English translation of article published in the AMI, magazine for copyright, media and information law (in Dutch: AMI, tijdschrift voor auteurs- media- & informatierecht) in the edition May/ June 2009)
An Overview of the Developments in the Netherlands and a Glimps Beyond the Border
With the implementation of the European Enforcement Directive in Dutch law, since two years the IP-owner has had a whole repertory of new measures available, including the evidential seizure. This article will discuss the first experiences with the evidential seizure. Also the experiences gained in other countries, where the evidential seizure has existed for a longer time, will be entertained.
Since 1 May 2007, the implementation of the European directive on the enforcement of intellectual property rights (‘Enforcement Directive’) has been a fact in Dutch legislation. A new part 15 has been added to Book 3 of the Dutch Code of Civil Procedure with the sections 1019a up to and including 1019i. In addition, some separate intellectual property acts, including the Copyright Act, have been amended.
On the basis of the new legislation, any holder of an intellectual property right has a number of far-reaching instruments to enforce his intellectual property rights. In the past two years, the limits of the new legislation were explored by the court. In practice, it turns out that the new instruments also raise some questions and even legal uncertainty.
This article will discuss the option of the evidential seizure in the event of (threatening) infringement and the experiences acquired with it until today. Although patent law is the leader as regards the use of evidential seizures, also in copyright law interest is gradually raised in this and the first copyright judgments have been rendered.
The preamble to the Enforcement Directive shows that there are major differences in the legislation of the EU member states as regards the means for enforcing the intellectual property rights. In the proposal for the Enforcement Directive of the European Commission, it was explained that the differences in the national sanction rules are not only detrimental to the proper functioning of the Internal Market, but that they furthermore make it difficult to combat counterfeiting and piracy effectively.
Recital 10 in the preamble formulates the objective of the Enforcement Directive as follows:
“to approximate legislative systems so as to ensure a high, equivalent and homogeneous level of protection in the Internal Market”.
The Enforcement Directive attempts to harmonise the rules in the field of the civil law enforcement of intellectual property rights in the various member states. To reach this, in the Directive various national measures for the protection of intellectual property rights have been joined and given a European face-lift. A problem is that these national measures have served as source of inspiration but the required details and safeguards are missing in the Directive.
For the measure of the evidential seizure to be further discussed in this article, inspiration was sought in inter alia the existing measures in other European countries. For example, the European Commission refers to the measures from the United Kingdom known under the name Anton Piller Orders. In a decision by the High Court that is taken without hearing the other party, accurate investigation and a full seizure of the pieces of evidence of the presumed infringer is possible pursuant to this measure. The European Commission also refers to the French saisie contrefaçon. The owner can submit an application for such seizure with the president of the court of first instance. The saisie contrefaçon may have the form of a detailed descriptive seizure or an actual seizure of litigious products.
Evidential seizure – Sections 1019b-1019d Dutch Code of Civil Procedure.
The sections 1019 b-1019d Dutch Code of Civil Procedure comprise the Dutch implementation of article 7 of the Enforcement Directive.
In addition to the option laid down in section 28 Dutch Copyright Act to levy a seizure for submission on movables with which a copyright is infringed, the owner now has a more extensive set of instruments for tackling any infringement of his rights.
Section 1019b Dutch Code of Civil Procedure provides provisional measures for the protection of evidence, including the prejudgment evidential seizure, the detailed description and taking of samples regarding alleged infringing goods, materials and implements used in the production and the documents relating thereto. The prejudgment evidential seizure is further worked out in section 1019c Dutch Code of Civil Procedure and the detailed description and taking of samples in section 1019d Dutch Code of Civil Procedure. Hereinafter, these new measures will jointly be referred to as ‘evidential seizure’. Section 1019b Dutch Code of Civil Procedure gives a non-comprehensive enumeration of measures. For example, section 1019b(1) Dutch Code of Civil Procedure also refers to measures that have already been included in the law. Legal history shows that measures are meant such as the provisional examination of witnesses and the expert opinion. Pursuant to section 1019b(3) Dutch Code of Civil Procedure, if required, the measures can be taken without the other party being heard (ex parte).
Article 7 of the Enforcement Directive implies that the Single Judge Charged with Urgent Cases may grant leave to a party that “has presented reasonably available evidence to support his claims that his intellectual property right has been infringed”. The legislator has translated this as follows in section 1019b Dutch Code of Civil Procedure: “The single judge charged with urgent matters may grant leave for taking provisional measures for the protection of evidence to the applicant who has made it plausible that his intellectual property right is infringed or is about to be infringed.
