Combating piracy requires a multi-faceted approach which includes the establishment of an effective legal framework, having a properly equipped enforcement authority and public awareness of IP rights, the penalties and moral basis for protecting IP rights.

The Copyright Act of Jamaica “(the Act”) came into effect in 1993. Many realities which affect the management of IP rights have changed significantly since then. One of the most obvious changes is the infiltration into society of technology such as the Internet, file sharing software and websites, and mechanisms for easy duplication of digital material. In many other parts of the world, particularly in the United States and in some European countries, there is constant debate and response in respect of dealing with emerging IP management issues. The debate in Jamaica has not quite taken off, but from time to time there are spurts of enforcement activities aimed at protecting IP rights under current legislation.

Under the Act, infringement of copyright may give rise to both criminal and civil liabilities. A person convicted of criminal infringement is liable to face imprisonment not exceeding five years or a fine to be determined by the judge, if convicted in the Supreme Court. If convicted in a Resident Magistrates Court, the person may face imprisonment not exceeding two years or a fine not exceeding one hundred thousand dollars ($100,000). A successful claimant in a civil claim is entitled to an award of damages, injunction, account for profits and all other awards as are available to claimants regarding infringement of other proprietary rights. The court may also award additional damages, such as exemplary or aggravated damages, based on circumstances such as the flagrancy of the infringement.

Infringement of copyright essentially involves unauthorised use, distribution or other dealings with the original work of an author of protected works. Protected works include literary, musical, artistic, dramatic, sound recording, broadcast or cable programme, film and typographical arrangement of a published edition. The only persons entitled to authorise the use of or dealings with protected work is the owner of the copyright and his licensee(s). The scope of activities which may be actionable in a claim for infringement of copyright include the following:

(i) being in the possession of infringing work in the course of a business;

(ii) selling, hiring, offering or exposing for sale or hire unauthorised copies of protected work;

(iii) exhibiting in public or distributing in the course of a business unauthorised copies of protected work;

(iv) distributing otherwise than in the course of a business, to such an extent as to affect prejudicially the owner of the copyright;

(v) making, importing into Jamaica, possessing in the course of business, or selling, letting for hire, or offering for sale or hire an article specifically designed or adapted for making copies of protected works.

(vi) transmitting protected works by means of a telecommunications system (otherwise than by broadcasting or inclusion in a cable programme service) knowing or having reason to believe that infringing copies of the work will be made by means of the reception of the transmission in Jamaica or elsewhere; giving permission for a place of public entertainment to be used for an infringing performance, unless when the person gave permission he believed on reasonable grounds that the performance would not infringe copyright;

(vii) supplying apparatus for playing sound recordings or showing films or receiving visual images or sounds conveyed by electronic means; and

(viii) giving permission (as the occupier) for apparatus mentioned at (viii) above to be brought onto the premises.

In most instances, the claimant will be required to prove that the infringers mentioned above knew or had reason to believe that infringement of copyright would occur. In his defence, a defendant may prove that at the time of the infringement he did not know or had no reason to believe that copyright subsisted in the relevant work. Where this defence is properly substantiated, the claimant would not be entitled to damages in a civil claim, but he may obtain other remedies such as an account for profits or injunction.

The copyright anti-piracy provisions in the Act seem adequate to ground causes of action related to sale of infringing copies of, among other things, musical works and movies on CDs and DVDs and even for the sharing of files via the internet, which are common piracy issues in Jamaica. One will also note that infringement may occur even in circumstances where the person making the distribution does not obtain any commercial gain from the distribution.

Andrea Scarlett-Lozer is an Associate at Myers, Fletcher & Gordon and is a member of the firm’s Commercial and Intellectual Property Departments. Andrea may be contacted via andrea.scarlett@mfg.com.jm or www.myersfletcher.com.