IPR protection in the Nordic countries is based on multiple legal sources.
As stated above, Nordic cooperation on the protection of IPRs began in the
111 Lappi-Seppälä 1998, pp. 1300–1301; Andenæs 2016, pp. 83–84, 87; von Hirsch 1983, p. 56; Lernestedt 2003, pp. 291–292.
112 Lahti 2021, pp. 200 and 250; Lappi-Seppälä 2017, pp. 440–444: Lappi-Seppälä 2007, pp. 298, 300–301; Tapani 2004, p. 20; Andenæs 1975, pp. 341–342.
113 Lappi-Seppälä 1998, p. 1301; Jareborg 2002, pp. 91, 102; Elholm – Jacobsen – Madsen 2019, pp. 94–95; Jareborg 2005, p. 527.
1950s, and results even today in similar laws.114 In addition to Nordic cooperation, international conventions and EU legislation have shaped the content of IP laws, which makes the Nordic copyright and trademark laws multilayered and complex.115 The two following figures on the structure of copyright and trademark legislation illustrate this complexity:
114 Weckström – Tammenlehto 2023, p. 1; Tammenlehto 2020, pp. 21–22; HE 287/1994 vp, pp. 50–51.
115 Weckström – Tammenlehto 2023, pp. 1–2; Rognstad 2009, p. 531; Harenko – Niiranen – Tarkela 2016, pp. 12–13; Sundara Rajan 2011, pp. 232–239. For further discussion of the effect of the EU directives, see e.g. Rosén 2012, pp. 588–591;
Schønning 2012, pp. 537–539; Wallberg 2005, pp. 85–105; Gundersen 2005, pp.
106–119; and Kylhammar 2005, pp. 120–130; Kopp 2012, pp. 251–261.
61
e 4: The structure of Nordic copyright legislation.
Figure 4 depicts and identifies the key legal instruments that give content to the formation of copyright protection. It also illustrates the relevant connections between these instruments from the perspective of the research question of the dissertation. The figures are not meant to be exhaustive, by which I mean that they do not identify every single law or treaty that could have an impact in the fields of copyright and trademark law. As figure 4 shows, the criminal protection of copyright is a marginal part of the entire copyright system, and the focus of sanctioning is on civil remedies.116 The same applies to trademarks, as shown in the next figure.
116 Rosenmeier 2008, p. 431.
63
e 5: The structure of Nordic trademark legislation.
Since the formation of exclusive rights creates a foundation for the use of the enforcement system it is important to conceptualize how the protection of the exclusive rights under copyright and trademark are formed: if no exclusive right exists, there is no need to enforce any right.
The central legislative foundation of the operative Nordic IPR enforcement systems per se comes from the TRIPS Agreement117 and Directive
2004/48118 on the enforcement of intellectual property rights (the IPRED1 Directive).119 These legal instruments regulate the minimum criteria for effective IPR enforcement measures, which are to be fulfilled at national level.120 Criminal enforcement, which is the focus area of this research, is
117 The TRIPS Agreement fills the gaps the previous international conventions in the field of IP law left to judicial systems. Its purpose is to reduce distortions of and impediments to international trade and secure effective and sufficient protection of IPRs. The TRIPS Agreement emphasizes the importance of adequate
enforcement measures to prevent IPR infringements without hindering commerce or enabling the misuse of these measures. Wager – Watal 2020, p. 14; Kampf 2020, pp. 146–150; Colston – Galloway 2010, pp. 773–775; Biadgleng 2008, p. 120;
UNCTAD-ICTSD 2005, pp. 2–3.
118 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights [2004] OJ L157/45.
119 Tammenlehto 2022, pp. 883–884; Haarmann 2014, pp. 13–14, 37–38; Olsson 2018, pp. 276–277; Bernitz – Pehrson – Rosén – Sandgren 2017, pp. 15–17 and 140–145; Schovsbo – Rosenmeier – Salung Petersen 2018, pp. 55 and 659–663;
Monsen 2006, pp. 66-68; Vaale-Hallberg – Lindbach 2016, p. 658.
