Prepared by: - Daniel Samuel

Submitted to:-
Date:-
 ADDIS ABABA UNIVERSITY
SCHOOL OF LAW
L.L.M REGULAR PROGRAM

NN
EXAMINING THE CRIMINAL
LIABILITY REGIME FOR
COPYRIGHT PIRACY AND
TRADEMARK
COUNTERFEITING IN ETHIOPIA
IN LIGHT OF THE TRIPS
AGREEMENT
SUBMITTED IN PARTIAL FULFILLMENT
OF THE COURSE ADVANCED

1
 TABLE OF CONTENTS

Intellectual property law --------------------------------------------------------------------- 2

Copyright -------------------------------------------------------------------------------------------- 3
Copyright piracy

Trademark ----------------------------------------------------------------------------- 5
Trademark counterfeiting

Criminal law --------------------------------------------------------------------------- 6

Rationale and purpose of criminal law

General aim of the Ethiopian criminal law system

Protection under the criminal law ---------------------------------------------- 8

For Copyright

For Trademark

TRIPS agreement -------------------------------------------------------------------- 9

Criminal liability regime in light of TRIPS --------------------------------------10
Summary ------------------------------------------------------------------------------ 12

2
INTELLECTUAL PROPERTY

Intellectual property is one among subsets of property, it is the section of the law that deals with the
creation of the mind or works of the human intellect 1.Simply put it is the legal property which is the result
of the works of human mind in the realms of industry, scientific invention and artistic domain. In the
present age of competition, new projects, brand ideas and eye catching designs are the passport to
business success, that’s why it’s important to protect ideas from being exploited by others, and hence
intellectual property rights ensure a person enjoys the fruit of his thought in exclusion to everyone else.

Mentions of copyrights, patents and other matters of intellectual property law are sparse in early
history. It is not until medieval Europe that some major and well known legislations were passed, the first
of these was the statute of monopolies.2Intellectual property rights first started out as national rights, but
as industrial revolution happened, it unleashed forces that compelled countries to form a closer
relationship, it wasn’t long before the unilateral recognition of intellectual property right turned into
bilateral agreement which again transpired into multilateral approach on an international level.

In 1883, the Paris convention came into being. It was an international agreement through which
inventors could protect their innovations even if they were being used in other counties. Three years later,
writers came together in 1886 for the Berne convention which led to protection on an international level
for all forms of written expression as well as songs, drawings, operas, sculptures, paintings and more. 3
Trademark protection then began to widen with the creation of two independent treaties – the Madrid
agreement in 1891 and the Madrid protocol in 1989 – together known as the Madrid system for the
international registration of marks. The main purpose of the agreement was to provide a mechanism that
would allow for a single and inexpensive international trademark registration and to eliminate the need
for filing, prosecuting or maintaining separate registrations in multiple countries. Despite its name, the
protocol is a separate treaty and not a protocol to the agreement, the protocol was simply adopted to
correct the perceived deficiencies in the agreement. 4

1
Mersha, Balew, and G/hiwot Hadush. Law of intellectual property. 2009. P. 1.
2
Williams, Jeff. “The Evolution of intellectual property.” Williams law firm, https://txpatentattorney.com. Accessed
26 May 2020.
3
Ibid
4
Feliu, vicenc. “International Trademark law – The Madrid system.” GlobaLex, 2007,
www.nyulawglobal.org/globalex/international_Trademark_Law.html. Accessed 26 may 2020.

3
 As mentioned above, there are many multilateral treaties on intellectual property, but the best known
and furthest reaching is the World Trade organization agreement on trade-related aspects of intellectual
property rights, which we will discuss in detail later on.

Intellectual property rights broadly include patents, copyright, industrial design rights, trademarks,
plant variety right, trade dress, geographical indications, and in some jurisdictions trade secret. But the
main components of intellectual property rights are patent which protects inventions by giving inventors
a monopoly on the manufacture, use, and sale of the invention, copyright which protects creative work
by preventing unauthorized reproduction, and trademark which protects customers by helping them
identify the product. As understood from the brief introduction, intellectual property is about ideas and
their ownership, and it is basically about the rights of creators to make money from their work .

