COPYRIGHT ENFORCEMENT IN VIETNAM

Meanwhile, in recent years in Vietnam, much attention has been paid to the enforcement of copyright. Enforcement officials and copyright owners have recognized the importance of copyright protection. In developing countries such as Vietnam, copyright enforcement needs to be taken into consideration as a key stimulus to development and integration. In the near future, the Agreement between the SRV and the USA on Trade Relations will be practically implemented by both sides. Under this Agreement, Vietnam is obliged to accede to the Berne Convention, the Geneva Convention, and to provide the procedures that permit effective actions against infringement of IP rights, including expeditious remedies for preventing and deterring infringements. Besides, Vietnam's accession to the WTO requires it to be a member of TRIPS and to demonstrate full compliance with the substantive and enforcement obligations of TRIPS. Joining those international treaties, Vietnam is almost certain to suffer from economic losses because as a matter of fact, Vietnam is a small supplier of IP products but a large consumer market for foreign IP products. However, the Government has displayed a continued will to deal more expeditiously and effectively with copyright enforcement by gradually bringing relevant legislation into line with TRIPS. Accordingly, copyright owners should expect the legal framework for copyright enforcement in Vietnam to improve more quickly in the years ahead.

Features

• So far, Vietnam has acceded to only two bilateral agreements on copyright, i.e. the Vietnam - US Agreement on the Establishment of Copyright Relations and the Vietnam - Swiss Agreement on the Protection of Intellectual Property Rights and the Cooperation in the field of Intellectual Property. Vietnam has not become a member of the Berne Convention or of other international conventions on copyright. Thus, foreign works which are neither American nor Swiss works shall not be protected under Vietnamese law unless they are in Vietnam created and fixed in any material form or firstly published.

• Unlike many legislation systems in the world, Vietnamese legislation confers the mechanism of parallel protection under the industrial property law and copyright law. All designs can be protected as registered industrial designs and/or copyrighted works of applied art. The mechanism of parallel protection offers owners a more effective defense against infringements, i.e., in a particular case of infringement, the owner has opportunities to have both copyright and IP enforcement authorities deal with the case. Even, in the case of an object that is not protected as a registered industrial design, it can be protected under copyright provisions.

• Copyright can be enforced through administrative procedures. The characteristics of these remedies are mentioned below.

Enforcement measures

Copyright protection in Vietnam is automatic and immediate. However, conducting copyright registration is highly recommended because the copyright registration certificate constitutes prima facie evidence of the validity of the copyright in a work and the facts stated in the certificate. Particularly, by virtue of the Vietnamese’s limited knowledge of copyright law, the certificate of copyright registration is persuasive proof of the protection granted to such work under Vietnamese copyright law.

In the case of infringement, enforcement actions can be taken through informal and formal measures. In either taking informal or formal action, the owner should positively trace acts of infringement in order to have their rights effectively protected. The owner may establish a crew of staff who are involved in keeping track of market activities so that they can promptly discover an infringement if it occurs, and find specific information regarding the source, the infringers and the precise location of the infringing goods. These facts constitute sufficient evidence of infringement presented to the infringers or competent authorities.

Informal measures

It is important to take informal measures before initiating any formal action. A large number of Vietnamese people have become accustomed to using copyright works without license from the owners. In many cases, the infringer has no knowledge of whether their acts are culpable or not. Thus, in order to prevent potential infringements, some of the effective measures the owner should take are to send warning notices to the potential infringers, declaring that his works have been copyrighted, and advertising copyright works. Once an infringement has occurred, some of the effective ways to stop the infringement may include sending warning letters to the infringer, running notices containing information on the distinction between copyrighted and infringing works in the mass media (on radios, TVs, newspapers, magazines, web-sites and other outlets), and meeting with the infringer in person, persuading him to discontinue his activities, explaining how his infringing act would cause damages to the owner and himself, and seeking a compensatory rate that is satisfactory to both sides. Informal direct contact expresses the goodwill of copyright owners and prevents an infringer from raising the defense of negligent infringement. With successful direct negotiation, the infringers will voluntarily and quickly discontinue infringements, compensate damages and have no intention of continuing the infringement. While taking informal measures, it is highly advisable for copyright owners to be represented by copyright experts and get a conclusion of infringement from the Copyright Office of Vietnam or have an Inspector participate in the conciliation phase. The conclusion of infringement from them can be effective evidence to convince the infringer to desist the infringement. By establishing contact with the infringers on such personal level, the copyright owner can often gain access to valuable information that may be used for proceeding with any actions later.

Formal measures

a. Administrative remedies

A copyright owner can file an application with the relevant authorities to request administrative remedies.

