UNIVERSITY OF LUSAKA

SCHOOL OF LAW
L340 – IP LAW
UNIT 9 – ENFORCEMENT AND REMEDIES
George Mpundu Kanja
 Structure of Presentation
• Introduction
• Conservatory or Provisional Measures
• Civil Remedies
• Criminal Remedies
• Border Measures
 Introduction
• Copyright and Performance Rights Act divides
copyright enforcement into the following
categories namely:
• Conservatory or provisional measures,
• Civil remedies,
• Criminal sanctions and
• Measures to be taken at the border.
CONSERVATORY OR PROVISIONAL MEASURES

• Conservatory or provisional measures aim to prevent

infringement from happening by preventing the entry of
infringing works protected by copyright into the channels
of commerce including entry of imported goods after
clearance by Customs and to preserve relevant evidence
concerning an alleged infringement.
• The most common provisional measure is a search of the
premises of the alleged infringer and seizure of suspected
infringing copyright material, the equipment used to
manufacture them, and all relevant documents and other
records of the alleged infringing business activities.
CONSERVATORY OR PROVISIONAL MEASURES

• Obtaining and preserving evidence is very crucial if the copyright

owner has to prove infringement of his protected works. Often,
if the person infringing the copyright in the work realises that he
is to be sued for that infringement, he may be tempted to
destroy those copyright materials or articles that are likely to
incriminate him. Therefore, where a copyright owner believes
that his rights are being infringed and there is a real danger that
the person involved will dispose the evidence before the trial,
the copyright owner should apply to the court for a search order
to enable him to enter the premises where the infringing
copyright materials and articles are kept and remove them, or
have copies made, so they can be produced at the trial.
CONSERVATORY OR PROVISIONAL MEASURES

• See the following cases:

