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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Argentine law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Copyrights

Remedies for infringement

Argentina

Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

Criminal remedies, particularly fines, are possible, but are not frequently applied.

Australia

The court may grant relief for an infringement of copyright by way of injunction, damages or (alternatively to damages) an account of profits. Criminal penalties are also available.

In cases of innocent infringement, where the defendant was unaware or had no grounds for suspecting that their act constituted infringement, damages are unavailable. However, in these circumstances, copyright holders may be entitled to an account of profits for revenue from the infringing works.

The court has discretion to award additional damages. In doing so, the court must consider, among other factors, the flagrancy of the infringement, the need to deter similar infringements, the conduct of the defendant, whether the infringement involved conversion of a work and the benefits that accrued to the defendant by virtue of the defendant's infringement.

Austria

Civil remedies for copyright infringement include:

  • Cessation of infringement (preliminary or permanent injunction)
  • Claim for elimination of the circumstances constituting the infringement, including the destruction of infringing copies
  • Rendering of accounts
  • Publication of judgment
  • Monetary relief (adequate consideration, damages and handover of profits)

Criminal remedies may include:

  • Monetary fine
  • Imprisonment

Preventing importation of infringing goods and cooperation of customs officers may also be invoked.

Belgium

Rights holders are entitled to remedies under Title 9 (Civil aspects of the protection of intellectual property rights) and Title 10 (Aspects of procedural law of the protection of intellectual property rights) of Book XI (Intellectual Property and Trade Secrets) of the Code of Economic Law as well as under Book XVII (Specific legal procedures) of the Code of Economic Law.  Reference should also be made to the saisie contrefaçon procedure, provided in Section 1369bis of the Judicial Code, which allows a rights holder to enter, after authorization by the judge and without prior warning, the premises of an alleged infringer or an intermediary third party in order to find evidence of and more information regarding infringements.

Monetary relief can be sought with the damages as a lump sum.  In case of a bad-faith infringement, monetary relief may also include a claim of unfair profits made, including accountability.

Finally, a number of supplementary, injunctive sanctions may be sought, such as

  • A recall or definitive removal from the channels of commerce or destruction of the infringing goods and in appropriate cases, of the materials and implements principally used in the creation or manufacture of these goods
  • The right of information, which orders the infringer to share precise information on the origin of the infringing goods or services, the distribution channels and the identity of any third parties involved in the infringement
  • The dissemination of the decision, including the displaying and publishing of the decision in full or in part

Brazil

Criminal remedies for copyright infringement include: imprisonment and monetary fine.

Civil remedies for copyright infringement include: seizure of infringing goods, suspension of their promotion and sale, daily penalty for continuing infringements, destruction of infringing goods and damages (including moral damages).

Canada

Registration is not required to seek and enforce remedies.

An owner may seek civil remedies, including injunction, seizure of goods, delivery up, an accounting of profits or general damages.

General damages may be awarded for lost sales, reasonable royalties or intangible losses. Punitive damages may be available where the infringement is particularly egregious or appalling.

Statutory damages can also be sought, ranging from $500/work to $20,000/work for infringement for commercial gain, and $100/work to $5,000/work for infringement for non-commercial purposes.

It is possible to seek preventing importation of goods that are infringing.

Criminal penalties are also available.

Chile

Author can choose to prosecute either according to criminal or civil law.

  • Author can claim damages, and also a fine of 5-50 Chilean UTM (approx. 360 – 3.600 USD)
  • Actual damages can be actual monetary loss suffered by the copyright owner and profits gained by infringer
  • Criminal conduct may be sanctioned with fines up to approx. USD 72.861 and reclusion for up to 301 days

China

When a copyright or its related rights are infringed, the rights owner can either file a complaint with copyright administrative authorities or bring a lawsuit to the People's Court.

The infringer shall, according to the circumstances of the case, undertake to cease the infringement, take remedial action, offer an apology or pay damages. Where the infringers' conduct also prejudices the public interest, the infringer may be ordered by the copyright administrative authority to cease the infringement, and the authority may confiscate the illegal proceeds, confiscate and destroy the infringing reproductions and impose a fine on the infringer. Where the circumstances are serious, the copyright administrative authority may also confiscate the main materials, tools and equipment used in the manufacture of the infringing reproductions. Where the circumstances constitute a criminal offense, criminal liability shall be imposed in accordance with the law.