Administrative action against copyright infringement is currently based on the Ordinance on the Handling of Administrative Violations and Decree No. 31/2001/ND-CP on sanctions against administrative violations in the field of culture and information (Decree 31), which replaces the former Decree No.88/CP.

Pursuant to the Ordinance and Decree 31, upon the nature and gravity of infringement, each of the following authorities is empowered to conduct administrative procedures and impose administrative sanctions on copyright infringements:

• Chairmen of People's Committees of provinces and cities directly under the Central authority.
• Chairmen of People's Committees of urban and rural districts, and provincial cities.
• Chairmen of People's Committees of wards.
• Chief Specialized Culture Inspectors under the Ministry of Culture and Information.
• Chief Specialized Culture Inspectors under the local Services of Culture and Information.
• Directors of Economic Police Bureaus, the Economic Police.
• Heads of Market Management Bureau, Directors of Market Management Departments and
• Heads of Customs Control Units at ports of entry, Directors of Provincial Customs Offices.

The provisions of Decree 31 impose relatively strict penalties on copyright infringement. Under those provisions, the competent authorities shall either issue warnings to infringers or impose monetary fines depending on the nature and gravity of the infringements. A fine of from VND200,000 to VND70,000,000 shall be applied to the unauthorized multiplication, republication, duplication and dubbing of copyrighted works, articles and programs. The citations of another's works without indicating the author's name and the source of the work shall be fined from VND200,000 to VND500,000. A fine of from VND3,000,000 to VND10,000,000 shall be imposed on persons who without the permission from the owner conduct the translation, mutilation, adaptation, or alteration of works. Illegal acts of publication, dissemination and performance of copyright works are subject to a fine of from VND200,000 to VND20,000,000. Additional penalties shall include revoking the business license, confiscating infringing products and the means used to produce and commercialize infringing products, compelling the infringer to pay compensation to the owner for material damages up to a maximum of VND1,000,000 and destroying confiscated harmful cultural articles.

Before imposing the aforesaid administrative penalties, competent authorities may issue temporary injunctions in order to prevent further violations and to ensure the settlement of administrative violations, i.e, the temporary seizure of evidence (infringing goods, and means of production and commercialization of goods) in the cases where copyright infringements must be discontinued immediately and necessary evidence must be secured (Article 41 of the Ordinance on the Handling of Administrative Violations), and raids on the infringer's premises or offices in the cases where the raids are necessary to collect evidence and/or to ensure that evidence is not destroyed, disposed or altered (Article 44 of the Ordinance on the Handling of Administrative Violations).

Administrative remedies are preferred as an initial approach to stop infringement because the copyright owner can obtain more prompt relief through administrative procedures than through civil courts. Administrative authorities are delegated a wide range of powers to handle the infringements within their competence. As a result, if a copyright owner is successful in persuading the authorities that an infringement has been committed, they will on their discretion force the infringer to cease infringement and impose penalties that satisfactorily resolve the infringement. Particularly, large monetary fines can be imposed in respect to each act of infringement, for instance the illegal copying of a computer program is subject to a fine of VND20,000,000-VND40,000,000. The high fines constitute a deterrence to further infringements. Furthermore, the owner can seek a damage award of up to a limit of VND1,000,000. Even when pursuing higher damages in a court, an administrative decision may be a strong proof of the seriousness of infringement on the basis of which the court can easily determine damages in favor of the copyright owner.

However, there are some factors that make it difficult to pursue administrative action. The loopholes and uncertainties of laws partly contribute to the difficulty. There are no provisions governing when the authorities should either issue warnings to or impose monetary fines on infringers, under what circumstances the authorities shall mete out additional penalties or grant provisional injunctions. While Decree 31 provides extensive discretion with regards to the amounts of the monetary fines, there are no guidelines on the quantity of copies made, the nature and gravity of the infringement, on the basis of which a corresponding fine shall be imposed. The stipulations of Decree 31 are quite general and competent authorities have hesitated to carry out their duties on the grounds that they are waiting for implementing regulations. Another factor adding to the difficulty is the capability of the officials. Many lack knowledge of copyright law and experience in handling copyright cases. Thus, it is difficult to convince them of whether a certain act constitutes an infringement and whether they should issue orders and decisions in the case of infringement found. Some Vietnamese authorities, due to limited professional ability, are often tentative about making any decision.

At present, administrative remedies can be the most effective measure for copyright owners to protect their exclusive rights which are being infringed and pirated in Vietnam.

b. Civil remedies

If unsuccessful in convincing the administrative authorities of the infringement, or dissatisfied with the damage awarded by administrative authorities, the copyright owner may commence civil proceedings regulated by the Ordinance on Civil Procedures. Under the Ordinance, lawsuits are lodged with Provincial People's Courts or with the People's Court of Hanoi or Ho Chi Minh City for copyright disputes "involving foreign elements". Decisions of the Provincial People's Courts or the People's Court of Hanoi or Ho Chi Minh City may be appealed to the Appellate Court of the Supreme People's Court.

