WORLD TRADE
ORGANIZATIONIP/N/6/FJI/1
5 October 2001
(01-4827)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
CHECKLIST OF ISSUES ON ENFORCEMENT1
Responses from Fiji
Introduction
Fiji's Copyright Act 1999 came into force in full on 1 July 2000 and is administered by the
Attorney-General's Chambers.  Industrial property is administered by the Ministry of Justice.
Prior to the new legislation coming into force, the Fiji law effectively remained the Copyright
Act 1956 of the United Kingdom as modified and applied to Fiji by the Copyright (Fiji) Order 1961.
COPYRIGHT
Civil and Administrative Procedures and Remedies
(a) Civil judicial procedures and remedies
1. Specify the courts which have jurisdiction over IPR infringement cases.
The High Court of Fiji as originally established under the Supreme Court Act – Cap. 13, has
been responsible for dealing with most intellectual property right matters under its general jurisdiction
as vested under s3(2) of the said Act.
The applicable rules governing proceedings are the High Court Rules 1988, which came into
force on 31 March 1988 (Legal Notice No. 37 of 1988), and govern pleadings, practice and procedure
in the High Court, for the dispatch of civil business.
The Magistrates Court pursuant to s122 of the Copyright Act 1999 has a role in the issue of
search warrants necessary for the investigation of copyright infringement complaints. Further,
pursuant to s230 of the said Act proceedings for an offence under it may be heard and determined by a
resident Magistrate and a maximum sentence under the Act may be imposed notwithstanding
limitations on a magistrate's jurisdiction under the Magistrates Courts (Civil Jurisdiction) Decree1988, to awards of $15,000.00.
2. Which persons have standing to assert IPRs? How may they be represented? Are there
requirements for mandatory personal appearances before the court by the right holder?
The right holder is the person best to assert rights in infringement proceedings.
                                                     
1 Document IP/C/5.IP/N/6/FJI/1
Page 2
Section 109 (1) of the Copyright Act 1999 stipulates,
"(1) An infringement of copyright is actionable by the copyright owner."
Right holders may be represented by a counsel as in any other proceedings.There are no mandatory requirements for personal appearances as such, but the situation may
arise where personal attendance is necessary.  For example pursuant to s126, at the trial of a cause
under Part VII (Remedies for Infringement) or a pr osecution for an offence under the Copyright Act,
proof of the subsistence of copyright may be given by affidavit , however, s126(2) stipulates that if a
party to a cause expresses an intention to cross-examine the deponent with regard to matters raised in
the affidavit , the affidavit  will not be used unless the deponent appears as a witness for such cross-
examination.  Ultimately, the discretion vests with the court as to the necessity of the deponent
appearing personally.
3. What authority do the judicial authorities h ave to order, at the request of an opposing
party, a party to a proceeding to produc e evidence that lies within its control?
Sections 111 and 123 of the Copyright Act cover orders for delivery up that a court may issue
against a party in civil and criminal proceedings,  respectively.  Section 111 applicable to civil
proceedings stipulates:
"(1) If a person …
(a) has an infringing copy of a work in the person's possession, custody or control in the
course of business;  or
(b) has in the person's possession, custody or control an object specifically designed or
adapted for making copies of a particular copyright work, knowing or having reason
to believe that the object has been or is to be used to make infringing copies,
the owner of the copyright in the work may apply to a court for an order that the infringing
copy or object be delivered up to the copyright owner or any other person the court directs.
(2) …
(3) …(4) Notwithstanding any rule of court, and even of other proceedings for infringements of
copyright have not been commenced, an order may be made under this section on an
ex parte  application by the copyright owner, if service of the notice of the application
would cause undue delay or other serious detriment to the copyright owner."
Similar provisions for delivery up exist also for performers rights, in sections 192 and 195 of
Part X of the Copyright Act.
4. What means exist to identify and protect confidential information brought forward as
evidence?
Pursuant to s222 of the Copyright Act, any rights and privileges existing under other statutory
enactments or at common law including the operation of any rule of equity relating to breaches of
trust or confidence (s222(1)(a)) are not affected by its operation (the Copyright Act).IP/N/6/FJI/1
Page 3
5. Describe the remedies that may be ordered by the judicial authorities and criteria,
legislative or jurisprudential, for their use ;
- injunctions;
- damages, including recovery of profits, and expenses, including attorney's fees;- destruction or other disposal of infringing goods and materials/implements for
their production;
- any other remedies.
Injunctions
 Pursuant to s109(2) of the Copyright Act, the same relief by way of damages, injunctions,
accounts or otherwise is available to the plaintiff as is available in respect of the infringement of any
other property right.