The infringer shall pay damages based on the actual loss of the right holder. Where the actual loss is difficult to calculate, the damages paid may be based on the amount of the illegal proceeds. The amount of damages shall also include the reasonable expenses incurred by the right holder in stopping the infringement. If neither the actual loss of the right holder nor the illegal proceeds earned by the infringer can be determined, then statutory damages of up to ¥500,000 shall be awarded, according to the circumstances of the case.

Colombia

Copyrights may be protected under Colombian law by a Colombian judge. Nevertheless, the Colombian judge will request the Andean Court of Justice of the CAN to provide an opinion on the case, which will be applied and considered by the Colombian judge in his or her decision.

Moreover, article 56 of the Decision 351 states that the judge may order the following precautionary measures:

  • immediate cessation of the unlawful activities
  • the attachment, sequestration, confiscation or preventive seizure, as appropriate, of the copies produced in violation of any of the rights recognized by this Decision
  • the attachment, seizure, confiscation or sequestration of the apparatus or materials used for the commission of the unlawful act

Additionally, within the judgment, the court may decide and order:

  • payment, to the owner of the infringed rights, of adequate compensation or indemnification for damages sustained as a result of the infringement
  • that the offender shall bear the cost of the proceedings that he has caused the owner of the infringed right to institute
  • the permanent removal from distribution channels of the copies constituting the infringement of rights
  • criminal sanctions equivalent to those applicable to offenses of comparable gravity

Finally, copyrights are also protected by the criminal law. Therefore, the infringements might be investigated by the General Prosecutor and penalized by the criminal courts with fines between 26,66 and 1,500 monthly minimum legal wages (US$7,359 and US$424,058 approximately) and prison sentences from 4 to 7 years.

Note: Colombia's judicial Branch is divided in the following jurisdictions: Ordinary Jurisdiction (Jurisdicción Ordinaria), Administrative Jurisdiction (Jurisdicción de lo Contencioso Administrativo), Constitutional Jurisdiction and other Special Jurisdictions. The Ordinary Jurisdiction rules on matters related to civil, labor, criminal and agrarian law.

Czech Republic

Copyright registration is not required in order to claim damages for infringement. It is possible to seek preventing importation of infringing.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Denmark

Remedies for copyright infringement include equitable and reasonable compensation for use, as well as compensation for losses and further injuries caused by negligent or willful infringement.

It is possible to obtain a court order for destruction of infringing products. An optional initial step is to obtain a preliminary court order for the confiscation of infringing products and equipment used in the manufacture thereof.

Criminal penalties are possible.

Finland

Compensation for copyright infringement includes a reasonable, non-punitive compensation for the use of the copyright, typically calculated on the basis of what an applicable license would have cost. In case of negligence, compensation for other damages may also be awarded. Reasonable legal costs can also be demanded from the infringing party.

Injunction can be granted by a court in infringement cases, as well as destruction of infringing goods. Criminal penalties such as fines and even imprisonment are possible.

The Finnish Copyright Council gives legally non-binding statements on copyright issues upon request. The council opinions are free of charge and available to both companies and individuals.

France

The author is entitled to enforce copyright.

Copyright infringement actions may be brought before specialized courts, usually after having gathered evidence via an infringement seizure (saisie-contrefaçon), by way of an action on the merits and a summary action, in order to obtain an interlocutory injunction.

An injunction against the further manufacture, import, offer, sale, use or storage of the work can be ordered with immediate enforceability and impose penalties.

In determining the amount of damages to be awarded (compensatory – not punitive), French courts take into account distinctively:

  • The negative or detrimental economic consequences of infringement, including lost gains and losses suffered by the rights holder
  • The moral harm suffered by the rights holder
  • The profits earned by the infringer, including intellectual, tangible and promotional investments saved or not incurred by the infringer.

However, as an alternative and by request of the author, the court can set the damages as a lump sum. The lump sum must be greater than the royalties or rights that would have been owed if the infringer had asked for the authorization to exercise the right that has been violated. This amount is not exclusive of compensation for moral harm caused to the author.

Remedies also include, notably, the recall, destruction or confiscation of the infringing products and the publication of the judgment.

Legal costs and attorneys' fees can be recovered (at the discretion of the judge).

Before the criminal courts, an infringer faces a fine of up to €300,000 (or €750,000 in certain circumstances) and imprisonment for up to 3 years (7 years in certain circumstances).