120 Article 1 of the TRIPS Agreement and C-481/14, Hansson, EU:C:2016:419, paras 36 and 40; Tammenlehto 2022, pp. 883-884; Kur – Dreier 2013, p. 29.
regulated merely in the TRIPS Agreement (Article 61121),122 whereas the IPRED1 Directive concerns civil enforcement.123 The legislative foundation
121 Grosse Ruse-Khan 2012, pp. 173-176; Kampf 2020, pp. 162–164. The TRIPS Agreement enacts mandatory criminal procedures and penalties, at least in cases of wilful trademark counterfeiting and copyright piracy on a commercial scale.
Kampf 2020, pp. 162–164. Article 61 of the TRIPS Agreement provides as follows:
‘Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture, and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.’ Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994, available at:
https://www.wto.org/english/docs_e/legal_e/27-trips_01_e.htm (last accessed 13 March 2023).
122 The terms ‘counterfeit trademark goods’ and ‘pirated copyright goods’
mentioned in Article 61 of TRIPS are defined in Article 51 thereof as follows:
‘"counterfeit trademark goods" mean any goods, including packaging, bearing without authorization a trademark
a) which is identical to the trademark validly registered in respect of such goods, or b) which cannot be distinguished in its essential aspects from such a trademark, and
c) which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.
"Pirated copyright goods", on the other hand, mean any goods
1) which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and
of the IPR enforcement system itself is less complex than that of the
protection of the exclusive rights in general. However, the same complexity noted above regarding detection of the existence of an exclusive right also concerns the enforcement system in terms of definition of the object to be enforced. The following figure illustrates this issue in respect of the
criminal enforcement system:
2) which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation.’
123 Over the years, there have been several lobbying efforts for harsher criminal sanctions than those provided for under the TRIPS Agreement. These materialized in the EU IPRED2 directive proposal and the draft Anti-Counterfeiting Trade Agreement (ACTA) at the start of the century. First it has been suggested that the threat of criminal penalties might influence inventors’ willingness to pursue innovation as well as freedom of expression because of its deterrent effect.
Second, concern as to misuse of the existing criminal enforcement system has been brought up. The criminal enforcement system has also been regarded as making the striking of a balance between affording access to knowledge and providing fair compensation to innovators more difficult. Neither IPRED2 nor ACTA got off the ground, due to widespread opposition outside the IPR field in extending mainly civil remedies to offering effective and deterrent criminal sanctions.
COM(2005) 276 final, p. 2; Grosse Ruse-Khan 2010, pp. 4, 17–18; Manta 2011, pp.
498–499; Blakeney 2012, pp. 195–197 and Abbott – Cottier – Gurry 2007, p. 661. An extremely strong pursuit of deterrence has been a characteristic feature of these efforts. Although deterrence has traditionally been considered an effective means of preventing criminal acts, as shown above, it is only one method by which to achieve such prevention. See e.g. Lahti 2021, pp. 200, 250 and 260; Tham 2005, p.
111.
67
e 6: Complexity of criminal enforcement of copyright and trademarks.
In the Nordic countries, the requirements of the TRIPS Agreement are met in criminal provisions on copyright and trademarks. These provisions are somewhat complex, but the multilayered and complex substantive content of the copyright and trademark acts also complicates the
interpretation of these provisions.124 The table in Appendix 1 sets out the specific copyright and trademark criminal provisions of different Nordic countries in order to illustrate this complexity.