In the Explanatory Memorandum it is realised that there is a difference. It is remarked that this formulation in Dutch law is also chosen at the advice of the Dutch Council for the Administration of Justice and it is a formulation “that as regards the result thereof does not or barely deviate from that of the directive and that is applied in preliminary relief proceedings in general”.
In my opinion, this difference has not been correctly valued and the Dutch standard is a broader one. The Single Judge Charged with Urgent Cases of the District Court The Hague has assessed shortly after the implementation of the Enforcement Directive that “the threshold for allowing prejudgment evidential measures must be made lower than the plausibility of the (threat of) infringement in preliminary relief proceedings”. It is, as the Single Judge Charged with Urgent Cases of the District Court The Hague states, “exactly the intention to be able to eventually give a factual substantiation of an infringement action to be initiated, which should not only include proceedings on the merits but also a provisional relief. Another interpretation would make the rule illusive (…)”. With this, a much lower threshold is introduced which could raise the impression that an evidential seizure would be simple to obtain. The question rises what the scope and purpose of such evidential seizure is.
Scope and Purpose of the Evidential seizure: Collection or Preservation
Case law – until today in general by lower cases – shows an irregular picture with regard to the question whether the new measures are only meant to preserve the evidence or also to provide the rights owner with the possibility to collect evidence material through the seizure.
Practice shows that it is hard to find a proper balance between the possibility of the preservation and collection of evidence on the one hand and the confidentiality of the seized material on the other hand.
The rules in article 7 of the Enforcement Directive and of its non-complete counterpart section 1019b Dutch Code of Civil Procedure are meant to protect evidence material according to the titles of these provisions. It could be deduced from the title of section 1019b Dutch Code of Civil Procedure and legal history with respect to part 15 that the purpose of a prejudgment seizure is exclusively the preservation of pieces of evidence and therefore to “freeze” the current situation and not to provide the party levying the seizure with the option to take cognizance as regards contents of pieces of evidence by means of the seizure and obtain them. For copyright law, this has been assumed by the Single Judge Charged with Urgent Cases of the District Court Zutphen.
However, you can also say that section 1019b Dutch Code of Civil Procedure not only concerns the preservation of evidence but also the collection of evidence for the use thereof in future proceedings. If it must be assumed that section 1019b Dutch Code of Civil Procedure merely concerns the preservation of evidence, this is, as Van Nispen also concluded, hard to reconcile with the fact that section 1019b Dutch Code of Civil Procedure also concerns the measures already regulated by law, such as the provisional examination of witnesses and the expert opinion. These measures that already exist are pre-eminently measures for the collection of evidence for the substantiation of an infringement claim.
Case law shows that until now in a number of cases the single judges charged with urgent cases have granted leave for the levying of evidential seizures for the determination, or substantiation of the infringement. Correct in my opinion.
The objective of the Enforcement Directive is to safeguard a high, equivalent and homogeneous level of protection in member states. In the member states where evidential seizures already formed part of the repertory of the owners, the objective of such a seizure is (also) to obtain evidence for factually substantiating an infringement claim.
This way, the Belgian evidential seizure (beslag inzake namaak/ saisie en matière de contrefaçon) is a procedure meant to obtain and preserve evidence of the imitation. In the event that a copyright owner in Belgium has a prima facie evidence of infringement, he has the option to have places and documents studied by an expert by means of a beslag inzake namaak/ saisie en matière de contrefaçon. Pursuant to the new section 1369bis of the Belgian Gerechtelijk Wetboek (Judicial Code) this takes place in the first place by a description by the expert of “all the objects, elements, documents or procedures that are such that they can demonstrate the alleged imitation and the origin, destination and scope thereof”.
In addition, the court may also authorise the expert to take all the measures that are useful for the execution of his instruction within the boundaries thereof and, particularly, for taking copies, photocopies, photographs and audiovisual recordings. The expert may also be provided with samples of the goods that are presumed to infringe the intellectual property right for which the protection was invoked and the materials, devices and documents in question used for the production and/or distribution thereof.
In this form of evidential seizure, the expert plays an important part. He must watch over the interests of the seized party in the complete course of the describing seizure and the draft of his report, in particular as regards the protection of confidential information.
Although the Belgian evidential seizure has been reviewed with the implementation of the Enforcement Directive in Belgium, the measure as such has existed in Belgium for tens of years. In the course of the years, the beslag inzake namaak/ saisie en matière de contrefaçon has turned out to be an effective weapon for the owner and is meant to obtain pieces of evidence in the first place.