Procedurally, this means that the general procedure for applying for injunctions contained in
Order 29(1) of the High Court Rules by way of motion or summons, applies.
Damages  (including recovery of profits and expenses)
As indicated, s109(2) of the Act allows relief by way of damages to the plaintiff as is
available in respect of infringement of any other property right.
In short, damages will be available as of right to the plaintiff if he can establish infringement
of copyright.  If there is no provision made in the judgement for the assessment of damages, the
damages shall be subject to Order 37 Rule 1 of the High Court Rules 1988 and assessed by the court.
Section 114(4) of the Copyright Act states that in assessing damages the court must take
account of the terms of the licence and any pecuniary reward already awarded to the copyright owner
or exclusive licensee in respect of the infringement.  Section 114(4)(b) states that an account of profits
must not be directed if an award of damages has been made or an account of profits has been directed.
Pursuant to s114(4)(c) the Court must, if an account of profits is directed, apportion the
profits between the copyright owner and the exclusive licensee fairly.
Destruction or disposal of infringing goods
As stated earlier, sections 111 and 123 deal with the powers of the court to order delivery up
of infringing copies of works in civil and criminal proceedings, respectively.
Pursuant to s125 of the Act, an application may be made to the court that an infringing copy
delivered up pursuant to s111 or 123 be either forfeited to the copyright owner (s125(1)(a)) or
destroyed or dealt with as the court thinks fit (s125(1)(b)).
Any other remedies
Pursuant to s112 of the Act, a copyright owner may seize or detain infringing copies of his
work which are found exposed or available for sale or hire subject to the following requirements:
- the infringing copies are those which could have been the subject of an order for
delivery up (s111);IP/N/6/FJI/1
Page 4
- before anything is seized, notice of the time and place of the proposed seizure must
be given to the local police station;
- a notice in the prescribed form containing the particulars as to the person by whom or
on whose authority the seizure is made and the grounds on which it is made must beleft at the time and place of seizure.
The said seizure will be subject to a decision of the court as discussed earlier under s125,
where it would either be left with the copyright owner (forfeited) or destroyed or dealt with as the
court thinks fit.
6. In what circumstances, if any, do judicial authorities have the authority to order the
infringer to inform the right holder of the identity of third persons involved in the
production and distribution of the goods of services found to be infringing and of their
channels of distribution?
Pursuant to s111(b), for example, as part of the order for delivery up in civil proceedings, the
copyright owner may apply to the court for an order that an object specifically designed or adapted for
making copies of a particular copyright work (knowing or having reason to believe that the object has
been or is to be used to make infringing  copies) be delivered to the copyright owner.
The person to whom the copy or object is delivered will hold it pending the making of an
order pursuant to s125 of the Act.
7. Describe provisions relating to the indemnification of defendants wrongfully enjoined.
To what extent are public authorities and/or officials liable in such a situation and what
"remedial measures" are applicable to them?
Pursuant to s120 of the Act, if a person brings proceedings alleging an infringement of
copyright, a court may, on the application of any person against whom the proceedings are brought,
- make a declaration that the bringing of the proceedings was unjustified, and- make an order for the payment of damages for any loss suffered by the person against
whom the proceedings are brought.
8. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
There are no specific provisions contained in the Act governing the length and cost of
proceedings, given that few matters have arisen under the current legislation and its predecessor, the
United Kingdom Copyright Act 1956, and dealt with within the general jurisdiction of the High Court
of Fiji.
Proceedings and their cost have been dealt with as with any other civil proceedings governed
by the High Court Rules 1988.IP/N/6/FJI/1
Page 5
(b) Administrative procedures and remedies
9. Reply to the above questions in relation to any administrative procedures on the merits
and remedies that may result from these procedures.
No regulations have as yet been formulated, although Draft Copyright (Border Protection)
Regulations is being considered.
The elected government after the national elections to be held in August 2001 will probably
deal with this issue expeditiously.
Provisional Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities may order, and the
legal basis for such authority.
Some of the measures have been discussed previously and would be merely itemized here.
- Interlocutory Injunction, Interim Preserva tion of Property - Order 29 – High Court
Rules 1988.
- Orders for Delivery Up - s111, 123, 192, 195 – Copyright Act 1999.- Right to seize infringing copies - s112 (together with s125) – Copyright Act 1999.
11. In what circumstances may such measures be ordered inaudita altera  parte ?
All the measures described in the answer to question 10 above, can be applied for ex parte  if
necessity demands it.  For example, s111(4) stipulates:
"(4) Notwithstanding any rule of court, and even if other proceedings for infringement of
copyright have not been commenced, an order may be made under this section on anex parte  application by the copyright owner, if service of the notice of the application
would cause undue delay or other serious detriment to the copyright owner."
