On 1st January 2015, amendments to the Estonian Penal Code, which restructure the offences against intellectual property rights, shall enter into force. Provisions regarding offences against intellectual property rights, set out in Chapter 14 of the Penal Code, shall be changed significantly with the amendments described in this article.

On the one hand, the scope of some offences has been expanded. For example, as of the enforcement of the amendments, violation of authorship includes the liability for legal persons as well as natural persons. As a rule, a legal person can only be held responsible for a criminal act when provided by law.

On the other hand, the scope of many offences has been narrowed, decriminalizing offences committed for personal use and for financial purposes, making some acts punishable as misdemeanors, while the necessary elements of other criminal offences now include significant damage to the victim or significant profit to the perpetrator. For instance, compared to the previous version of Chapter 14 of the Penal Code, which contained only one misdemeanor, the Chapter now contains four misdemeanors and several offences have been incorporated under a single provision.

Criminal procedure is highly grievous and often infringes upon the fundamental rights of the suspected persons. Therefore the state only criminalizes the most grievous misconducts of the law and imposes measures that are not as strenuous for other violations. Intellectual property rights are governed by civil law and therefore, compensation for the violation of intellectual property rights is a civil liability. Criminal procedure should ensue only in the most severe cases of intellectual property violation.

As a member to the TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) Agreement , Estonia has to impose criminal liability only in cases set out in Article 61 of the Agreement, which states that members to the Agreement shall provide criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale. In the Estonian translation of the Agreement, however, the term “on a commercial scale” is mistranslated as “for financial purposes”. In the judicial practice, the courts have interpreted financial purposes quite widely, including actions that are not in the scope of commercial scale.

After the enforcement of the new legislation three criminal offences – (i) trade in pirated commodities; (ii) unlawful direction of works or objects of related rights to the public and (iii) violation of copyright within computer systems – entail the necessary elements of professional or economic activity and significant damage or gain. Also, two of the aforementioned offences contain the necessary element of having been committed willfully. Therefore, the amendments to the Penal Code bring the Estonian criminal law into conformity with the TRIPS Agreement.

With regard to the explanatory memorandum for the amendments in the Penal Code, which suggests that criminalizing the preparing of a pirated copy of an item protected under intellectual property law on a non-commercial scale, would be overreaction, the Author agrees that civil remedies should be able to compensate for any damages arising from such offences. Consequently, civil law should be amended accordingly to facilitate the arising need to hear matters of intellectual property right violations. However, the civil remedies in place today do not fulfil the need for additional protection of intellectual property rights arising from the amendments of the Penal Code.

In conclusion, the amendments to the Penal Code bring the Estonian law into conformity with international legislation and help focus the state resources on offences that severely violate intellectual property rights. Nevertheless, in order to fully impose intellectual property rights, the civil remedies should be made more effective to accommodate the amendments of the Penal Code.

By Gretta Oltjer