Before obtaining a permanent injunction when pursuing civil remedies, the copyright owner may seek a temporary cease and desist order as well as a search and seizure order to seize the infringing goods and means of production to preserve evidence when it has been clearly proven that there is a grave danger of the evidence being destroyed or hidden if the defendant is forewarned and that the potential or actual damage to the plaintiff as a result of the defendant's alleged wrongdoing is very serious. The search and seizure order enables the copyright owner to access the defendant's documents, such as bills, invoices, business information, computer files and other sources of information, which will assist in collecting facts of infringements and establishing the amount of damages to which he may be entitled.

In practice, proceeding with a lawsuit is currently not a very effective way to enforce copyright in Vietnam. The courts are still quite cumbersome, and procedural rules are still being improved. The Ordinance is too general and vague. There are no provisions governing the prevention of threatened infringements. It lacks detailed rules that provide the guidance on when and under what circumstances a judge should issue a temporary injunction. In addition, there are no specific provisions under which a court can require the plaintiff to post a bond and order the plaintiff to compensate the defendant for injuries suffered if the temporary injunction is dissolved or no infringement found. Thus, the plaintiff may abuse enforcement procedures to ask for wrongful searches and seizures, and the judge would be highly unlikely to issue such relief, fearing that he must take liability to the defendant. How damages in civil actions for copyright infringement should be calculated is not included in the Ordinance or other legal documents on copyright. Generally, Vietnamese courts rarely order a violator to pay adequate and significant amounts of damages to the owner. Besides, no specific rule or guideline on the award of attorney’s fees against a loosing party is prescribed in the Ordinance.

Unlike other countries, Vietnam has not established a copyright or patent court composed of professional judges with a special knowledge and understanding in the field of intellectual property. Until now, intellectual property cases have been heard by non-specialized judges. Vietnamese judges have little experience in handling copyright disputes. Inexperience on the part of the judges results in a tentativeness or failure to award appropriate relief where circumstances would appear to warrant it. Besides, the costs involved usually exceed the recoverable damages and the prolonged process of handling disputes (normally from one to three years for a final decision to be made) leads to a common tendency amongst Vietnamese people towards not bringing copyright cases to court.

However, there has recently been an increasing tendency towards bringing a civil action against a copyright infringer. From 1995 to 1999, 8 cases on copyright were heard at the People's Courts of Ha Noi and Ho Chi Minh City. Among those cases are such significant ones as the cases of Le Vinh – a songwriter- v. DIHAVINA & Youth Film Firm – sound recording companies and Tran Tien – a musician - v. Sai Gon Video, in which the plaintiffs received compensation as desired.

c. Criminal remedies

Criminal action is possible under Article 131 of the Criminal Code. Pursuant to the Article, the following acts can constitute a criminal offense:

• Pirating copyright in
• Falsely attributing as an author's name on
• Illegally altering, and
• Illegally publishing or disseminating journalistic, scientific, artistic and literary works and phonorecords.

Anyone committing any of the above acts causing serious consequences or having been previously subjected to an administrative sanction on one of the above acts or found to be a persistent offender can be fined D20-200 million or subjected to correctional re-education without detention for up to two years. The offender can be imprisoned from 6 months to 3 years if the infringing act is organized, results in "very serious" or "especially serious" consequences or if he has committed the same offense many times.

In addition to the aforesaid penalties, anyone convicted of criminal copyright infringement can be fined VND10-100 million, prohibited from taking any official post, practicing his profession or doing certain work for 1 to 5 years.

The power of criminal prosecution lies with the police and the public prosecutors. Cases are generally brought before the District People's Court, unless the case is deemed to be "complex", in which case it will be prosecuted in the Provincial Court.

Criminal action can be effective, but it is difficult for the copyright owner to prove "serious consequences" so that the authorities can determine whether a criminal offense has been committed. Thus, it is difficult to persuade the police or prosecutors to institute criminal proceedings.

Because of the severity of the sanctions, criminal action is reserved for the worst cases, and as a matter of practice, is rarely pursued by copyright owners. So far, except for cases on counterfeiting and trafficking cultural goods related to copyrights, no copyright infringement has been prosecuted in the criminal courts in Vietnam.

d. Border remedies

Vietnamese Customs is delegated the authority over the import and export of cultural items at the border. However, border remedies merely involve in working against the trafficking of sound records, software, or the importing of obscene materials or those materials not in accordance with the Vietnamese Government's policies. The new Customs Law which will take effect on January 01, 2002, contains provisions concerning border remedies for the enforcement of intellectual property rights, including copyrights. Nevertheless, those provisions are still general and need to be detailed in implementing regulations, especially the provisions on the suspension for clearance of goods.