12. Describe the main procedures for the init iation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect thelegitimate interests of the defendant.
As intellectual property right matters are dealt with by the High Court under its general
jurisdiction, the main procedure for the maintenance of provisional measures would probably be the
same for application for interlocutory injunctions, by way of motions or summons as governed byOrder 29 of the High Court Rules.
Where the matter is one of urgency (as averred to in s111(4) of the Copyright Act), the
application may be made ex parte  on affidavit  (O.29,r1(2)).IP/N/6/FJI/1
Page 6
13. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
Most interlocutory proceedings, particularly those seeking interim  measures will be dealt with
expeditiously.
An application for interlocutory injunction was made in a recent proceeding pertaining to the
Copyright Act 1999, Fiji Video Library Association vs. A-G and Ors  – Civil Action No. 310/2000, in
which an interlocutory injunction was granted ex parte  to the plaintiff/applicant on 10 August 2000 by
the High Court to continue until 15 August 2000.  An application to extend the injunction for
3 months until 15 November 2000 was heard on 14 August 2000, and a decision was delivered on
30 August 2000, dismissing the application.
Interlocutory proceedings took about 20 days from initiation to dismissal.Costs/fees are negotiated between counsels and clients.
(b) Administrative procedures
14. Reply to the above questions in relation to any administrative provisional measures.
Comment on relevant administrative provisional measures will await the formulation of
appropriate regulations.
Special Requirements Related to Border Measures
15. Indicate for which goods it is possible to apply for the suspension by the customs
authorities of the release into free circulat ion, in particular whether these procedures
are available also in respect of goods which involve infringements of intellectual
property rights other than counterfeit trademark or pirated copyright goods as defined
in the TRIPS Agreement (footnote to Article 51).  Specify, together with relevant
criteria, any imports excluded from the application of such procedures (such as goods
from another member of a customs union, goods in transit or de minimis imports).  Do
the procedures apply to imports of goods put on the market in another country by orwith the consent of the right holder a nd to goods destined for exportation?
We can only discuss border protection measures as contained in Part VIII of the Copyright
Act, which deals with pirated copy defined in s 127(a) as generally the making of a copy of a
copyright work without the licence of the pe rson who owns the copyright in the work.
Pirated copy includes:- copy of a copyright work that is a literary, dramatic, musical or artistic, or of the
typographical arrangement of a published edition, or of a sound recording or of anaudio visual work (s127(a));
- includes any illicit recording, and illicit recording that is a copyright work in a
country other than Fiji.IP/N/6/FJI/1
Page 7
16. Provide a description of the main elements of the procedures relating to the suspension
of the release of goods by customs authoritie s, in particular the competent authorities
(Article 51), the requirements for an application (Article 52) and various requirements
related to the duration of suspension (Artic le 55).  How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of thegoods) and 57 (right of inspection and information) been implemented?
Pursuant to s128(1) of the Act, a copyright owner may issue a notice to the Comptroller of
Customs requesting him to detain any pirated copies of the item which he owns copyright in and
which comes into the control of Customs.
The notice may be in force for a period of 5 years, or where applicable during the duration of
the period for which copyright lasts, if less than 5 years.
If the notice has been accepted and the Comptroller forms the opinion that a pirated item to
which the notice relates has come into the control of the Customs the following procedures will be
followed:
- The Comptroller may conduct an investigation to establish whether the item is a
pirated copy to which the notice relates, to which he has wide powers requiring any
interested person to supply information (s129(2)).
- The Comptroller must within a reasonable period form an opinion as to whether or
not the item is a pirated copy to which the notice relates (s129(3)).
- Written notice of the Comptroller's opinion or determination must as soon as
practicable be served on the claimant or any other person having an interest in theitem (s131).
- If the Comptroller forms the opinion that the imported item is a pirated copy, the item
must be detained in custody (s132) until (s132(1)(a) – (e)),
- the notice is discharged;
- an order is served that the item be released;
- a determination is made that the item is not a pirated copy;- proceedings are abandoned;- 10 working days have elapsed and the Comptroller has not been served with a
notice of proceedings by a person other than the importer or consignee.
- Any person may apply to a court for a decision whether or not an item which is the
subject of a determination is a pirated copy that has been imported other than for
private and domestic use (s133(3)).