Germany

As against any person who infringes a copyright or any other right protected by the Copyright Act, the injured party may seek to enjoin the infringement. The injured party is also entitled to demand destruction, recall or handover of the illegally prepared or distributed reproductions.

If the infringement was intentional or the result of negligence, compensation can be claimed. The compensation might include the profit realized as a result of the infringement or the lost profit of the copyright owner. The compensation can also be calculated on the basis of the remuneration that the injured party would have received if the infringing party had been granted the necessary exploitation right. In order to calculate damages, the rights holder can ask for rendering of accounts.

If the infringement was neither intentional nor a result of negligence, the infringing party has the right to provide pecuniary compensation for the injured party instead of fulfilling the other claims the injured party has (ie, claim to cease the infringement, claim to destruction, recall or handover), provided that fulfilling such claims would cause disproportionate damage to the infringing party. The amount of compensation should be an amount that would be reasonable if the use of the copyright was granted to the infringing party by contract. Statutory costs for legal prosecution (court costs and attorney fees) are recoverable up to a cap established by German law.

Statutory costs for legal prosecution (court costs and attorney fees) are recoverable up to a cap established by German law.

Hong Kong

Available civil remedies include damages, covering both economic loss and non-economic loss, order for delivery up, an account of profits and injunctive relief. The court may award additional damages having regard to all of the circumstances of the case including the flagrancy of the infringement and any benefit accruing to the defendant by reason of the infringement.

Relief for groundless threats of infringement is available. Relief may be in the form of a declaration that the threats are unjustifiable, an injunction against the continuance of the threats or damages for any loss that has been sustained by the threats.

Criminal sanctions including fines and imprisonment are possible.

Hungary

No prior registration required whatsoever for recourse to remedies in the event of copyright infringement.

The Copyright Act contains specific remedies – eg, the following can be requested from the court: establishing the infringement, claim for cease and desist, amendment declaration, providing information on the infringement, termination of the injurious situation and restoration of the situation preceding the infringement, and among others confiscating or destroying the products affected by the infringement and also the tools and materials used for the infringement.

In regards to financial remedies, compensation for damages according to the civil law and restitution of the economic gains achieved through the infringement can be requested. According to the actual court practice the minimum of the economic gains achieved with the infringement is the amount of the unpaid royalty.

Attorneys' fees of the copyright holder in a copyright infringement suit are recoverable although the court has the power to reduce such fees.

It is also possible to prevent importation and distribution of goods that are infringing.

Injunctive relief is also a possible remedy that can be requested before initiating a lawsuit. Ex parte injunctive relief can also be requested.

Criminal penalties available.

India

The owner of a copyright is entitled to civil, as well as criminal remedies for infringement. Civil remedies consist of injunction, civil damages or account of profits. Statutory damages are not available under the Copyright Act.

Criminal penalties range from imprisonment for a term of six months to three years, and with fines that are not less than INR50,000 and up to INR200,000. The Copyright Act also provides for enhanced penalties in case of second or subsequent convictions. It states that a person convicted of an offense for the second time, or for every subsequent time, faces imprisonment for a term not less than one year, extendable to three years, and a fine of not less than INR100,000, extendable up to INR200,000.

Indonesia

Compensation, injunction or a combination of the two may be ordered by the Commercial Court as remedies for infringement. Criminal sanctions are in the form of imprisonment and/or fine may also apply for criminal act of the Copyright Law.

Ireland

The primary remedies available to a copyright holder in relation to infringement are:

  • Injunctive relief
  • Damages
  • An account of profits and/or
  • Delivery up of the infringing material, seizure and destruction

In some circumstances, criminal penalties such as fines and imprisonment may be imposed  for copyright infringement. Additionally, a copyright holder has rights to inform customs authorities of infringement thereby putting them on notice of counterfeit goods with a view to preventing importation of infringing materials.

Israel

An infringement of copyright or a violation of moral rights is a tort. In principle, in actions regarding such rights, remedies under the law of torts apply. Remedies include injunctions, monetary awards, statutory damages and the seizure and disposal of infringing materials.

With respect to monetary awards, two main routes are available:

  • Actual damages and recovery of profits gained by the infringer
  • Statutory damages (at the claimant's request, the court may award damages without proof of injury for each infringement, in an amount not to exceed ILS 100,000 (approximately US$27,500))

In a copyright infringement action, the claimant is presumptively entitled to injunctive relief, unless the court finds grounds that justify not ordering such relief.

