No provision on making threats of infringement is made available in the laws of Vietnam. However, if the enforcement action by the IPR holders is proved groundless, it may place them at a certain risk of committing act of “causing disruption to the business activities of another enterprise” as provide under Article 39.5 of Law on competition of Vietnam. However, as a matter of practice, we have not ever heard such a case.
- A Practical Guide for Copyright Related Matters in Vietnam
- Guideline for Copyright issues in Vietnam
- Difference between Copyright and Industrial Design Right