Handling intellectual property infringement on websites

The explosive growth of the internet has brought many benefits to society; however, it has also created a potential environment for intellectual property infringements. The unauthorized use of copyrighted content on websites is one of the most pressing issues, causing damage to individuals and organizations that own rights and affecting the general order on the network. The following article by Viet An Law will give clients advice for handling intellectual property infringement on websites under the current Vietnamese IP law.

Intellectual property infringements on website

Intellectual property infringement is the act of illegally using another person’s intellectual property without their consent or authorization. Intellectual property infringement on websites can be manifested in the following common forms:

Acts of infringement of copyright and related rights

According to Article 66 of Decree 17/2023/ND-CP, some types of acts of copyright and related rights infringement on websites include:

• Infringement of the right to name a work: Changing the name of a work without permission from the author or co-author;
• Infringement of the right to name or name on a work: Impersonating the author, forging the author’s name or signature, not stating or intentionally misrepresenting the author’s name and origin of the work when exploiting or using it;
• Infringement of the right to protect the integrity of a work, causing harm to the honor and reputation of the author: Distorting a work; modifying or cutting a work, causing harm to the honor and reputation of the author;
• Infringement of copyright: Duplicating or creating copies of a work without the owner’s consent; copying parts of a work, excerpts, or assemblies without the permission of the copyright owner;
• Infringement of the right to broadcast and communicate to the public: Broadcasting and communicating to the public works via telecommunications networks and the Internet without the consent of the copyright owner;
• Intentionally deleting, removing, or changing rights management information without the permission of the author or copyright owner when knowing or having reason to know that performing such act will incite, enable, facilitate, or conceal acts of copyright infringement;…

Acts of infringement of industrial property rights

According to Articles 126, 127, and 129 of the Vietnam Law on Intellectual Property, some types of acts of infringement of industrial property rights on websites include:

• Using a protected invention, a protected industrial design, or an industrial design that is not significantly different from that design, a protected layout design, or any original part of that layout design during the term of validity of the protection certificate without the permission of the owner;
• Using a sign that is identical to a protected trademark for goods or services that are identical to the goods or services in the list registered with that trademark;
• The act of using a trade indication that is identical or similar to another person’s trade name that has been used before for the same type of product or service or similar products or services, confusing the business entity, business establishment, or business activities under the trade name;
• Disclosing or using information that is a trade secret without the permission of the owner of that trade secret;
• Using protected geographical indications for products similar to products bearing geographical indications to take advantage of the reputation and prestige of geographical indications;…

Unfair competition behaviors

• Possessing or using a domain name that is identical or confusingly similar to another person’s protected trademark, trade name, or geographical indication that one does not have the right to use with bad intentions, taking advantage of the prestige and reputation of the corresponding trademark, trade name or geographical indication to gain illegal profits.
• Using trade indications that confuse the business entity, business activities, or commercial origin of goods and services

Measures to handle infringement

According to Clause 1, Article 199 of the Law on Intellectual Property, any organization or individual that infringes upon the intellectual property rights of another organization or individual may, depending on the nature and extent of the infringement, be subject to civil, administrative, or criminal sanctions.

Civil sanctions

Pursuant to Article 202 of Vietnam Law on Intellectual Property, civil sanctions can be applied to protect the legitimate rights and interests of persons whose intellectual property rights are infringed, specifically as follows:

The Court applies the following civil sanctions to handle organizations and individuals who infringe upon intellectual property rights:

• Forced cessation of infringement
• Forced to apologize and make a public correction
• Forced performance of civil obligations
• Forced to pay damages
• Forced destruction or use for non-commercial purposes

Administrative sanctions

Pursuant to Article 211 of  Law on Intellectual Property 2005, amended and supplemented by Clause 27, Article 1 of Law on Intellectual Property 2009, administrative sanctions for infringing intellectual property rights are prescribed as follows:

• Infringement of intellectual property rights causing damage to authors, owners, consumers or society;
• Producing, importing, transporting, trading in counterfeit intellectual property goods or assigning others to do so;
• Producing, importing, transporting, trading, storing stamps, labels or other items bearing counterfeit trademarks or geographical indications or assigning others to do so.

Notes:

• Currently, administrative sanctions for infringements in the field of industrial property are specifically regulated in Decree No. 99/2013/ND-CP, amended and supplemented by Decree No. 126/2021/ND-CP.
• Administrative sanctions for infringements in the field of copyright and related rights are specifically regulated in Decree No. 131/2013/ND-CP, amended and supplemented by Decree No. 28/2017/ND-CP, Decree No. 129/2021/ND-CP.
• Organizations and individuals who commit acts of unfair competition regarding intellectual property shall be subject to administrative sanctions following the provisions of the law on competition.

Criminal sanctions

Pursuant to the provisions of Article 212 of Law on Intellectual Property 2005, amended and supplemented by Clause 79, Article 1 of the amended Law on Intellectual Property 2022, individuals and commercial legal persons that commit acts of intellectual property infringement that have sufficient elements constituting a crime shall be prosecuted for criminal liability.

Handling intellectual property infringement on website

Currently, there are no specific regulations on the process of handling infringements, but basically, clients need to go through the following steps:

Step 1: Identify the infringement

The right owner needs to identify the specific intellectual property infringement on the website. Specifically, to have a basis for determining intellectual property infringement, it is necessary to base on the following 4 factors:

• The subject under consideration is within the scope of subjects being protected by intellectual property rights: It is necessary to determine whether the subject is being protected by copyright, related rights, or industrial property rights by examining documents and evidence proving the basis for the arising of rights.
• There are elements of intellectual property infringement in the subject under consideration: Identify, compare, and analyze the elements of the infringement.
• The person performing the act under consideration is not the right holder, not a person authorized by law or competent authority, except in some cases.
• The conduct under consideration occurs in Vietnam. The conduct under consideration is also considered to occur in Vietnam if the conduct occurs on the telecommunications network and Internet environment where consumers or exploiters and users of digital information content are in Vietnam.

Step 2: Collect evidence

• Rights holders need to collect evidence to prove intellectual property infringement.
• Evidence may include screenshots of the infringing website, transcripts of the infringing content, emails exchanged with the infringer,…
• Evidence must be carefully kept for use in the infringement handling process.

Step 3: Submit an infringement notice

• The right owner should send the infringement notice to the infringer and the internet service provider (ISP) where the infringing website is hosted.
• The notice of infringement must clearly state the infringement, and evidence of the infringement, and request the infringer to stop the infringement.

Step 4: Request removal of infringing content

• The rights owner may request that the infringer remove the infringing content from the website.
• Requests for content removal may be made via email, letter, or through other communication channels.

Step 5: Apply handling sanctions according to the provisions of law

If the infringer does not cooperate or does not stop the infringement, the right owner may apply sanctions according to the provisions of law that Viet An Law has stated above.

Intellectual property legal services of Viet An Law Firm

• Consulting and evaluating the possibility of registering for intellectual property protection such as trademark registration, patent registration, industrial design registration;
• Representing clients in carrying out procedures for registering protection of intellectual property objects and responding;
• Consulting on drafting contracts for assignment and transfer of intellectual property rights;
• Consulting clients on protection sanctions and handling of infringement;
• Participating in litigation at competent state agencies to protect the legitimate rights and interests of clients.

Above is advice on Handling intellectual property infringement on websites. If you need legal advice related to intellectual property, please contact Viet An Law Firm for the best support.