• Anton Piller KG v Manufacturing Process
Limited
• Universal Thermo sensors Limited v Hibben
• Mareva injunctions and Anton Piller orders
 Civil Remedies
• Civil remedies compensate the copyright owner for
economic injury suffered because of the infringement,
usually in the form of monetary damages, and create an
effective deterrent from further infringement, often in
the form of a court order to destroy the infringing
copyright works, materials and implements that have
been used for producing them.
• Where there is a danger that infringing acts may be
continued or likely to continue, the court may also issue
injunctions against such acts, failure to comply with
which would subject the infringer to payment of a fine.
 Civil Remedies
• The Copyright and Performance Rights Act provides a number
of remedies for copyright infringement. Section 25 of the Act
provides that copyright infringement is actionable in the
court at the suit of the owner of the copyright. The remedies
or relief available for copyright infringement are the same as
those available in respect of the infringement of any other
property right. These remedies include:
 Damages
 Injunctions
 Accounts (of profits)
 Delivery up 
 Civil Remedies
• Damages
• Damages for copyright infringement are similar
to those in tort.
• The copyright owner should receive monetary
compensation so as to restore him to the
position he would have been had the
infringement not occurred. However, the
damages the copyright owner is entitled to are
for the actual loss suffered.
 Civil Remedies
• The factors that may be taken into account
when assessing damages as compensation for
copyright infringement include:
• (i) Lost sales
• (ii) Amount of Royalties
 Civil Remedies
• (i) Lost sales
• The damages for copyright infringement may be
assessed on the basis of the profits the copyright
owner would have derived from the sales lost as a
result of the infringement.
• (ii) Amount of Royalties
• Damages for copyright infringement might be assessed
on the basis of the amount of royalties the copyright
owner would have secured had the infringer obtained
and paid for a licence to carry out infringing acts.
 Civil Remedies
• Punitive or Exemplary Damages
• Courts sometimes grant, in addition to
ordinary damages, punitive or exemplary
damages for copyright infringement so as to
punish for flagrant, scandalous or deceitful
conduct and to deter future infringement.
 Civil Remedies
• Injunctions
• An injunction is an order from the court to a person
either to refrain from doing some act or continuing of
some act; or to order a person to perform some act.
• For instance, the court may grant an injunction to order a
person to cease making infringing copies of copyright
work, or order to destroy some article in his possession
which is used for making infringing copies. While damages
are awarded as of right, injunction as an equitable remedy
is awarded at the discretion of the court.
 Civil Remedies
• Therefore, where ordinary damages would be an
adequate remedy, the court would not grant
injunction. Nonetheless, injunctions are often
granted in copyright matters in order to stop the
copyright infringer from the continuation of the
infringement.
• The copyright infringer is also usually ordered to
hand over infringing stock to the plaintiff, so that the
injunction is made effective and any continuing
temptation to infringe is removed.
 Civil Remedies
• Accounts (of Profits)
• The Copyright and Performance Rights Act provides that in an
action for infringement of copyright relief by way of accounts
(of profits) shall be available to the plaintiff as is available in
respect of the infringement of any other property right.
• Thus, the court will allow successive claimants, usually as an
alternative to damages, to recover the net profits or account of
profits the infringer has made from the copyright infringement.
• The purpose of the accounts of profit is to prevent the
defendant from enriching himself at the plaintiff’s expense.
 Civil Remedies
• Delivery Up
• In an action for copyright infringement, the plaintiff will be
entitled to a relief of delivery up of infringing copies of works of
copyright. Copyright and Performance Rights Act provides that
where a person has:
• (i) an infringing copy of a work in his possession, custody or
control in the course of a trade or business; or
• (ii) in his possession, custody or control an article specifically
designed or adapted for making copies of a particular copyright
work; the court may, on the application of the owner of the
copyright in the work, order that the infringing copy or article
be forfeited and delivered up to the owner of the copyright.
 Criminal Remedies
• Criminal sanctions, on the other hand, are intended to
punish those who wilfully infringe copyright works and
related rights on a commercial scale, and like civil
remedies, to deter further infringement.
• The purpose of punishment is served by the imposition of
substantial fines, and by sentences of imprisonment to
those applied for crimes of a similar nature.
• The purpose of deterrence is served by orders for the
seizure, forfeiture and destruction of copyright works as
well as the materials and implements used in committing
the offence.
 Criminal Remedies
• The Copyright and Performance Rights Act
provides for certain criminal offences for
copyright infringement, namely:
 Making, selling, dealing etc (S.28(1))
 Making or importing articles specifically
designed or adapted to make copies (S. 31(2))
 Receiving illegal program included in a
broadcast or programme service(s. 31(3))
 Criminal Remedies
• Search Warrants and Seize of Infringed
Copies or Articles (S. 33)
• The Copyright and Performance Rights Act
provides for the issuance of warrants by a
Magistrate to authorise a police officer to
enter and search any house or premises and
seize any suspected infringing copies or
articles.
 Border Measures
• Measures to be taken at the border deal with actions taken
by the customs authorities rather than by the courts.
Border measures allow the copyright owner to apply to the
Controller of Customs to prohibit the importation of
infringing copies.
• Border measures also allow the copyright owner to apply to
Customs authorities to suspend the release into circulation
of goods which are suspected of infringing copyright.
• The copyright is required to satisfy the Controller of Customs
that there is prima facie evidence of infringement.
 Border Measures
• The Copyright and Performance Rights Act allows the copyright
owner to request the Controller of Customs to prohibit the
importation of copies that infringe his copyright in the work.
• Section 27 of the Act provides that the owner of the copyright in
a literary or musical work, compilation, audiovisual work or
sound recording, may, if the work has been published, give notice
in writing to the Controller of Customs that he is the owner of the
copyright in the work, and that he requests the Controller of
Customs to treat as prohibited goods, copies of the work which
are infringing copies, during a period of five years or the
remainder of the duration of the copyright, whichever is less.
 Border Measures
• Where the Controller of Customs is satisfied that there is a
reasonable probability that attempts may be made to
import infringing copies of the work, and that it is in the
public interest that the copies be made prohibited imports,
he shall issue a notice in the gazette to the effect that,
during the period specified in the application infringing
copies of the work concerned shall be prohibited imports.
• Furthermore, that during the specified period a person
shall not import infringing copies of the work concerned,
otherwise than for domestic and private use, and any
infringing copies so imported shall be subject to forfeiture.
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