- If in proceedings a court decides that the item is a pirated copy that has been imported
other than for private or domestic use, the court may order the item be,
- forfeited;
- destroyed;
- dealt with as the court thinks fit.IP/N/6/FJI/1
Page 8
- If in such proceedings the court decides that the item is not a pirated copy, the court
may order any person who is a party to the proceedings to pay compensation to the
importer, consignee or owner of the it em, as the court thinks fit (s134(4)).
- The Comptroller of Customs must in respect of any item that is the subject of notice,
investigation or proceeding allow any person claiming to have an interest in the item
to inspect the item (s135(1), (2), (3)).
17. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.  How long is the validity of
decisions by the competent authorities for the suspension of the release of goods into free
circulation?
The relevant provisions are:
- s129(2)  -  Information required for the investigation of the item must be provided
within 10 working days of it being required.
- s132(1)  -  An item determined to be a pirated copy must be released if after
10 working days the Comptroller has not been served with a notice of proceedings.  It
may be extended to 20 working days (s132(2)).
Otherwise proceedings are determined by the interested person actively pursuing the making
of necessary orders pursuant to s133(1), (2), (3) or pursuant to s134.
18. Are competent authorities required to act upon  their own initiative and, if so, in what
circumstances?  Are there any special provisions applicable to ex officio  action?
There are no special provisions in the Act, however, the Comptroller of Customs may,
pursuant to a notice issued under s128, have a considerable discretion to investigate any item that has
been imported which in his opinion is a pirated copy, during the duration of the notice, which may last
for 5 years, as discussed earlier.
19. Describe the remedies that the competent authorities have the authority to order and
any criteria regulating their use.
These have been generally discussed in the response to question 16 above.
Criminal Procedures
20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
Copyright infringements may be dealt with both in the High Court and the Magistrates Court
as governed by s230 of the Act.
21. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
Insofar as the Copyright Act is concerned, the primary matters for which criminal offences
attach are the making of or dealing with infringing objects.IP/N/6/FJI/1
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Section 121(1) specifies "that a person who other than pursuant to a copyright licence;
(a) makes for sale or hire(b) imports into the Fiji Islands other than for private and domestic use(c) possesses in the course of business with a view to committing any act infringing the
copyright
(d) in the course of business,
- offers or exposes for sale or hire
- exhibits in public
- distributes
(e) sells or lets for hire (in the course of business or otherwise)
(f) distributes in the course of business to an extent that it prejudicially affects the
copyright owner,
an object that the person knows is an infringing copy of a copyright work, commits an
offence."
Sections 121(2) and (3) of the Act also create specific offences for persons who know or
ought to have reasonably known,
"(2) that an object in his possession specifically designed or adapted to make infringing
copies for sale or use in the course of business or
(3) who cause a literary, dramatic, musical work of sound recording or film to be
performed knowing or ought reasonably to  have known that doing so infringes
copyright."
22. Which public authorities are responsible fo r initiating criminal proceedings? Are they
required to do this on their own initiative and/or in response to complaints?
It is the Police who initiate criminal proceedings as a response to complaints.  In certain
instances the Office of the Direction of Public Prosecutions may be asked by the Police to advise on
the initiation of criminal proceedings.
23. Do private persons have standing to initiate criminal proceedings and, if so, who?
It is not specified in the Act whether a person can initiate criminal proceedings.
Due to the comprehensive nature of the remedi es in the Act (Part VII), it is probably not
envisaged to have much scope, as civil remedies are adequate.
Division 5 which covers offences under the Act, creates specific search powers for the Police
and innovative orders (delivery up) which would seem to discourage private proceedings.IP/N/6/FJI/1
Page 10
24. Specify, by category of IPR and type of infringement where necessary, the penalties and
other remedies that may be imposed:
- imprisonment;
- monetary fines;- seizure, forfeiture and destruction of infringing goods and materials and
implements for their production;
- other.
Pursuant to s121(5) of the Copyright Act, a person who commits an offence under it is liable
on conviction,
"(a) in the case of an offence under s121(1) to a fine of $5,000 for every infringing copy
to which the offence relates but not exceeding $50,000 in respect of the same
transaction and to imprisonment for 12 months;
(b) in the case of an offence under subsections 121(2) and (3), a fine of $50,000 and to
imprisonment for 12 months;
(c) in the case of a second or subsequent offence against sections 121(2) or (3), a fine of
$100,000 and to imprisonment for 2 years.
Pursuant to s125, an item seized pursuant to an order for delivery up in criminal proceedings
may be forfeited to the copyright owner or destroye d or otherwise dealt with as the court thinks fit.
25. Describe provisions governing the length and any cost of proceedings.  Provide any
available data on the actual duration of proceedings and their cost, if any.
See the response to question 13 above.
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