Copyright

Copyright is a form of negative intellectual property right that protects original works of authorship
which includes literary, dramatic, musical, and creative works, such as poetry, novels, movies, songs,
computer software, and architecture. Copyright does not shield facts, ideas, systems, or techniques of
operation, although it defends the way these things are expressed, in simpler terms, copyright is the right
to copy, meaning the original creators of products and anyone they give authorization to are the only ones
with exclusive right to reproduce the work.5 Note to be taken that copyright protection is for the style one
expresses himself, thus does not include ideas, names, phrases, methods, underlying concepts, and
widely-accepted theorems.

The emphasis attached to copyright differs from one legal system to another, the nature of protection
in the Anglo/American legal system is generally regarded as the copyright tradition. While in civil law
tradition it is called the author system or science tradition. Under common law legal system copyright
means the main act contained in copyright that is the multiplication of copies from the original.
Therefore, Anglo/American legal tradition gives emphasis on copyright-to acts rather than the person. But
under continental legal tradition emphasis is attached to the author or the person.

5
Kenton, will. “Copyright.” Investopedia , 2020, www.investopedia.com/terms/c/copyright.asp. Accessed 26 may
2020.

4
 Hence, under common law tradition the right holder or the subject of the right is not necessarily an
individual who claims themselves as the author; accordingly the employer or the person who
commissioned the production of works could ultimately become the owner of those production. Contrary
to this approach in civil law legal system nobody can enjoy such rights other than the author, thus all the
right contained in the copyright are to be enjoyed by the producer or in this case the author of the work. 6
Some basic but important aspects to know about copyright are the following:-

 Copyright exists from the moment content is created in a fixed form.

 Fair use is the legal utilization of copyrighted content for the purpose of
commentary/review, news reporting, scholarly research, parody, and education. However,
fair use does not immediately apply even if your content fits under one of these categories,
as it is decided on a case by case bases.
 All plagiarism is copyright infringement but not all copyright infringement is plagiarism.
 Just because someone told you that you could use their content doesn’t mean you can
distribute it to others.7

Now that we have seen what copyright is, the next topic is copyright piracy. Copyright piracy is the
illegal activity of copying and selling a book, film, music, etc. for which you do not own the copyright.
“Piracy” is slang for copyright infringement, which is usually done for the purpose of distribution and
profit. The immoral and illegal aspect of copyright piracy is the fact that “pirates” sell author’s work for
less or for free or through trade which brings immense loss in profit for the original creator.

Infringement constitutes acts done by others in violation of the exclusive rights of the copyright
holder, the occurrence of infringement of exclusive rights presupposes that, the copyright is validly
present; meaning, the copyright must fall under the limitation and duration of protection must not be
expired. Most of the time, infringement occurs, when there is no authorization from the copyright holder;

but, sometimes, even if there is authorization third parties might exceed the authorization and infringe the
copyright. There are two types of infringements, direct and indirect infringements.

6
Parker, Jon. “Copyright Law: How Does The UAE Compare With Common Law Jurisdictions.” Mondaq, 2017,
www.mondaq.com/intellectual-property/572336/copyright-Law-How-Does-The-UAE-Compare-With-Common-
Law-Jurisdictions. Accessed 26 May 2020.
7
Smith, Anthony. “Top 5 Things To Know About Copyright.” YouTube, uploaded by Freedom, 16 November 2016,
https://youtu.be/GCW18qFNhYc.

5
Trademark

Trademarks are brand names which are labeled to products and services (trademarks used to identify
services are usually called service marks), the mark is a distinguished sign like a word, phrase, symbol or
a combination of this elements. Trademark is a bit different than the above mentioned intellectual
property right as it not only protects owners, but also customers by indicating the source of the brand thus
avoiding confusion as to the origin and quality of the product.