124 Tammenlehto 2020, pp. 34–42.
3 Moral Rights Infringement as an Example of Problematic Criminalization in the IPR Context
To elaborate on the relevant problems in the context of the research, I have chosen to use moral rights of copyright as an illustrative cross-cutting example. As explained above, the Nordic copyright laws divide the
protection of copyright between economic rights and moral rights.125 Economic rights protection covers financial gain, which the author may receive by selling or otherwise utilizing or communicating his or her work to the public, whereas moral rights protect the author’s artistry and right to be recognized as the author of the work.126
125 Economic rights protection is common worldwide, but moral rights protection is not. Moore – Himma 2018, 2. The Domain of Intellectual Property. The protection of moral rights is enacted in all the Nordic copyright laws. See the Finnish
Tekijänoikeuslaki (404/1961), Chapter 1, Section 1:
https://finlex.fi/fi/laki/ajantasa/1961/19610404?search%5Btype%5D=pika&search%
5Bpika%5D=tekij%C3%A4noikeuslaki (visited 13 March 2023); and the Swedish Upphovsrättslagen (1960:729), Chapter 1, Section 3:
https://www.riksdagen.se/sv/dokument-lagar/dokument/svensk-
forfattningssamling/lag-1960729-om-upphovsratt-till-litterara-och_sfs-1960-729 (visited 13 March 2023); the Norwegian Åndsverkloven (LOV-2018-06-15-40), Chapter 1 Section 5: https://lovdata.no/dokument/NL/lov/2018-06-15- 40/KAPITTEL_5#KAPITTEL_5 (visited 13 March 2023); and the Danish Ophavsretsloven (LBK nr 1144 af 23/10/2014), Chapter 1, Section 3:
https://www.retsinformation.dk/eli/lta/2014/1144 (visited 13 March 2023).
126 Rognstad 2019, pp. 184–185 and 259–260; Olsson 2018, pp. 91–93 and 134;
Schovsbo – Rosenmeier – Salung Petersen 2018, pp. 127–137 and 149–153;
Sundara Rajan 2011, p. 4–6; Sorvari 2005, pp. 93–94 and 208–209; SOU 1956:25, pp. 85, 121–122. Regarding moral rights infringement, the integrity of the author is to be distinguished from the integrity of the work. Moral rights infringement arises when the integrity of the work is violated and harm is caused to the author’s
The key moral rights in the Nordic countries are paternity right and the
right of integrity. Paternity right requires that when a piece of work is
utilized the author must be properly identified.127 The law regarding
paternity right is rather clear, whereas the content of the right of integrity
is more complex and open to interpretation. The right of integrity includes protection of the author’s reputation, literary or artistic dignity or
individuality, personal creativity128 or the value of the work from harm.
Furthermore, the piece of work must not be communicated to the public in a derogatory form.129 Infringement of the right of integrity occurs when the piece of work in question is changed in a derogatory way and/or
communicated to the public in that form or communicated to the public in a derogatory context without alteration.130 The existence of the piece of work is key,131 since if no piece of work exists no copyright or moral rights can exist either, which means that no infringement can take place.
Nordic copyright laws enshrine protection of the right of integrity as a moral right as depicted in the following figure:
feelings towards the work and/or the feelings the author has sought to convey with the work. Violations of the author’s integrity without connection with the work are handled as forms of defamation. SOU 1956: 25, p. 122.
127 Haarmann 2014, pp. 86–87, Olsson 2018, pp. 134–137; Rosén 1993, pp. 355–
356; Axhamn 2008, p. 462; Schovsbo – Rosenmeier – Salung Petersen 2018, pp.
149–150.
128 Weckström – Tammenlehto 2023, pp. 3–4.
129Axhamn 2008, p. 462; Olsson 2018, p. 137; Schovsbo – Rosenmeier – Salung Petersen 2018, pp. 151–153; Rognstad 2019, pp. 266–267; Tammenlehto 2020, p.
25.
130 Olsson 2018, p. 137; Alén-Savikko 2015, p. 221; Rognstad 2019, pp. 266–268.
131 Rosenmeier 2008, p. 434.
71
e 7:Moral rights provisions in Nordic copyright laws
The chosen translation does not exactly correspond to the wording of Article 6bis(1) of the Berne Convention132, which introduced moral rights protection as a part of the international copyright system.133 There are two reasons for this. First, the wordings of the right of integrity provisions in the national legislation and languages differ from those contained in the Berne Convention. The national legislator has considered it decisive to clearly separate the acts violating moral rights of copyright from those that on a more general level target a person’s reputation or honour as a member of society. This means delimiting moral rights infringements to cover only acts that violate in some way the artistry of the author through the piece of work, and not acts that target the author's reputation or value as a person without any linkage to the protected piece of work. These more general acts should be targeted by means of defamation
provisions.134 Second, the author considers that the nuances of the national regulations would be lost if the wordings used in this
research to translate the national provisions were to follow precisely those used in the Berne Convention.