Also the saisie contrefaçon in France, which was used as basis for article 7 of the Enforcement Directive, can be used for obtaining evidence. Even stronger, the collection of evidence is the main objective of the French saisie contrefaçon. Although the text of the act in France on the saisie contrefaçon has been amended by the implementation of the Enforcement Directive, the act continues to refer to the same procedure as before. In brief, the owner may request the court to let a bailiff collect evidence at the other party’s in the event of suspicion of infringement. It may concern allegedly infringing products or samples thereof, but also documents on the alleged infringement.
Admitted, the search orders (Anton Piller) from the United Kingdom have a more limited purport. A search order is only possible in exceptional cases and has as objective the preservation of evidence. This measure is deemed too expensive and too complicated by some people. This system cannot properly be compared though with the Dutch system as there is a general disclosure obligation in civil law proceedings in the United Kingdom.
If the evidential seizure pursuant to section 1019b Dutch Code of Civil Procedure would only relate to the preservation of evidence, in my opinion the objective of the directive would not have been implemented in a correct way, i.e. the creation of an equal protection level between the member states. The possibility of an evidential seizure to collect evidence as is available in the various countries must also be available in the Netherlands. If section 1019b Dutch Code of Civil Procedure is given a more limited application in the Netherlands, the new instruments will rapidly become a slow or even paper tiger.
Recently, the Court of Appeal in Den Bosch - in the first appeal on an evidential seizure – has judged that the evidential seizure was also created to provide the IP-owner with material for substantiating his infringement claim.
The Court of Appeal has also judged though that this does not justify the conclusion that an evidential seizure implies any right of inspection.
Inspection/Access to Documents
The question whether the evidential seizure automatically implies an inspection right for the party levying the seizure, has been answered negatively until now. The background thereof is that first an assessment should take place as regards the confidentiality of the seized material. Did various district courts at first still grant leave for levying an evidential seizure in which the owner was entitled to inspection or obtain copies, the rule currently seems to be that for inspection of the material first an action pursuant to the sections 1019a and 843a Dutch Code of Civil Procedure must be initiated.
However, it applies here that pursuant to the arguments as set out above on an equal protection level between the member states, it may be argued that an owner should obtain the inspection of the seized material. According to (inter alia) Belgian and French law, the owner has access to the seized material in the event of an evidential seizure, without the owner having to conduct separate proceedings for the submission.
The Court of Appeal Den Bosch has assessed with regard to similar arguments that the Directive and Dutch legislation based on it must be interpreted autonomously. ‘Also according to Dutch legislation, the IP-owner may (…) effect in quite a simple way that he obtains the inspection of the seized material. That he must follow the path of section 1019a Dutch Code of Civil Procedure in conjunction with section 843a Dutch Code of Civil Procedure for this, does not mean that his inspection right is unjustifiably limited, according to the Court of Appeal.
In this case, the Court of Appeal assumes that the obtaining of inspection in the event of evidential seizure can quite simply be obtained pursuant to section 1019a in conjunction with section 843a Dutch Code of Civil Procedure. It is not always that simple. In practice, often a broad seizure is levied (think for example of all the data/information on servers in which the original or the infringement version is mentioned). The seized matter has then been insufficiently specified and may be prohibitive for an action based section 1019a in conjunction with section 843a Dutch Code of Civil Procedure, as according to stable case law an action based on section 843a must remain limited to “particular documents”.
If it is therefore insufficiently clear at the time of the seizure which material has been seized, a copyright owner will soon be forced to request the district court first to order a provisional expert opinion to let the expert execute the specification and therefore to let him determine which documents are relevant for the substantiation of the infringement action. The expert will then act as filter before proceedings on the submission can be conducted.
This implies that in such cases a copyright owner will be forced to conduct three proceedings (i.e. proceedings pursuant to section 1019b Dutch Code of Civil Procedure to obtain leave for levying an evidential seizure, proceedings pursuant to section 202 Dutch Code of Civil Procedure for obtaining a provisional expert opinion and proceedings pursuant to section 1019a in conjunction with section 843a Dutch Code of Civil Procedure for the inspection), before he has access to the relevant information. This involves unnecessarily much time and money.
Furthermore, this is inconsistent with recital 20 of the preamble to the Enforcement Directive, which includes that it must be seen to it that effective means are available for the submission, obtaining and preservation of evidence. The collection of evidence in this time-consuming way does not do any justice to an equivalent and homogeneous level of protection as laid down in the Enforcement Directive.
