The Anti-Counterfeiting Trade Agreement (“ACTA”) is a “groundbreaking initiative by key trading partners to strengthen the international legal framework for effectively combating global proliferation of commercial-scale counterfeiting and piracy.” (USTR). ACTA was negotiated from 2007 through 2010 by the U.S., the European Union, Switzerland, Canada, Australia, New Zealand, Mexico, Singapore, Morocco, Japan, and South Korea. (EFF). Enacted in October 2011, ACTA “aims to establish an international legal framework for targeting counterfeit goods, generic medicines and copyright infringement on the Internet, and would create a new governing body outside existing forums, such as the World Trade Organization, the World Intellectual Property Organization, and the United Nations.”
Amongst its provisions include language “to deepen international cooperation and to promote strong intellectual property rights enforcement practices. Together, these provisions will help to support American jobs in innovative and creative industries against intellectual property theft.” (USTR).
The agreement was initially signed in October 2011 by Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea, and the United States.
In 2012, Mexico and 22 European Union member states, including Austria, Belgium, Bulgaria, Czech Republic, Denmark, Finland, France, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxemburg, Malta, Poland, Portugal, Romania, Slovenia, Spain, Sweden and the United Kingdom, ratified ACTA.
The draft structure of the agreement as discussed at this stage is the following (INTA):
INITIAL PROVISIONS AND DEFINITIONS
This chapter focuses on clarifying issues that arise throughout the agreement, such as Objective, Scope and Definitions.
LEGAL FRAMEWORK FOR ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS Section 1: General Obligations
Section 2: Civil Enforcement
Civil enforcement refers to providing courts or other competent authorities with the authority to order/take specific actions when it is established that a party has violated intellectual property laws, and the rules on when and how to use those powers. The issues under discussion in this section include:
- Scope of the section – which intellectual property rights would be covered by the provisions of this section;
- The definition of adequate damages and the question of how to determine the amount of damages, particularly when a right holder encounters difficulties in calculating the exact amount of damage it has incurred;
- The authority of the judicial authorities to order injunctions which require that a party desist from an infringement;
- Remedies, including the destruction of goods that have been found to be infringing an intellectual property right and under what conditions and to what extent materials and implements that have been used in the manufacture or creation should be destroyed or disposed of outside the channels of commerce;
- Provisional measures, such as the authority for judicial authorities or other competent authorities to order, in some circumstances, the seizure of goods, materials or documentary evidence without necessarily hearing both parties; and
- The reimbursement of reasonable legal fees and costs.
Section 3: Border Measures
Border measures refer to actions that customs and other competent authorities would be authorized to take to prevent goods that infringe intellectual property rights from crossing borders. The term also describes the procedures that must accompany these actions. Elements under discussion in this section include:
- Scope of the section – which intellectual property rights will be covered, and whether border measures should only apply to importations or should equally apply to the export and the transit of goods;
- A de minimis exception that could permit travelers to bring in goods for personal use;
- Procedures for right holders to request customs authorities to suspend the entry of goods suspected to infringe intellectual property rights at the border;
- Authority for customs to initiate such suspension ex officio (on their own initiative, without a request from the rights holder);
- Procedures for competent authorities to determine whether the suspended goods infringe intellectual property rights;
- Measures to ensure that infringing goods are not released into free circulation without the right holder’s permission, and possible exceptions;
- The forfeiture and destruction of goods that have been determined to infringe intellectual property rights, and possible exceptions;
- Responsibility for storage and destruction fees;
- Capacity of competent authorities to require right holders to provide a reasonable security or equivalent assurance sufficient to protect the defendant and to prevent abuse, and
- Authority to disclose key information about infringing shipments to right holders.
Section 4: Criminal Enforcement
This section relates to the cases for which Parties should provide for criminal procedures and penalties. Issues being discussed under this heading include:
- Clarifying the scale of infringement necessary to qualify for criminal sanctions in cases of trademark counterfeiting and copyright and related rights piracy;
- Clarifying the scope of criminal penalties;
- In which cases the relevant authorities should be empowered to take action against infringers on their own initiative (ex officio, i.e. without complaint by right holders) with respect to infringing activities;
- The authority to order searches and/or seizure of goods suspected of infringing intellectual property rights, materials and implements used in the infringement, documentary evidence, and assets derived from or obtained through the infringing activity;
- The authority of judicial authorities to order the forfeiture and destruction of the infringing goods;
- The authority of judicial authorities to order the forfeiture of the assets derived from or obtained, directly or indirectly, through the infringing activity;
- The authority of judicial authorities to order forfeiture and/or destruction of materials and implements that have been used in the production of the infringing goods;
- Criminal procedures and penalties in cases of camcording motion pictures or other audiovisual works; and
- Criminal procedures and penalties in cases of trafficking of counterfeit labels.
Section 5: Intellectual Property Rights Enforcement in the Digital Environment
This section of the agreement addresses some of the special challenges that new technologies pose for enforcement of intellectual property rights. Elements under discussion in this section include the availability of remedies:
- In cases of third party liability, without prejudice to the availablity of exceptions and limitations;
- Related to infringing material online, including limitations on the application of those remedies to online service providers;
- Related to the circumvention of technological protection measures, including the availability of exceptions and limitations; and
- Related to the protection of right management information, including the availability of exceptions and limitations.
Where chapter two focuses on the laws that should be in place to promote better enforcement of intellectual property rights, this chapter is intended focus on the methods used by authorities to apply those laws. Areas that the enforcement practices chapter may cover include:
- Fostering of expertise among competent authorities in order to ensure effective enforcement of intellectual property rights;
- Collection and analysis of statistical data and other relevant information such as best practices concerning infringement of intellectual property rights;
- Internal coordination among competent authorities concerned with enforcement of intellectual property rights, including formal or informal public/private advisory groups;
- Measures to allow customs authorities to better identify and target shipments, which are suspected to contain counterfeit or pirated goods;
- Publication of information on procedures regarding the enforcement of intellectual property rights, and
- Promotion of public awareness of the detrimental effects of intellectual property rights infringement.
Cross-border trade in counterfeit and pirated goods is a growing global problem that often involves organized criminal networks. ACTA participants need to work together to tackle this challenge. The chapter on international cooperation is expected to address the following types of issues:
- Recognition that international enforcement cooperation is vital to realize fully effective protection of intellectual property rights;
- Cooperation among the competent authorities of the Parties concerned with enforcement of intellectual property rights, consistent with existing international agreements;
- Sharing of relevant information such as statistical data and information on best practices among the Signatories in accordance with international rules and related domestic laws to protect privacy and confidential information; and
- Capacity building and technical assistance in improving enforcement, including for developing country parties to the agreement and for third countries where appropriate.
This chapter will include all necessary provisions for the institutional set up, including questions related to the implementation of the agreement, how and when to hold meetings of the Parties, and other administrative details of the agreement.
The final provisions of the agreement include details on how the agreement will function, such as how to become a party to the agreement, how to withdraw from the agreement and how to amend the agreement in the future.