As is evident from the wording chosen to define the right of integrity, the evaluation of whether moral rights have been infringed
132 Article 6bis (1) of the Berne Convention states as follows: ‘Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.’
133 Sundara Rajan 2011, pp. 239–240.
134 SOU 1956:25, p. 122. It is also typical of Nordic legislators not to modify the wordings of provisions if they can be considered to cover the idea of the suggested alterations. This is visible also regarding moral rights provisions, which have not been changed since the 1960s. SOU 1956:25, pp. 51 and 119- 120; HE 32/1986 vp., pp. 2–3, HE 20/1974 vp., pp. 1–3, HE 33/1929 vp., p. 2.
Sometimes this technique causes problems as has happened e.g. regarding implementing the requirements of the TRIPS Agreement. Tammenlehto 2018,
includes very author-centric viewpoints. In other words, the
evaluation takes into account the author’s subjective conception of derogatory actions, and what the author perceives as a violation of his or her rights.135 This means that even if the aim of the act was to respect the original work – and the actor succeeded in that aim – this does not necessarily make it a non-infringing act.136 Creating a stylistically imitative painting using different colours,137 unless it is
135 SOU 1956:25, pp. 122–123; Olsson 2018, pp. 137–138; Strömholm 1999, pp. 372–373; Sorvari 2007 p. 175; Sorvari 2005, p. 208; Harenko – Niiranen – Tarkela 2016, pp. 71–71; Rognstad 2019, p. 257; TN 2017:4, para 21. The evaluation of these criteria, especially from the perspective of the
perpetrator in choosing whether or not to commit an unlawful act, becomes rather difficult if the author (and thereby the author’s person) is unknown e.g. due to the art having been performed or created under a pseudonym.
This is discussed further in the following chapters.
Interestingly, moral rights provisions have been considered as proper regulation from the perspective of digitalization, for the provisions are flexible and adaptable. Pihlajarinne 2012b, pp. 220–221, 297. However, I would argue that this flexibility and adaptability is actually what makes the provisions bad from a criminalization perspective.
136 SOU 1956:25, pp. 122–124.
137 A similar situation was handled in case TN 2017:4, where the Finnish Copyright Council stated that the two paintings in question in an infringement case could be considered to exceed the workthreshold despite the rather minor modifications made. Based on this the Finnish Copyright Council considered the two paintings to be parodies of the plaintiff’s pieces of work and, hence, they did not infringe the plaintiff’s copyright. TN 2017:4 p. 8.
Pictures of the pieces of work related to case TN 2017:4 may be viewed at https://www.turre.com/parodia-tekijanoikeusneuvosto-ja-lehmat/ (visited 13 March 2023). In the context of a case analogous to this one, it would be interesting to see how a situation in which the alleged infringer did not plead the parody exception would be handled, for the Finnish Copyright Council did not analyse the artistic dignity or individuality of the original works very comprehensively, but focused on analysing the parody aspect. If the humour/mockery intention was decisive to the outcome, one could argue that
considered as a parody, is one example of a potentially infringing act.138 According to the CJEU, a parody evokes an existing work, while being noticeably different from it, and constitutes an expression of humour or mockery.139 Therefore, if a piece of work is altered with
without it the act could have been considered an infringement. See also Nordell 2007, p. 319; Pihlajarinne 2020, pp. 120–121.