The proceedings in countries like Belgium and France, where one has a lot of experience with evidential seizures, show that the obtaining of evidence for the substantiation of an infringement action is possible in a much more effective way. It might be a good idea to use the Belgian practice of evidential seizures as model, in which a big(ger) part is played by the expert. For, there is only one single action necessary for obtaining the required evidence what renders the procedure of the descriptive seizure a lot less time-consuming than Dutch practice. In order to safeguard the confidentiality of seized documents, the expert could draft a report that is first only made available to the (lawyer of the) seized party, so that he can express himself on the unnecessary publication of confidential data.
Evidential seizure at Third Parties– Internet Service Providers
Another question after the scope of the evidential seizure was discussed in a judgment by the Single Judge Charged with Urgent Cases of the District Court Arnhem that is worth reading. It concerned the question whether an ex parte evidential seizure on the basis of copyright law could be levied against an internet service provider to trace name, address and residence data of subscribers and to make a copy of particular files. The Single Judge Charged with Urgent Cases assesses that the granting of evidential seizure must be provided with due care to the extent that this relates to evidence material that is available to others than the infringing party. The Single Judge subsequently weighs up the protection of the intellectual property rights against the right of respect for privacy and the protection of personal data and rejects the application with a reference to legal history, Lycos/Pessers and the Promusicae/Telefónica judgment. That this is an ex parte application, in which the internet service provider would not be heard, plays a crucial part herein.
Checks and Balances
The owner has a whole range of new instruments, but the other party comes off badly.
The assumed infringer does not have any comparable measures for strengthening his position. Only if it turns out afterwards that the evidential seizure was levied wrongfully, the person affected by that evidential seizure has the option to get the damage caused by the measure compensated in an appropriate way pursuant to section 1019g Dutch Code of Civil Procedure.
The Enforcement Directive shows that upon the application of the new enforcement means the interests of the other party must be safeguarded as far as possible. This way, according to recital 20 of the Enforcement Directive, ‘the rights of the defence should have been regarded’ in the obtaining and protection of evidence material. Furthermore, it is stressed that the purpose of the directive is the safeguarding of a high, equivalent and homogeneous level of protection. This recital presumes that “checks and balances” that are applied in other countries for making these ex parte provisions, should also be available in the Netherlands, because otherwise there is no equality between the member states.
Obviously, it may be expected of the court that it properly weighs up the interests of both parties in question whether an evidential seizure is allowed. The evidential seizure though can also be granted ex parte and then there is the chance that the interests of the other party are taken into account less properly. In practice, the court finds a way out of this as at a relatively short term preliminary relief proceedings for lifting the evidential seizure can be conducted, but it remains a fact that in that case already some damage has been done. An additional form of checks and balances has been found in the option of protective measures per letter/application according to the sections 1019b and 1019e Dutch Code of Civil Procedure (ex parte evidential seizure and/or prohibition), based on the use of so-called Schutzschriften developed and generally accepted in Germany.
This way, since 1 May 2007 the District Court The Hague has allowed that a party explains its objections against the allowance of a unilateral evidential seizure (or injunction) in a letter (also called ‘protective letter’) already beforehand. The regulation is not limited to patent law, but covers all the IP-rights, including copyright. Also a small number of other district courts accept these protective letters. As far as known, it concerns the district courts that already accepted the protective measures for prejudgment seizure means.
The option of filing protective letters is a means to, for lack of hearing both sides, interpret the principle of ‘due process’ (inter alia encompassed in article 6 ECHR), while at the same time the option for making ex parte provisions is maintained. For, the applicant of a protective letter does not know whether his other party will file an application and when this will be done, so that the possibly ex parte character is not already prejudiced in advance.
The big imperfection is though that many district courts in the Netherlands think that the law does not provide any basis for protective measures regarding ex parte seizure or prohibition, so that applications thereto are not agreed to. Until now, the district courts have been unable to reach consensus in this respect. In practice, this leads to legal inequality, as the acceptance of protective letters depends on the competent court, and therefore on the residence of the (future) seized party. This therefore incites to arrangements between district courts and possibly even to repair legislation.
In the Enforcement Directive, various national measures for enforcing intellectual property rights have been joined to make these measures available in the other member states too. This also applies to the measure of evidential seizure.
In the Enforcement Directive, the required details and warranties with regard to the evidential seizure have not been adequately included. This also had its repercussions on the implementation thereof in Dutch legislation. This means that in practice quite some questions have arisen in the use of this new weapon in the repertory of enforcement measures.