Trademark isn’t a completely new concept, in the ancient times traders applied marks and symbols to
indicate ownership. For example, Egyptians, around 2000 BC, used to brand their cattle, and marked their
sheep as a way of identifying their livestock. Similarly, merchants also marked their goods to specify the
source of the goods. The original function of trademark, therefore, was simply to indicate the source or
the owner of the goods or animals. Nowadays, trademark is taking new characters. While the traditional
and the modern notion of trademark functions to identify source and build commercial reputation, recent
developments demonstrate that trademark extends beyond a mark or a symbol to encompass the
personality, style, or aura associated with a particular product. A typical example of this is the Coca-Cola,
Which is perceived as more than a product, a reputation for a quality and a mark. Instead, it is an Image
and a way of life that is instituted through the presentation, marketing, advertising and Packing as well as
the production of the product.8

In the present age, to qualify as a trademark a sign must meet three clear criteria, the first one is that it
must be capable of being presented graphically, it must be distinct enough to be able to distinguish the
product it is representing from other products and services, and it must be capable of acting as a badge of
origin.9 Modern trademarks are the building blocks of today’s global brands and they help consumers to
identify and purchase products and services with confidence, based on a clear understanding of the origin
of the goods and on the reputation of the organization behind the trademark. There are two types of
trademarks status, registered and unregistered. A registered trademark, formally noted by an R in a circle,
requires an application to a national intellectual property office. The R mark can only be used when the
trademark has passed its assessment and began granted. Unregistered trademark arises when no formal

registration takes place. They are a statement from the mark user that they consider the respective mark to
be associated with their trading activity. Unregistered marks are often noted with the letters TM.
8
Mersha, Balew, and G/hiwot Hadush. Law of intellectual property. 2009. P. 262.
9
“ what is a trademark ?”, YouTube , uploaded by Hollogram , 23 September 2014, http://youtu.be/owxjB2iGFPE

6
 Trademark infringement could happen when the likelihood of confusion exists between trademarks,
this means that the brands are so similar that consumers would mistakenly believe the two products came
from the same source and have similar quality.

Incase this happens, the fake brand must stop confusing consumers by changing its trademark in
addition to paying damages to the original trademark owner, but as every other intellectual property right,
trademark is also subject to some limitations, like trademark abandonment, geographic limitation and fair
use.

Other important content of trademark is trademark counterfeiting, trademark counterfeiting is when a

manufacturer produces unauthorized goods so that they very closely resemble the brand-name goods.
Trademark counterfeiting is always considered infringement, and is a common type of trademark
infringement. However, not all infringements qualify as counterfeiting. 10

Criminal law (Rationale and purpose of criminal law)

Criminal law defines crimes at large, and in its broadest form equates to the administration of criminal
justice. In recent years, the idea that criminal sanctions should be seen as an essential mechanism within
transitional justice for dealing with collective violence has gained increasing traction. The concept of
punishment as being the only possible form of reparation for serious human rights violations, as a means
of satisfying victims, or even as the victims’ right, is a significant challenge to the traditional
understanding of criminal law. Below are certain purposes attributed to criminal law.

A, criminal law as a truth-finding mechanism: - establishment of the truth is undoubtedly one important
purpose of the criminal law, in addition to exhaustive investigation, the truth must be complemented by

other mechanisms in order to offer the broadest, deepest and most multifaceted reconstruction of the
events that have occurred.

B, criminal law as a mechanism for reconciliation: - reconciliation is another purpose of criminal law, it is
the restoration of peaceful or amicable relations between two individuals who were previously in conflict
with one another. Reconciliation ordinarily implies forgiveness for injuries on either or both sides.

10
Sommers, Mark. “Taking an Aggressive Stance against Counterfeiters: An Overview of Trademark Counterfeiting
Litigation under the Lanham Act.” Finnegan, 1999. Accessed 26 May 2020.