The remedy of declaratory judgment is available. Under the statutory provision, courts have an independent and unlimited discretion in granting declaratory relief.

Italy

Any person having reason to fear for the infringement of rights belonging to him under the Italian Copyright Law, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that his right is recognized and the infringement is put to an end. In such circumstances, the right holder will be entitled to remedies, including injunction and damages.

A popular means of protection is the so-called "search order," which allows copyright owner to collect evidence of the infringement through a raid in the presence of a bailiff and, where necessary, of an expert appointed by the court. In order to stop the infringement, the court may also order the seizure of the works or the products and of all matters constituting an infringement of the copyright.

Criminal penalties may also apply under certain circumstances.

Japan

No registration is required to seek remedies for infringement.

Monetary damages can be compensated. There are certain statutory presumptions to calculate damages but punitive damages are not available under Japanese law.

Injunctive relief, including seeking/preventing importation of infringing goods, is available as a remedy.

For moral rights, measures to correct and restore the honor and reputation of the author or performer are available (eg, publishing an apology in a newspaper).

Each joint owner can seek a remedy without the other owner's consent.

Criminal penalties are possible for infringement of copyright.

Luxembourg

Given the implementation of the Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004 on the enforcement of intellectual property rights, right holders are entitled to similar remedies under most intellectual property laws in the European Union, which differ only slightly and which warrant both (interim and final) injunctive and monetary relief.

The possible civil and criminal remedies for copyright infringement are set out under Sections 8 and 9 of the Copyright Act.

Civil Remedies are:

  • Cessation of infringement
  • Publication and posting of judgment
  • Monetary fine (2059-2066 Luxembourg Civil Code)

Reference should also be made to the saisie-contrefaçon procedure (Section 8 of the Copyright Act), which allows a rights holder to enter, without prior warning but after authorization by the judge, the premises of an alleged infringer or an intermediary third party in order to find evidence of and more information regarding infringements.

Criminal remedies are:

  • Monetary fine
  • Confiscation or destruction of infringing goods or goods that directly served the purpose of committing the infringements at hand
  • In case of a bad-faith/fraudulent infringement:
    • Imprisonment
    • Monetary fine
    • Confiscation and possible destruction of infringing goods
  • Heavier sanctions in case of repeated infringement:
    • Possible combination of imprisonment and monetary fine
    • Permanent or temporary closure of the establishment ran by the condemned party for a maximum period of 5 years
    • Publication and posting of judgment

Mexico

Infringement of copyright may lead to the payment of damages and losses, which shall be determined by a court of law based on actual damage and loss.

Criminal penalties may be imposed.

Netherlands

Copyright holders are entitled to injunctive and monetary relief that conform with the Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004 on the enforcement of intellectual property rights.

Monetary relief entails the possibility to claim damages as a lump sum or a payment of infrongement profits made. A number of supplementary, injunctive measures are available, such as:

  • A recall, removal from the channels of commerce or destruction of the infringing goods and in appropriate cases, of the materials and implements principally used in the creation or manufacture of these goods
  • The right of information, ordering that the infringer discloses of information about the origin of the infringing goods or services, the distribution channels and the identity of any third parties involved in the infringement
  • The publication of the decision in full or in part

A European rule of exhaustion applies, which means that if a specimen (particular copy) of literary, scientific or artistic work, has been brought into circulation by means of transfer of ownership for the first time with the consent of the author or his assignees within the community, then the bringing of that specimen (particular copy) into circulation in any other way, with the exception of hiring and letting, shall not be considered as an infringement of the copyright.

According to Article 1019h of the Dutch Code of Civil Procedure, generally the losing party is obliged to pay the legal costs of the winning party. However, the judge has the authority to decide that these costs will be partly compensated by winning party.

New Zealand

The copyright owner (or, in some circumstances, licensee) may bring proceedings in court for infringement of copyright and the relief available includes damages, injunctions and/or an account of profits. In certain situations criminal proceedings may be brought for copyright infringement. In addition, infringement of moral rights are actionable by the person entitled to the right and relief by way of damages and injunction is available.

In proceedings where it is proven that the defendant did not know and had no reason to believe that copyright existed in the work, damages will not be available.

The court may, due to the flagrancy of the infringement and any benefit accruing to the defendant due to the infringement, award additional damages.

