COMMONS AMENDMENTS (Hansard, 2 November 1988)

§ Lord Strathclyde
My Lords, this is a substantial grouping. With leave I beg to move that the House do agree with the Commons in their Amendments Nos. 46 and 47 en bloc and speak also to Amendments Nos. 90 to 92, 104 to 108, 108A, 109, 190 to 192, 197 to 201, 201A, 202, 211, 212, 212A, 213, 220 and 289 to 293 inclusive.
This large group of amendments is concerned with questions of seizure, delivery up and forfeiture of infringing copies. They take account of points raised both in your Lordships' House and in another place. Although there are few matters of substance, the amendments have necessitated a restructuring of Chapter VI of Part I. Amendments Nos. 46 and 47 pave the way for these changes. The provisions of Chapter VI are echoed in Part II in respect of illicit recordings and in Part III with regard to articles infringing design right. What I have to say about the changes in Part I applies to corresponding provisions, where these exist, in Parts II and III and the counterfeiting provision in Clause 279.
There are now to be two stages in the process of forfeiture. The first consists of either the seizure of infringing copies under Clause 95 or delivery up following an order under Clause 94 or Clause 103. The second stage is determining what should be done with these copies. Piracy is often referred to as copyright theft but the parallels with theft cannot be pushed too far. If property is stolen it can be returned 247 to its rightful owner. But in the case of pirated cassettes or videos, the property in the physical objects does not belong to the copyright owner and so special provision is needed to determine what is to be done with infringing copies. This is provided by Amendment No. 108 which we propose to amend by Amendment No. 108A. But before considering that new clause and its accompanying amendment, we need to look at the delivery up and seizure provisions since they are modified.
Amendment No. 90 amends Clause 94 relating to delivery up. The copyright owner may apply to the court for an order for delivery up. The application must be made within the period specified by Amendment No. 107, which contains the substance of subsections (4) to (6) of existing Clause 109. The court may not make an order unless it also makes a forfeiture order, or it appears there are grounds for so doing. If a forfeiture order under Amendment No. 108 is not made at the same time as the order for delivery up, the person to whom infringing copies are delivered must retain them until the forfeiture order is made or the court decides to make no forfeiture order at all.
Amendment No. 91 sets out the new provisions relating to seizure. As in the existing Clause 95 the right is still subject to the conditions relating to police notification and the requirement to leave a notice at the place of seizure. What is new is that persons exercising the right of seizure may enter any premises to which the public have access but to balance that may not seize anything from anyone at his permanent or regular place of business. In other words, the right is only exercisable against the itinerant trader, whether he is on public or private property. Where it is possible for the normal procedures to be employed—and where someone has a regular place of business and it is possible—then they should. Nothing can be seized from a person at his regular place of business, but seizure will be allowed at car boot sales in private car parks or at fairs in private fields.
Amendments Nos. 104 to 106 amend Clause 104 relating to orders of the criminal courts. A criminal court may order delivery up, but not if it appears unlikely that an order will be made under the new provisions in Amendment No. 108. Any person to whom infringing copies are delivered may retain them pending an order under Amendment No. 108. It will be apparent from what I have said so far that Amendment No. 108 and its counterparts, Amendments Nos. 201, 212 and 293, form the most significant addition to the Bill by clearly establishing the fate of infringing copies.
Amendment No. 108 provides that where infringing copies have been delivered up in pursuance of an order under Clauses 94 or 104, the civil and criminal procedures respectively, or have been seized under the provisions of Clause 95, an application may be made to the court for an order that the infringing copies be forfeited to the copyright owner, destroyed, or dealt with in some other way. The restructuring of subsection (1) of Amendment No. 108, as proposed in Amendment No. 108A, will mean that application for a forfeiture order need not await 248 the successful execution of an order for delivery up but could be made at the same time as the application for the order for delivery up.
In considering whether an order should be made, the court will consider what other remedies are available, such as damages. The court is required to consider whether these would be adequate compensation and protect the interests of the copyright owner. In the case of outright piracy it is unlikely that the court would allow infringing copies to be returned to the pirate, but in other cases damages alone might suffice and then no order would be made. This could happen when one chapter in a large book was held to infringe copyright. I trust that the formulation in subsection (2) of Amendment No. 108 will prove more acceptable to your Lordships than the rather stark statement in Clause 94(2) and Clause 95(5) that no order shall be made if damages would be an adequate remedy.
Of course, parties other than the copyright owner and defendant may have an interest in the fate of the copies which form the subject of the action. For example, the defendant may not always be the owner of the physical property—records and cassettes—which are said to incorporate infringing material. Subsections (3) and (4) of Amendment No. 108 make provision for such parties to appear in proceedings and appeal against any order and allow the court to reach whatever conclusion it deems is just.
The approach in Amendment No. 293 amending Clause 279 on counterfeit goods is slightly different. Counterfeit goods are inherently undesirable, so that the court will not have to consider the adequacy of other remedies. And since the powers depend upon conviction for a serious offence, there is no provision for return of the offending goods to the person required to deliver them up, whatever the circumstances.
Finally, I should briefly mention Amendments Nos. 109, 202 and 213 which set out the extent of county court and sheriff court jurisdiction in these matters.
As I said at the outset, it is a very large grouping but this package of amendments will provide what is needed in respect of delivery up, seizure and forfeiture. I commend the amendments to the House.

§ Lord Peston
My Lords, we believe that this is an important series of amendments as is the general question of forfeiture and related matters. The noble Lord is quite right. Although we use the expression "intellectual property", it is not quite the same as other property. One of the reasons why forfeiture and matters of that kind have to be taken seriously is precisely that the property stolen cannot be given back in quite the same way as other property. We support the amendments, and more importantly we support the objectives of the amendments.
I should like to ask one question for clarification. The noble Lord, quite rightly at this time, spoke 249 quickly. I did not fully comprehend what he was saying about the stealing of intellectual property by including it in some other work rather than by just copying it or producing counterfeits and so on. I take the case of a book. But it could apply to any other work—say, a musical work. If the stolen intellectual property was in one chapter of the book, is the effect of the amendment that the book may be subject to forfeiture but not necessarily subject to forfeiture? Is that the correct interpretation? Or is it that the book would not be subject to forfeiture but would be dealt with in some quite different way? When it comes to stealing intellectual property and it really is stealing, I believe that forfeiture and related matters should always be available options. I want to make clear that the amendments do that.

§ Lord Strathclyde
My Lords, as is so often the case, the noble Lord, Lord Peston, is quite right in his assumption.