7
Reconciliation is used interchangeably with conciliation.
C, criminal law as a peace-building and foundational mechanism: -criminal law obviously has a peace-
building role, this purpose assumes the notion that the exemplary punishment of crimes committed by one
or all of the parties to a conflict contributes to the construction of peace. 11

When we bring this to the national level, specifically Ethiopia, the general objective of our criminal
law is more or less similar to the general purposes stated above. The first one is protection of persons
and property, as safety is important, we need to maintain peace and order to feel safe, and that partly
depends on having an effective penal system. The second one is deterrence of criminal behavior,
deterrence is a danger that stops someone from acting, and it is the assumption of our criminal code that if
it makes certain act’s punishment sever enough, others would be deterred from committing that act in fear
of the consequences. But it must be noted that cruel or unusual punishment is prohibited by our
constitution by the virtue of Article 18, therefore the criminal code must try and strike a balance between
deterring people and respecting their constitutional right. The third and the most obvious purpose is
Punishment, since deterrence doesn’t always work, some individuals commit a crime without or despite
knowing the consequences for that action. Therefore punishment is needed for the sake of punishing the
criminal as people have to learn to take responsibility and pay for the wrong they commit. The last but
important purpose of our criminal code is Rehabilitation of the criminal, once a criminal is convicted,
that person doesn’t simply sit inside a prison cell for the entirety of his sentence, the prisoner is provided
with education, training and different life skills that ensures that once released, he doesn’t go back to his
criminal ways.12 All in all, the Ethiopian penal code aims at not only punishing the offender, but at

rehabilitating and educating him. As a result, it provides ample opportunities for probation and
suspension of sentences.

Protection for copyright and trademark under the criminal liability regime

Before we see the criminal liability regime, let’s briefly discuss the civil liability. When we come to
copyright, it is a negative property right in its nature and mostly the action to be taken in claiming
11
Maculan , Elena , and Alicia Gil Gil . “The Rationale and Purposes of Criminal Law and Punishment in Transitional
Context. “ Oxford journal of Legal Studies, vol. 40, no. 1, 2020, pp. 132-157,
https://academic.oup.com/ojls/article/40/1/132/5716712, Accessed 27 May 2020.
12
Nirmala K, Glory, and Serkaddis Zegeye. Criminal Law I. 2009, pp.6-7

8
infringement is either extra-contractual claims or contractual enforcement, even more so based on tort
than contract. The federal high court exercises the copyright related jurisdiction, as copyright regime
might give rise to criminal consequence or cases 13. Through application of the principle of delegation the
state supreme court can exercise what the federal high court exercises. Under the newly amended law
proclamation No. 410/2004 Article 44 it states that, intellectual property tribunal will established under
Ethiopian intellectual property office, the Copyright and Neighboring Right proclamation was amended
holding the purpose of seeking to reward those who produce literary, artistic and similar works. Such
works are believed to play a key role in enhancing the country’s culture, science and technological
growth14.Though this quasi-judicial bodies only has jurisdiction over civil cases in exception to tort.

When we see the civil liability protection for the infringement of copyright, certain remedies including
injections and confiscation of infringed copies or articles and documents that are used for producing
infringed copies are provided by the virtue of Article 41. 15 In addition to the above remedies,
compensation is another remedy, and the cumulative readings of Article 41 sub article 1 and sub article 4
helps to fix the moderate amount of compensation.

When we see the criminal liability or protection, the mental element of infringer is going to be taken
into account in determining infringement under criminal suit. Accordingly Article 36 is as follows, 1,
unless otherwise heavier penalty is provided for under the criminal law, whosever intentionally violates a
right protected under this law shall be punished with rigorous imprisonment of a term not less than five
years and not more than ten years. 2, unless otherwise heavier penalty is provided for under the criminal

law, whosever by gross negligence violates a right protected under this law shall be punished with
rigorous imprisonment of a term not less than one year and not more than five years. 3, The penalty,
where appropriate, shall include the seizure, forfeiture and destruction of the infringing goods and of any
materials and implements used in the commission of the offence. 16 In addition to this, in accordance with
Article 43 sub article 3 and 4, additional punishment of fines provided. The rationale behind imposing
punishment of fines is basically to maximize the deterrence goals of the punishment. Juridical persons can