Norway

Remedies for copyright infringement include equitable and reasonable compensation for use, as well as compensation for losses and further injuries caused by negligent or willful infringement.

It is possible to obtain a court order for destruction of infringing products. An optional initial step is to obtain a preliminary court order for the confiscation of infringing products and equipment used in the manufacture thereof.

Criminal penalties are possible.

Poland

The remedies available to a copyright holder whose copyrights have been infringed include the right to seek:

  • The cessation of the infringement
  • The removal of the effects of the infringement
  • Compensation for damage incurred – on the basis of the general provisions of Polish law or by the payment of a lump sum equal to two times the value of the license fee
  • The return of any benefits gained

Regardless of the above, the copyright holder may also request that the infringer make a single or multiple statements in the media or that the ruling be published in a manner ordered by the court.

Additionally, at the request of the copyright holder, the court may decide on the future of the infringing goods and the tools and materials used for their manufacturing. In particular, it may order that they be withdrawn from the market, that they be given to the copyright holder or that they be destroyed.

The injured party is not obliged to send a cease and desist letter to the infringer before the initiation of a court dispute. However, before the initiation of infringement proceedings, a copyright holder may file a request for a preliminary injunction (which may take the infringing party by surprise and increase the chances of seizing the infringing goods). A preliminary injunction provides the opportunity to secure the situation of the copyright holder for the entire duration of the civil proceedings since the infringer may be prevented from offering and marketing the infringing goods and they would be seized and held until the civil proceedings conclude with a final judgment.

The copyright holder may file a request for information (also before the main proceedings when infringement is highly probable) required to pursue claims against the infringer.

Violation of copyrights may also result in criminal sanctions, eg, the distribution of a third person's work in its original version or as a derivative work, a performance, a phonogram or a broadcast or the fixing or reproducing of such a work for the purpose of distribution, may be subject to a fine, a restriction of liberty or imprisonment of up to two years.

Portugal

If a copyright infringement is intentional or negligent, the agent shall be obliged to compensate the injured party for damages resulting from the infringement.

The determination of the amount of the compensation will take into consideration the profit realized by the infringer as a result of the infringement, the loss of profit and financial loss suffered by the injured party, as well as the costs borne by the injured party related with the protection of copyright rights and the costs with the investigation and with the termination of the infringement.

The amount of the compensation shall also take in consideration the personal injury caused by the conduct of the infringer, the circumstances of the infringement, the seriousness of the offense and the degree of the illicit disclosing of the work.

Criminal penalties are also possible for infringement of copyright and may be punished with imprisonment for up to three years or a fine.

Romania

Copyright registration is not required to claim damages for infringement.

Actual damages may consist of actual monetary loss suffered by the copyright owner and profits gained by infringer. In establishing the damages, the court takes into account criteria such as the negative economic consequences, particularly the non-earned benefit, the benefits earned unlawfully by the offender or other elements, such as the moral damages caused to the copyright holder. If these criteria may not be applied, the court may grant damages representing the triple of the amounts that would have been lawfully owed for a similar lawful utilization.

Attorneys' fees of the copyright holder in a copyright infringement suit are available even if the work is not registered. Injunctive relief is also a possible remedy, including the ability to enjoin importation of infringing goods.

Copyright infringement may be considered a criminal offense in certain conditions punishable with criminal penalties or imprisonment.

Russia

The copyright owner or exclusive licensee is entitled to the following primary remedies:

  • Demand to stop infringement
  • Demand to redress damages in full
  • As an alternative to claiming damages, to demand the monetary compensation in the amount from 10,000 to 5,000,000 Russian Rubles, or in double amount of cost of originals of the work or imputed license fee
  • Demand seizure of media bearing infringing objects

Saudi Arabia

A wronged party can seek damages/compensation for infringement of its rights and damage suffered. In addition, the Copyright Law stipulates certain penalties for infringement, including:

  • A warning to the offender
  • A fine not exceeding SAR 250,000
  • Naming and shaming of the violator (at the violator’s expense) by a method deemed appropriate by the competent committee (which is formed by decision of the Minister of Culture and Information to review violations)
  • An injunction against the printing, production, publication or distribution of the work infringed upon, in addition to impounding of related copies and materials, and any temporary measure the competent committee finds necessary to protect the copyright works until a final decision is reached regarding the complaint/offence
  • A temporary shutdown of the offending establishment for a maximum of two months
  • A suspension from participating in specific commercial events (if the infringement was discovered during any such commercial events) for a period of up to two years
  • Confiscation of violating goods/copies of the work and the materials used or intended for use in copyright infringement
  • A jail term of up to six months

It is notable that repeat offences of infringement may result in doubling of maximum penalties.