The courts tend to have a limited interpretation of the evidential seizure in that sense that the evidential seizure does not create any inspection right for the owner. In practice, this can lead to multiple (precious) proceedings being required before an owner has the material with which he can substantiate the infringement claim. It is hard to accept that this was the intention of the Community legislator, as the Enforcement Directive precisely pleads for effective means for obtaining evidence and an equal level of protection between the member states. The Belgian system can be linked up with, which has reserved a bigger role for the expert, without a multitude of proceedings.
As warranty for the seized party, one could think of a system of protective letters, which is accepted by all the district courts.
 Act of 8 March 2007, Dutch Bulletin of Acts and Decrees. 2007, 108; Directive 2004/48 of 29 April 2004 OJ EC 195.
 Com 2003/0046 final.
 Com 2003/0046 final, p. 15; Since 2001, Anton Piller orders have been called “search orders”, Civil Procedure Rule 23 and 25 and Practice Direction 25.7.
 Com 2003/0046 final, p. 15; For copyright, the saisie contrefaçon has been included in article L. 332-1 of the Code de la propriété intellectuelle.
 See inter alia the judgment by the Single Judge Charged with Urgent Cases of the District Court Amsterdam of 17 July 2008, De Jong/SVA, B9 6557, preliminary relief proceedings regarding the request for lifting a seizure pursuant to section 28 Dutch Copyright Act and section1019b Dutch Code of Civil Procedure.
 Explanatory Memorandum 30 392, no. 3, p. 20.
 Explanatory Memorandum 30 392, no. 3, p. 21.
 Single Judge Charged with Urgent Cases of the District Court The Hague 25 July 2007, IER 2007, no. 105, p. 406 (Abbott/Teva).
 See T&C Rechtsvordering, note 3 to section 1019b Dutch Code of Civil Procedure (Van Nispen).
 See District Court Arnhem 1 June 2007, LJN: BA9615; NJF 2007, 354 and De Groene Serie Privaatrecht, Burgerlijke Rechtsvordering, section 1019b, note 2 (processed by Mr. E.J. Numann) (Synthon/Astellas).
 Single Judge Charged with Urgent Cases of the District Court Zutphen 5 September 2008, LJN: BE9976 (Big Shadowlamp).
 Van Nispen, Note under Synthon/Astellas, BIE 2008, 2; otherwise L. Wijnbergen, JBPR 2009/6.
 See inter alia Single Judge Charged with Urgent Cases of the District Court The Hague 14 February 2008, B9 5658 (Westland Kaas), in which Westland applied for leave for evidential seizure for the collection of further evidence of this infringement. This was allowed. Single Judge Charged with Urgent Cases of the District Court The Hague 2 April 2008, B9 6017 (Westhoff v Grünewald), in which the court granted leave for evidential seizure on the books of the respondents in order to determine what the scope of the infringement was. Idem by the Single Judge Charged with Urgent Cases of the District Court Utrecht 16 April 2008, in the action between GCT and Exim (unpublished).
 Different from what the term imitation would lead to suspect, this procedure cannot only be used in the event of counterfeiting or piracy but also in the event of infringement of any intellectual property right.
 See art. 1369bis/1, paragraph 2 of the Belgian Judicial Code.
 See art. 1369bis/6 of the Belgian Judicial Code.
 Zie B. Michaux en E. De Gryse, T.B.H. 2007/7, p. 627-632.
 For the copyright: article L. 332-1 of the Code de la propriété intellectuelle.
 Com 2003/0046 final, p. 15.
 Court of Appeal Den Bosch, 17 March 2009, B9 7704 (Abbott/Medtronic).
 Also see the seizure workbook, 7th (improved) version, February 2009.
 On the question of submission see District Court The Hague 11 March 2009, B9 7665 (Abbott/ Medtronic).
 Court of Appeal Den Bosch 17 March 2009, B9 7704, (Abbott/Medtronic), ground 4.3.3.
 Cf. District court The Hague 13 October 2008, B9 7273 (ISO Groep/ROBOplug).
 Single Judge Charged with Urgent Cases of the District Court Arnhem 3 April 2008, IR 2008, no. 33 p. 68 (De Roode Roos/De Rooij) with note Van Neck.
 Supreme Court 25 November 2005, RvdW 2005, 133.
 ECJ 29 January 2008, C-275/06, AMI 2008-3, no. 6 with note A.H. Ekker.
 Also see above and recital 10 of the Enforcement Directive.
 According to a study from 2003, these include the district courts in Alkmaar, Amsterdam, Assen, Dordrecht, Haarlem and Maastricht; see: H.M. ten Haaft, TCR 2003, p. 75 and A.I.M. van Mierlo, WPNR 6718, p. 611.