13
Berihu, Taame. “AAU-ETD Home - College of Law and Governance Studies - Law - view item Exceptions and
Limitations under Ethiopian Copyright Law: A comparative Analysis.” 2013,
http://localhost:80/xmlui/handle/123456789/15485. Accessed 27 May 2020.
14
Copyright and Neighboring Rights Protection Proclamation, 2004, preamble para. 1, Proclamation. No. 410/2004,
Federal Negarit Gezetta, 10th year, No.55. ( herein after referred to as proclamation No. 410/2004)
15
Art 41 proclamation No. 410/2004
16
Art 36 Proclamation No. 410/2004

9
also be liable for infringement they caused to the right holders; but, punishment will be determined in
accordance with Article 34 and 90 of EFDRE criminal code.

TRIPS AGREEMENT

The agreement on Trade-Related Aspects of Intellectual Right (TRIPS) is an international legal

agreement between all the member nations of the World Trade Organization (WTO), the TRIPS
agreement which came into effect on 1 January 1995, is the most comprehensive multilateral agreement
on intellectual property. This agreement sets out minimum standards of protection to be provided by each
member, in addition to that, it provides for provisions dealing with domestic procedures and remedies for
the enforcement of intellectual property rights. The general goals of the TRIPS Agreement are contained
in the preamble of the Agreement, which reproduces the basic Uruguay round negotiation objective
established in the TRIPS area by the 1986 Punta del Este Declaration and the 1988/89 mid-Term. These
objectives include the reduction of distortions and impediments to international trade, promotion of
effective and adequate protection of intellectual property right, and ensuring that measures and
procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade. 17

Now let’s see some general provisions in the TRIPS agreement concerning copyright and trademark.
In addition to requiring compliance with the basic standards of the Berne convention, the TRIPS
Agreement clarifies and adds some points like Article 2 which confirms that copyright protection shall
extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as
such, and Article 11 which provides that authors shall have in respect of at least computer programs and,
in certain circumstances, of cinematographic works the right to authorize or to prohibit the commercial

rental to the public of originals or copies of their copyright works, just to state few. When we see some
general provisions of trademark, Article 15 provides that any signs, capable of distinguishing the goods
and services of one undertaking from those of other undertaking, must be eligible for registration as a
trademark, provided that it is visually perceptible. Such signs, in particular words including personal
names, letters, numerals, figurative elements and combinations of colors as well as any combination of
such signs, must be eligible for registration as trademark.

All in all, the TRIPS Agreement is a minimum standards agreement, which allows members to provide
more extensive protection of intellectual property if they so wish. Members are left free to determine the
17
“Overview: The TRIPS Agreement.” www.wto.org/english/tratop-e/trips-e/intel2-e.htm. Accessed 27 may 2020.

10
appropriate method of implementing the provisions of the Agreement within their own legal system and
practice.

EXAMINING THE CRIMINAL LIABILITY REGIME FOR COPYRIGHT

PIRACY AND TRADEMARK COUNTERFEITING IN ETHIOPIA IN
LIGHT OF THE TRIPS AGREEMENT
Before we discuss Ethiopia’s criminal regime in light of the TRIPS Agreement, let’s see where
Ethiopia stands regarding all of it. It all started with a system called “Gatt”, which is an abbreviation for
general agreement on trade and tariffs; and it was first discussed during the United Nations conference on
Trade and Employment and was the outcome of the failure of negotiating governments to create the
International Trade Organization, it was signed by 23 nations in Geneva on 30 October 1947, and took
effect on 1 January 1948. This institution is both a treaty and a law governing international trade in goods
and also an organization itself. At its inception the “Gett” put in place the systems of multilateral trade
negotiation. From 1959’s to 1990’s about eight rounds of multilateral trade negotiation were convened;
the achievement of these agreements were very historical because it managed to create what is today
called the WTO. WTO is a very strong institution which now have taken over Gatt. 18 The difference
between these two is basically that the countries acceding to the WTO’s system of protection can’t
selectively do so. Meaning, a country which wants the “Gatt” has no options to leave out TRIPS.