Singapore

Copyright infringement occurs when one of a copyright owner's exclusive rights are violated (ie, when another party copies, distributes, performs or displays all or part of a copyright work without the permission of the copyright owner). To establish copyright infringement, a copyright owner must establish proof of copyright ownership and proof of copying.

Infringement also occurs if a person imports infringing copies for sale or distribution, sells (including distributes for trade or any other purpose to an extent that affects prejudicially the copyright owner) or lets for hire infringing copies or offers infringing copies for sale or hire by way of trade.

The owner of a copyright may bring an action for an infringement of the copyright. The types of remedies available include injunction, a monetary award (eg, damages, an account of profits, statutory damages) or an order for delivery of and disposal of the infringing copies.

Manufacture of infringing copies for sale, sale of infringing copies, possession or importation of infringing copies for trade or any other purpose to such an extent as to affect the owner prejudicially and willful infringement of copyright for the purposes of commercial advantage and/or to an extent that is significant are criminal offences, subject to fines and/or imprisonment. 

Slovak Republic

The Copyright Act does not specify the amount of damages which the author may claim towards the infringing party. With respect to damages of the author whose rights are unlawfully interfered or whose rights are threatened, the Copyright Act only determines that such an author may claim compensation of non-pecuniary damage (including financial compensation), damages and unjust enrichment towards such infringer.

However, pursuant to the Civil Code, in the case of a breach or threat of an intellectual property right which may be the object of a license agreement (such as copyright), the amount of damages shall be at least equal to the remuneration for a license granted at the time of unauthorized interference with the right.

The author may seek the prohibition of the threat to his/her copyright and the prohibition of the unauthorized interference with his/her copyright.

In addition, criminal sanctions pursuant to the Criminal Code shall apply.

South Korea

Remedies available for infringement are:

  • Criminal action
  • Preliminary injunction
  • Permanent injunction
  • Damages

Under the CA, infringement of a copyright is punishable by imprisonment of up to five years or a fine of up to KRW50 million (US$50,000), as determined based on the particulars of each case.

In addition, the CA also provides for imprisonment of up to three years or a fine of up to KRW30 million (US$30,000), if:

  • A claimant uses the information on an infringer that has been received from an online service provider for purposes other than the intended purpose of pursing a legal action against the infringer
  • A person manufactures or distributes equipment that descrambles or decodes encrypted broadcast signals
  • A person forges copyright labels to be attached to a work (eg, a DVD), or transacts labels beyond the permitted scope or
  • A person emits signals to a third party without legitimate authority before the work is broadcast

Also, a person who watches, listens to or transmits illegally descrambled broadcast signals or records or publicly transmits a cinematographic work on video tape without receiving proper permission from the copyright holder will also face up to one year imprisonment or a fine of up to KRW10 million (US$10,000). 

The CA generally provides copyright holders with the ability to claim for damages and the right to demand restoration of reputation, depending on what may be appropriate given the nature of infringement. 

The CA introduces a system of statutory damages, which takes into account the difficulty in assessing the amount of actual damages suffered as a result of copyright infringement. Under this system, a copyright holder may now claim up to KRW10 million (US$10,000) in statutory damages (or KRW50 million (US$50,000) for intentional copyright infringement for profit) for each copyrighted work.

Another alternative is to seek administrative remedies through the Ministry of Culture, Sports and Tourism, which grants to certain government officials the authority to confiscate and destroy any illegal or unauthorized reproduction of copyrighted works. The officials may also order the infringer to delete any illegal or unauthorized reproduction online.

Spain

The owner of a copyright may bring civil and criminal actions against infringers before the corresponding courts.

Civil actions, governed by the Spanish Civil Procedure Law, should be exercised via an ordinary trial. The owner whose rights have been infringed may claim:

  • The cessation of the infringing acts
  • Damages
  • Seizure of the infringing goods
  • To be awarded the seized objects or their means of production
  • All necessary steps to prevent the continuation of the infringement
  • Publication of the judgment against the infringer

The Criminal Code also includes measures such as fines or penalties of prison depending on the seriousness of the harm. These measures have been recently modified and further strengthened, including prison sentences up to six years as set out in Articles 270 and 271.

