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How to Determine Copyright Infringement under The Vietnamese Laws

13

MAY

2020

What is copyright?

Surely we are all familiar with the symbol C in the circle ©. It is the symbol that warns the public that written works, novels, songs, comics, etc. are protected by copyright law. No direct definition of copyright is available in the intellectual property law of Vietnam, but only indirect definition that copyright means rights of an organizations or individual to works which such organization or individual created or owns[1]. However, some famous dictionaries such as Collins online Dictionary defining that copyright means the exclusive right to produce copies and to control an original literary, musical, or artistic work, granted by law for a specified number of years (in Vietnam generally speaking, a work shall be protected for the whole life of the author plus fifty (50) years after his or her death[2])

According to the WIPO, copyright deals with the rights of intellectual creators in their creation. Most works, for example books, paintings or drawings, exist only once they are embodied in a physical object. But some of them exist without embodiment in a physical object. For example music or poems are works even if they are not, or even before they are, written down by a musical notation or words[3]

General principles for determining copyright infringement

The IP Law does not provide for any rule or test for determining copyright infringement. The determination of copyright infringement and the constituent elements thereof are found in the subordinate legislation ie. Decree 105/2006/ND-CP as revised supplemented by Decree 119/2010/ND- CP ("Decree 105 as revised"). Accordingly, the general principle for determining copyright infringement is that all of 4 conditions as below must be satisfied:

  1. The subject matter being considered (suspected) as having infringed within the scope of the protected subject matter
  2. There is an infringing element in the subject matter under review
  3. An individual or organization committing an infringement is not the stakeholder or right holder of that intellectual property right or it is not the person authorized by the right holder to use that suspected subject matter, unless the suspected subject matter falls into the applicability scope of Section 25, 26, 32 and 33 of the IP Law
  4. The act of infringement occurred in the territory of Vietnam

Regarding the determination of protected subject matter, because copyright belongs to the group of IP rights subject not to be registered[4], therefore, the protected subject matter are determined based on a general rule is that requires the presentation of the original works[5] or if absent, there must be other documents proving that that work is available on legally published copies.

As far as the determination of infringement elements is concerned, Decree 105 as revised stipulates that the subject matter under consideration if falling into any of the following 5 forms may be considered as having infringing elements:

(a) Unauthorized reproduction of the work;

(b) A derivative work is illegally created;

(c) Works with forged name, signature of author, impersonation or appropriation of copyright;

(d) The part of the work is illegally extracted, copied or assembled;

(e) The product is associated with technical equipment for which copyright protection was illegally deactivated.

Finding the existence of one of 5 forms above is still not sufficient to confirm that there are infringing elements in the subject matter under review but also must identify the scope of protection of copyright subsisted in form of expression of original works, determined by characters, figures, ways of expressing characters' personalities, images and circumstances of the original works (applicable for finding infringement elements subsisted in derivative works). This legal rule has special legal significance when it is used to identify infringing elements when handling disputes related to computer programs (software, video games, online games) that Bross & Partners assisted multiple Vietnamese clients in successfully defending against allegations of copyright infringement by the rights holders coming from China and the United States. These important legal features are also the ground basis for determining originality[6], which somewhat resemble the abstraction – filtration – comparison test decided by the United States Court of Appeals for the Second Circuit in 1992[7].

For example, to determine whether an unauthorized copy of a work is an infringing element of copyright or not, it is necessary to compare the copy of the work with the original of the previous work, according to a copy shall be constituted an infringement factor in 3 circumstances:

(a) A copy is a copy of part or the whole of another person's work;

(b) A work (a part of work) means a part or the whole of a protected work of another person;

(c) Works, parts of works containing characters, figures, ways of expressing characters' personalities, images, details of the protected work of others.

It should be noted that the act of making a copy of an entire work or the act of making a partial copy of a work in the form of excerpts or unauthorized assembly may be considered an act of piracy. This means that goods containing copyright in the form of piracy will be subject to the provisions of Section 213(3) of the IP Law[8], but the absence of “piracy” could not necessarily prevent a likelihood of being criminalized under Section 225 of the Criminal Code 2015[9].

Bross & Partners has intensive experience in assisting clients in defending against allegations of copyright infringement, related rights including a recent pending lawsuit where the client was claimed a damage amount of USD 1.5 million. Should you have specific needs, please contact: vinh@bross.vn; cellphone 84-903 287 057, 84-4-3555 3466; Wechat: wxid_56evtn82p2vf22; Skype: vinh.bross

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting, litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.


[1] See Section 27(2)(b) of the IP Law

[2] See Section 4(2) of the IP Law

[3] See WIPO Intellectual Property Handbook: Policy, Law and Use, Chapter 2 - Fields of Intellectual Property Protection, Copyright and Related Rights, page 40

[4] Section 6(1) of the IP Law

[5] Protected work means any of the 12 types of literary and artistic works protected under Section 14 of the IP Law. See more: https://iclg.com/practice-areas/copyright-laws-and-regulations/vietnam

[6] The Vietnamese laws does not define the concept of "originality" but only indirectly stipulates that a protected work must be original (created directly by the author and not copied by someone else's work). See more: http://bross.vn/newsletter/ip-news-update/QUYEN-TAC-GIA-VA-QUYEN-LIEN-QUAN

[7] See: Computer Associates Int. Inc. v. Altai Inc. available in the link: https://cyber.harvard.edu/people/tfisher/IP/1992%20Altai.pdf

[8] Article 213 (the IP Law). Intellectual property counterfeit goods

1. Intellectual property counterfeit goods regulated in this Law comprise goods bearing counterfeit

marks and goods bearing counterfeit geographical indications (hereinafter referred to as counterfeit

mark goods) defined in clause 2 of this article and pirated goods defined in clause 3 of this article.

2. Counterfeit mark goods means goods or their packages bearing a mark or sign which is identical with

or indistinguishable from a mark or geographical indication currently protected for those very goods,

without permission from the mark owner or organization managing the geographical indication.

3. Pirated goods means copies made without permission from the copyright holder or related right holder.

[9] According to Section 225(1) of the 2015 Penal Code, the infringement of copyright or related rights by a violator may be considered as having constituted criminal liability and subject to a fine (principal penalty) of VND50,000,000 to VND1,000,000,000, or subject to non-custodial reform for up to 3 years, or imprisonment of between 6 months and 3 years if the following conditions are met: (a) the offender committed an act of infringement with intentional fault; (b) the act committed is to have made reproduction of the work, phonogram or audio and visual fixation; or have made available to the public a copy of the work, phonogram or audio and visual fixation; and (c) the act of infringement convicted was made on a commercial scale, or have gained illicit profits between VND 50,000,000 and below VND 300,000,000, or have caused damage to copyright or related rights owners from VND 100,000,000 to VND 500,000,000, or goods being violated worth from VND 100,000,000 to less than VND 500,000,000. See more: http://www.ipprotheinternet.com/specialistfeatures/specialistfeature.php?specialist_id=200; http://bross.vn/newsletter/ip-news-update/Some-Updates-and-Comments-on-IPRrelated-Corporate-Criminal-Liability-1261

About the Firm

Bross & Partners
Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
Fax 84-24-3555 3499
Email vinh@bross.vn
Link www.bross.vn

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