138 Traditionally, the Nordic copyright laws have included a ‘parody exception’
(also including caricature and pastiche). This is not enshrined in the legislation per se but derives from case law. The Nordic ‘parody exception’ consists of similar elements as the requirements laid down in Article 5(3)(k) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L 167/10 (the ‘Infosoc Directive’), although none of the Nordic countries have implemented this provision as such in their national legislation. HE 28/2004 vp., p. 37; Alén-Savikko 2015, pp. 204–205;
Hietanen 2009, p. 150; Ficks 2015, pp. 316–318 and 321; Vislie 2020, p. 124;
Jakobsen 2015, pp. 421–422; Prop. 104 L (2016-2017), p. 107; SOU 1956:25, pp. 124 and 136–137. However, Article 17 of the more recent DSM Directive requires the enactment of certain statutory limitations in respect of copyright in national legislation, including parody, caricature and pastiche, which leads one to assume that the CJEU’s guidance regarding Article 5(3)(k) of the Infosoc Directive will eventually find its way into the Nordic countries’ parody doctrines, at least in relation to the digital environment. Some of the Nordic countries have adopted the required changes in their national legislation and the rest will most likely follow in the near future. HE 43/2022 vp., pp. 6, 35 and 57; HE 313/2022 vp., p. 21; Prop. 2021/22:278, pp. 25, 133–134, 137, 139–140 and 264; Schønning 2020, p. 180; Ficks 2015, p. 324; Still 2020, pp. 181–182.
139 C-201/13, Deckmyn, ECLI:EU:C:2014:2132, paras 20, 32 and 33. The CJEU ruled that the concept of ‘parody’, within the meaning of Article 5(3)(k) of the Infosoc Directive, does not entail the requirement that the parody should display an original character of its own, other than that of displaying noticeable differences with respect to the original parodied work; that it could reasonably be attributed to a person other than the author of the original work itself; that it should relate to the original work itself or mention the source of the parodied work. C-201/13, Deckmyn, ECLI:EU:C:2014:2132, paras
the aim of conveying humour or mockery, it does not infringe the author’s moral rights. If, however, this specific purpose is missing, an infringement may exist.140 In the Nordic countries, a parody has usually been considered as a freely altered independent work that exceeds the workthreshold and entails humour or mockery.141 It is likely that this interpretative approach will shift to some extent towards the somewhat more lenient CJEU approach after
implementation of Directive (EU) 2019/790142 (the ‘DSM Directive’) on the Digital Single Market is completed.143 This dissertation mostly considers situations in which parodies are not present, in view of which a wider examination of the relevant legal construct is not necessary here.
Moral rights can also have monetary importance, mostly regarding paternity right, in the form of the author’s good reputation promoting the sale of his or her works.144 However, the violation of, for example, good reputation and its effect on the sale of works must be
21 and 33. The CJEU also noted that the concept of ‘parody’, as it appears in Article 5(3)(k) of the Infosoc Directive, must be regarded as an autonomous concept of EU law and interpreted uniformly throughout the EU as required based on the judgment in Padawan. C-201/13, Deckmyn, ECLI:EU:C:2014:2132, paras 14-16; and C-467/08, Padawan, EU:C:2010:620, paras 32 and 33.
140 Hietanen 2009, p. 152; TN 2017:4, paras. 22, 35 and 36.
141 Alén-Savikko 2015, pp. 206–207, 245; Rosén 2006, p. 721; Rognstad 2019, pp. 176–179; TN 2017:4, pp. 5–7; Hietanen 2009, pp. 148–149; Ficks 2015, pp.
316–318; Nordell 2007, p. 318; NJA 2005, s. 905 (NIR 2007 p. 311), p. 313;
Harenko – Niiranen – Tarkela 2016, pp. 72–73.
142 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC [2019] OJ L 130/92.
143 Ficks 2015, pp. 316–317 and 324–325. Parody may also be relevant in respect of trademarks. Generally, parody with the purpose of humour or mockery is allowed as it is in the field of copyright. If the purpose is to deliberately attempt to diminish the value or reputation of the mark, the act may lead to liability to pay compensation based on trademark legislation.