23 June 2021
For many years, questions have been asked on the role of the Court in IP disputes in Vietnam. Although setting up an IP Court is still a long-term plan, we have started to see an increasing number of copyright and related rights lawsuits initiated in Vietnam. Vietnam (Economic) Courts have gradually gained more experience in handling IP disputes, with their resolution of complicated cases that may be beyond the capacity of administrative authorities. It is also interesting to see more careful analyses made by the Court in ruling copyright and related rights litigations. This article discusses two recent notable court rulings on the proof of ownership and damages, which may be of many right holders’ concerns.
Ownership Evidence
Under Vietnam’s IP Law, copyright and related rights are established automatically upon creation and fixation of the works with no registration required. However, owners of unregistered works shall bear the burden of proving their title in a dispute. The mandatory evidence of ownership over a work that is not registered includes but is not limited to: (i) the original or a copy of the work; and (ii) other documents evidencing its creation, publication, or dissemination.[1] The Court’s specific request for the documents under (ii) may differ from case to case and be rather unpredictable in practice. Holders of unregistered works tend to be in a position of disadvantage.
In a recent related rights litigation, an IT engineer (the Plaintiff) who produced video lectures lost the case to a media company (the Defendant) at the first instance due to the issue of ownership evidence[2]. The Plaintiff’s claims of related rights infringement were against the Defendant’s unauthorized upload of his 387 video lectures to their website. The first-instance court rejected the claims, reasoning that by failing to submit the drafts of the video lectures, the Plaintiff could not prove his right holder status over the unregistered related rights. The appellate court reversed such ruling and recognized the ownership evidence the Plaintiff submitted, i.e. (1) video recordings of the lectures, (2) the Plaintiff’s registration certificate for the domain name of the website where he first published his lectures on, and (3) information about his upload of the video lectures to his YouTube channel with his own account and to his website. This shows inconsistency in the practice of assessing ownership evidence among different courts.
In the implementation of its relevant commitment under the EVFTA, Vietnam introduced the concept of the presumption of rights ownership in the 2020 Draft IP Law Amendment. Accordingly, unless there is evidence to suggest otherwise, those who are named in a usual manner[3] as authors, performers, producers, broadcasters shall be considered as the right holders of the works, performances, audiovisual recordings, and broadcasts[4]. This proposed provision, if enacted, can significantly facilitate the proof of titles of protection in disputes.
Proof of Damages
A plaintiff in a copyright or related rights litigation also bears a heavy burden of proving damage. For a claim of damages to be accepted by the Court, evidence on actual loss caused by the infringement is strictly required. To establish actual loss, the evidence must demonstrate that: (1) the lost benefit has directly come from the infringed rights, and the right holder is the beneficiary, (2) the right holder could have gained the lost benefit if it were not for the infringement, and (3) the right holder had obtained the benefit before the infringement occurred and has suffered a decrease or loss of benefit as a result of the infringement (i.e. the infringement has been a direct cause of the decrease or loss).[5]
Fulfilling such criteria is not straightforward. In the related rights litigation presented above, the Plaintiff claimed damages for a loss calculated based on the efforts spent to make the creations and a hypothetical income from the infringed videos, by referring to a relevant contract between him and another party (which involved another subject matter). The appellate court held that there was no actual loss based on these calculations. Another claim made in this lawsuit was for the Plaintiff’s loss of opportunity to exclusively license his videos to a potential partner, in which the Plaintiff submitted email correspondences between him and the potential partner as documentary evidence. The appellate court found these correspondences unable to prove an actual opportunity as they failed to show that (i) a licensing agreement was going to be reached, or (ii) the failure of the parties to reach the agreement was due to the Defendant’s infringement.
Proof of actual damage should be far easier if there is a pre-determined royalty fee for the same subject matter. For example, in a recent copyright dispute, a local Collective Management Organisation (the Plaintiff) filed a lawsuit against a multimedia company (the Defendant) for the unauthorised use of songs that the Plaintiff managed in a music festival that the Defendant hosted. The Court accepted the Plaintiff’s claim for damages based on its published royalty fee schedule, and were calculated as an equivalent to the lost royalty payment that the right holders would have received if the songs had been legitimately licensed to the Defendant.[6]
Developments to look out for
The Draft IP Law Amendment has proposed to limit the types of IP infringements subject to administrative enforcement.[7] Under one of the proposed options[8], the administrative route will no longer be available against copyright and related rights violations, among others. If this option is chosen, copyright and related rights disputes will compulsorily be resolved via the civil route. It is also important to note that Vietnam has a civil jurisdiction and does not strictly embrace the doctrine of precedent. This means that the Court is generally not obliged to follow the decision of another Court in a similar matter. However, the Supreme Court has been taking a leading role in guiding the application of laws for Court across the country to harmonize the Court’s practice nationwide. Accordingly, the Council of Judges of the Supreme Court select key decisions issued by Courts across the country as “precedents”. Courts at different levels must refer to and apply the “rule of law” in the precedents consistently. There are 43 precedents so far but none of the cases relate to intellectual property. More developments in the practice of evidence assessment are expected to be seen in copyright and related rights litigation.
yvu@rouse.com
[1] Article 24.3a, Decree No. 105/2006/ND-CP detailing and guiding the implementation of the Intellectual Property Law on the protection of intellectual property rights and on the State management of intellectual property, issues on 22 September 2006 by the Government
[2] Mr. Dinh Cong ND v VGT Company – Judgment No.13/2020/KDTM-PT dated 27 May 2020, available on the database of the Supreme People's Court at: https://congbobanan.toaan.gov.vn/5ta617061t1cvn/ma_hoa_
BA_KDTM_VU_DINH_CONG_nd.pdf [in Vietnamese]
[3] What constitutes a “usual manner” may remain to be guided further under an upcoming decree guiding the implementation of the laws.
[4] Section 74 of Draft IP Law Amendment on addition of Article 198a on Presumption of Copyright and Related Rights
[5] Section I, Part B, Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of April 3, 2008, guiding the Application of a Number of Legal Provisions to the Settlement of Disputes over intellectual Property Rights at People’s Courts
[6] TQVN Centre v NV. Co., Ltd. – Judgment No. 19/2020/KDTM-ST dated 17 September 2020, available on the database of the Supreme People's Court at: https://congbobanan.toaan.gov.vn/5ta618199t1cvn/An_
vietmedia_ma_hoa.pdf [in Vietnamese]
[7] Section 77 of Draft IP Law Amendment on amendment of Article 211 of the IP Law
[8] Option 1