Problems and Solutions

If the aforesaid measures are effectively enforced, the exclusive rights of the owners will be comprehensively protected because Vietnamese authorities have a large power to issue strict temporary and permanent injunctions. However, the enforcement of copyrights has previously faced difficulties due to certain reasons, i.e:

• Despite the continued will of enforcement authorities to struggle with copyright piracy, pirated works, especially pirate music CDs, video CDs, videotapes, DVDs, CD-Roms containing infringing copies of software, videogames and illegal copies of package designs protected as applied fine art works, remain ubiquitous in the market. The development of advanced technology has facilitated the massive, high-speed production of copyrighted works whilst enforcement officials may not be available, or are inexperienced. This problem is exacerbated by the heavy demand for unauthorized products by low-income end-users, caused by the great discrepancy in price between unauthorized products and the more expensive copyrighted versions. From the year 2000 to the present, inspectors in Hanoi have seized 16,500 videotapes, 26000 video CDs and CDs without registered stamps, and thousands of pirated CD-ROMs. In Ho Chi Minh City, during the last five years from 1996 to the present, inspectors inspected, seized and destroyed 105,871,000 illegal videotapes, 21,873,000 VCDs, and 11 motion pictures. Although the authorities have increased these efforts to get rid of piracy, it is impossible for them to have control over daily infringing activities and thus the situation remains unchanged.
  Provisions governing copyright law are insufficient, contrary, vague and general.
• Enforcement officials are lacking in experience and knowledge of copyright law.
• In Vietnam, there are no Collective Management Societies. Therefore, the owners can not identify, monitor and negotiate with any number of end-users. Similarly, for the users, it is impossible to conduct day-to-day transactions with copyright owners in order to get permission and pay royalties when using copyright works. This prevents copyright owners from monitoring the usage of works and collecting royalties from all users. Additionally, copyright owners themselves do not pay much attention to the receipt of royalties by virtue of the low commercial value of local IP products. Thus, the economic benefits gained are not worthy of the owner's intellectual labor. In an interview with reporters, the famous musician Thuan Yen said royalties for ten years for his famous song "Say goodbye with the sunset" were not equal to one fifth of the fee accorded to a well-known foreign singer for only one performance. Besides, in the absence of the formal procedures to obtain compulsory licenses as well as prescribed royalties, without collective societies, the users that are entitled to compulsory licenses (performers, sound recording companies, broadcast organizations) can not make payment each time when copyright works are used and thus always risk being sued by the owners.
• On the part of users, their awareness of copyright is limited, and using copyrighted works without permission from the owners seems to be an acceptable practice.
• Performers, sound recording companies and publishing houses have a large demand for copyright works while the exploitation of those ones in show business, publishing and the music industry have not been specialized.

In order to solve these problems and to crack down on copyright infringement and piracy, some of the following measures are suggested:

• A decrease in the demand for illegitimate products by increasing the people's living standard and lessening the price of legal products;
• The eradication of old and contrary substantive provisions on copyright; supplementation of and detailed guidance on regulations for copyright enforcement in terms of administrative, civil, customs and criminal procedures; promulgation of legal provisions on copyright and copyright enforcement in the field of internet and digital technology;
• A raise in the level of knowledge among the government bureaucracy, judiciary and Vietnamese legal profession, so that they will be capable of dealing competently with intellectual property matters, especially in compliance with international standards of copyright enforcement;
• The establishment of societies for collective administration of copyright and neighboring rights;
• The adequate use of enforcement action by both competent authorities and copyright owners against infringers;
• Stricter border controls, and the promulgation of implementing rules on the suspension for clearance of goods.

Local IP legal firms can also play an important role in copyright enforcement activities in Vietnam, especially for foreign owners. They are proficient in Vietnamese law and experienced in taking actions to enforce their clients' copyrights. Having good contacts with local enforcement authorities, easily collecting necessary evidence of the infringement through different sources of information, they can persuade and prod the enforcement authorities to act more effectively and expeditiously. There are qualified attorneys at law with some of those firms, who are copyright specialists and can act as barristers for their clients before the courts

Conclusion

Copyright enforcement is still not an easy task. The international community would like to see improvements in Vietnam's enforcement of copyrights, particularly as we enter the digital age and continue to make enormous progress in science and technology. In short time, Vietnam should guarantee the compliance with copyright enforcement provisions in the Vietnam – US agreement on copyright, the Vietnam – US Trade Agreement and the Vietnam – Swiss Agreement. It is imperative for Vietnam, at this moment, to address the matter of enforcement more effectively and aggressively, giving it leverage to meet its substantive and procedural obligations under TRIPS and other international treaties on IP rights.