According to the Royal Decree 1/1996 on Intellectual Property, a copyright holder may apply for precautionary measures against the unlawful activity of an infringer and claiming reparation for material and moral damages caused. He may also request the publication or dissemination, in part or in full, of the judicial resolution or arbitration award in the media at the infringer's expense. He may likewise apply, on a prior basis, for the ordering of precautionary measures for immediate protection.

Administrative enforcement measures have been introduced over the last years to support right holders.

Sweden

Remedies for copyright infringement include equitable and reasonable compensation for the use, as well as compensation for losses and further injuries caused by negligent or willful infringement. Costs and reasonable attorneys’ fees can also be recoverable.

It is possible to obtain a court order for destruction of infringing products and equipment used in the manufacture thereof, as well as to seek to prevent importation of goods that are infringing.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Switzerland

Remedies for copyright infringement include declaratory actions, actions for performance, damages, confiscation and destruction.

Actual damages can be monetary loss suffered by the copyright owner or profits gained by the infringer.

Injunctive relief and publication of judgments are also possible remedies.

It is also possible to seek the prevention of importation of infringing goods.

Criminal penalties are also possible.

Taiwan

Available civil remedies:

  • Claim for damage for economic loss and non-economic loss  (including restoration of author's reputation)
  • Request to stop or prevent infringement
  • Request for destruction or other necessary disposition of the infringing articles, or articles used in infringement
  • Demanding placement in a newspaper or magazine of all or part of the relevant judgment rendered for such infringement
  • Application to the customs authorities to suspend the release of import or export goods that infringe the copyrights

In addition, criminal punishments (such as imprisonments, detention, fine, confiscation and/or disclosure of judgment) are possible. 

Ukraine

A copyright owner may seek the following remedies under Ukrainian law in case of infringement of its rights:

  • Recognition and restoration of rights cessation of infringing acts
  • Reimbursement of moral or monetary damages
  • Recovery of revenue received as a result of the infringement
  • Payment of compensation (a lump sum) in the amount of double (or in case of intentional violation - a triple) amount of remuneration or commissions that would have been paid if the infringer would apply for permission to use the disputed copyright object
  • Seizure of infringing goods
  • Prohibition of import
  • Publication of court decision on the case concerning copyright infringement

Since April 2017, Ukraine has introduced a notice and take down procedure in relation to online copyright infringements.

Further, under the Criminal Code of Ukraine dated April 5, 2001 criminal penalties for copyright infringements are also available.

United Arab Emirates

The court may grant remedies in the event of a successful claim for copyright infringement. These include:

  • Orders to gather evidence
  • Orders to seize works copies and the means of infringement
  • Orders to stop certain acts
  • Orders to assess profits made as a result of the infringement

No provision is made under the Copyright Law for the payment of damages. Instead, the rights holder must resort to other laws (such as the Commercial Transactions Law) to claim compensation.

Copyright infringement is also a criminal offense, and on conviction, the court may order the detention of the infringer for no less than two months as well as order him/her to pay a fine of no less than AED 10,000 (approx. USD 2,700). The court may order confiscation and destruction of seized copies and equipment and the publication of the judgment in the newspapers. The court also has the right to close the business that committed the infringement for up to six months.

United Kingdom

Principal remedies are injunctions (or interdicts in Scotland), damages or an account of profits, delivery up, seizure, or destruction of infringing goods. No statutory damages are available. The starting point for the damages calculation is generally a reasonable license fee. Aggravated damages for flagrancy are possible.

It is also possible to prevent the import and export of infringing copies. Criminal penalties are also possible for certain infringements.

United States

Copyright registration is required to claim statutory damages for infringement. Absent registration, only actual damages may be claimed.

Statutory damages range from US$750 to US$30,000 perwork, at the discretion of the court. In cases where the plaintiff can prove willful infringement, damages can be as high as US$150,000 per work; conversely, in cases where the defendant can prove the infringement was innocent, the court can reduce the damages award to a sum of not less than US$200 per work.

Actual damages can be actual monetary loss suffered by the copyright owner and profits gained by infringer.

Attorneys' fees of the copyright holder in a copyright infringement suit are available only if the work is registered. Injunctive relief is also a possible remedy, including the ability to enjoin importation of infringing goods.

Criminal penalties are also possible.