After years of observation, Ethiopia formally applied for membership at the World Trade organization
in January 2003 for the sake of selling its agricultural products; accordingly, Ethiopia has already started
negotiation some years ago, Ethiopia is one of five East African countries which are yet members.

Under the TRIPS agreement, it is stated that every member country of the WTO is obliged to
implement at the domestic level Art 1 – 12 and 19 of the Paris convention, whether or not that member is
signatory of the Paris convention in the first place. Based on the above understanding, the TRIPS
Agreement provides under Art 16 that the owner of a registered Trademark will have the exclusive right
to prevent all third parties not having the owner’s consent from using in the course of trade, identical or

Majaski, Christina. “General Agreement on Tariffs and Trade.” Investopedia , 2019,

18

www.investopedia.com/terms/g/gatt.asp. Accessed 27 May 2020.

11
similar signs for goods or services which are identical to those in respect of which the trademark is
registered were such use would result in a likelihood of confusion 19. Thus in conformity with the
prescription of Article 16, an unauthorized label on goods using signs already registered as a trademark
shall be considered as infringement and the labeled goods as counterfeit goods. 20 From all this we’d
understand that the TRIPS strengthened the protection of well-known marks in the sense that it applies
expressly to services and is extended to “dissimilar goods or services when use of a registered mark
would likely indicate a harmful connection between those dissimilar goods or services and the owner of
the registered mark.”

Under the trademark proclamation of Ethiopia, a trademark shall be eligible for registration if it fulfills
the conditions of being a sign as defined under Art 2 sub 12, which includes words, designs, letters,
numbers, colors or the shape of goods or their packaging or the combination thereof, being capable of
being represented graphically as envisaged under Art 8 sub 3a. While similarly in Article 15 of the TRIPS
agreement it provides that any signs, capable of distinguishing the goods and services of one undertaking
from those of other undertaking, must be eligible for registration as a trademark, provided that it is
visually perceptible. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colors as well as any combination of such signs, must be eligible
for registration as trademark.

Further, Section 5 of the criminal procedures Article 61 states that members shall provide for criminal
procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright
piracy on commercial scale. Remedies available shall include imprisonment and / or monetary fines
sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a
corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture
and destruction of the infringing and destruction of the infringing goods and implements the predominant
use of which has been in the commission of the offence. Members may provide for criminal procedures
and penalties to be applied in other cases of infringement of intellectual property rights, in particular
where they are committed willfully and on a commercial scale.

19
TRIPS, Art.16
20
Esmael kassahun, Tilahun. Protection of Well-known Trademarks in Ethiopia: A comparative treatise under the
trademark proclamation.

12
SUMMARY

Intellectual property is one among subsets of property, it is the section of the law that deals with the
creation of the mind or works of the human intellect. Copyright is a form of negative intellectual property
right that protects original works of authorship which includes literary, dramatic, musical, and creative
works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright piracy is the
illegal activity of copying and selling a book, film, music, etc. for which you do not own the copyright.
The other intellectual property is Trademark, Trademarks are brand names which are labeled to products
and services (trademarks used to identify services are usually called service marks), the mark is a
distinguished sign like a word, phrase, symbol or a combination of this elements while trademark
counterfeiting is when a manufacturer produces unauthorized goods so that they very closely resemble the
brand-name goods. The agreement on Trade-Related Aspects of Intellectual Right (TRIPS) is an
international legal agreement between all the member nations of the World Trade Organization (WTO) in
which Ethiopia formally applied for membership at, Ethiopia has thus promised to revise its intellectual
property law regime in light of the agreement on TRIPS to be carried out in two fronts: the enactment of
new intellectual property laws in areas where little or none existed before and revisiting existing
intellectual property law.

13