1 AIPPI Workshop II Anti-Counterfeiting:Does ACTA go too far? Donald H. MacOdrum, moderator Bryan Mercurio Manon Rieger-Jansen Yusun Woo
2 Donald MacOdrum Partner, Bereskin & Parr LLP, Toronto, Ontario, Canada Intellectual property litigation and advice for 44 years. Counsel in numerous patent, trade mark, copyright, industrial design and IP contract cases Certified by the Ontario law society as a Specialist in civil litigation and as a Specialist in Intellectual Property (Patents, Trade marks, copyright) Established and taught course in patent law at the University of Windsor Faculty of Law for 15 years Member of the AIPPI Programme Committee
3 Bryan Mercurio Professor of Law and Associate Dean (Research), The Chinese University of Hong Kong Specialist in international economic law, with particular expertise in WTO law, free trade agreements and the intersection between international trade and intellectual property law. Author of six books and approximately fifty journal articles and book chapters, including one of the leading textbooks on WTO Law Previously Director of the International Trade and Development Project at The University of New South Wales, Faculty of Law Formerly of the Canadian Department of Foreign Affairs and Trade Practiced international commercial law and international trade law in the United States and Australia
4 Manon Rieger-Jansen Partner Bird & Bird LLP The Hague, Netherlands Specialises in intellectual property law with a particular focus on contentious and non-contentious matters of trademarks, designs, trade names, copyright, domain names and unfair competition. Involved in many national and multi-jurisdictional intellectual property cases. Co-ordinates anti-counterfeiting activities and has set up various border detention programmes for a number of international clients Chair of the AIPPI Special Committee on Piracy and Counterfeiting (ACTA)
5 Yusun Woo Brand Enforcement Manager of Louis Vuitton Korea Seoul, Korea Belongs to the Intellectual Property Department of LVMH Fashion Group that is responsible for protecting intellectual property rights owned by Louis Vuitton Malletier and other Fashion Group Division brands including but not limited to Givenchy, Celine, Loewe, Marc Jacobs, and Kenzo. In charge of civil enforcement, setting up litigation strategies against IP rights infringers and leading the in-house C&D actions; criminal enforcement, providing relevant information, support and assistance to the law enforcement authorities with regard to their anti-counterfeiting activities; training of officials on the enforcement of intellectual property rights; and enhancement of public awareness on intellectual property rights. Previously, she worked at the Arbitration and Mediation Center of WIPO in Geneva, Switzerland for three years as Legal Staff at the Domain Name Dispute Resolution Section. Law degrees in Korea (LL.B) and the US (J.D.), and admitted to practice in California, US. Dedicated to fighting the proliferation of counterfeiting, Louis Vuitton has one of the largest anticounterfeiting teams in the world, and it employs a fully-dedicated team with multicultural yet complementary profiles such as lawyers and former law enforcement agents. Each year, Louis Vuitton assists law enforcement agencies in conducting thousands of raids worldwide to dismantle counterfeiting networks.
6 Anti-Counterfeiting Trade Agreement (ACTA) Negotiated by Australia, Canada, the European Union and member states, Japan, Republic of Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland, and the United States of America. 2006: idea developed by Japan and US : preliminary talks, including Canada, EU and Switzerland June 2008: start of official negotiations, further parties joining the talks April 2010: first official draft October 2010: consolidated draft text April 2011: adopted by negotiating parties May 2011: opened for signature for two years
7 Anti-Counterfeiting Trade Agreement (ACTA) ACTA signed October 1, 2011 by the United States, Australia, Canada, Republic of Korea, Japan, New Zealand, Morocco, and Singapore. Subsequently signed by the EU and other countries. ACTA comes into force when 6 countries ratify it only re such countries. July 2012: Negative vote on ACTA from European Parliament September 2012: Japan became the first country to ratify ACTA
8 ACTA Chapter I - Initial Provisions and General Definitions Section 1 Initial provisions Section 2 Definitions
9 ACTA Chapter II - Legal Framework For Enforcement of Intellectual Property Rights Section 1 General Obligations Section 2 Civil Enforcement Section 3 Border Measures Section 4 Criminal Enforcement Section 5 - Enforcement of Intellectual Property Rights in the Digital Environment
10 ACTA Chapter III Enforcement Practices Chapter IV International Cooperation Chapter V Institutional Arrangements Chapter VI Final Provisions
11 Overview perspectives of ACTA The extent of the counterfeiting problem The desired aims/objectives and the final text The scope of ACTA ACTA and TRIPS Reactions to ACTA
12 Background / Aims / Scope Serious consequences of counterfeiting / piracy The need for an alternative forum Effective international cooperation / establishing common enforcement practices / providing a coherent legal framework for IP enforcement Broader scope that goes beyond that of TRIPS provisions for the digital sector, compulsory border measures
13 ACTA and TRIPS TRIPS Art. 7: Objectives The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
14 ACTA and TRIPS TRIPS Art. 8: Principles Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.
15 ACTA and TRIPS TRIPS Art. 8: Principles Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
16 ACTA and TRIPS ACTA Art. 2(3) The objectives and principles set forth in Part I of the TRIPS Agreement, in particular in Articles 7 and 8 shall apply, mutatis mutandis, to this Agreement.
17 Reactions to ACTA Too vague- room for interpretation Fight against counterfeit is necessary but ACTA is much broader Potentially cutting lifesaving generic drugs Restriction of internet freedom and fundamental civil rights Might lead to 3 strikes regime ISPs to exert control over content (internet police) Definition of commercial scale is unclear Public protests on the streets in the EU countries!
18 Copyright and Digital Environment Digital environment provisions Electronic rights management information provisions Anti-circumvention of technological measures provisions Impact on fair use or fair dealing issues Three strikes/graduated Response
19 Digital Environment Provisions Threat to ISPs/ intermediaries? Each Party s enforcement procedures shall apply to infringement of copyright or related rights over digital networks, which may include the unlawful use of means of widespread distribution for infringing purposes. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and, consistent with that Party s law, preserves fundamental principles such as freedom of expression, fair
20 Digital Environment Provisions Threat to ISPs/ intermediaries? Protection for ISPs is a possibility: For instance, without prejudice to a Party s law, adopting or maintaining a regime providing for limitations on the liability of, or on the remedies available against, online service providers while preserving the legitimate interests of right holder. (Art. 27 (2), footnote 13)
21 Digital Environment Provisions Disclosure of subscriber data Each Party may provide, in accordance with its laws and regulations, its competent authorities with the authority to order an online service provider to disclose expeditiously to a right holder information sufficient to identify a subscriber whose account was allegedly used for infringement, where that right holder has filed a legally sufficient claim of trademark or copyright or related rights infringement and where such information is being sought for the purpose of protecting or enforcing those rights. (Art. 27 (4))
22 Anti-circumvention Each Party shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors, performers or producers of phonograms in connection with the exercise of their rights in, and that restrict acts in respect of, their works, performances, and phonograms, which are not authorized by the authors, the performers or the producers of phonograms concerned or permitted by law. (Art. 27 (5))
23 In line with international concept: WIPO Copyright Treaty scope of copyright/related rights = scope of protection against circumvention
24 3 strikes/ Graduated Response No reference in text ACTA that would require Party s having a policy to address online infringement The obligation to promote cooperative efforts within the business community (Article 27(3)) Big concern in EU Processing of personal data
25 Border Measures Seizure provisions Dealing with seized goods Pharmaceuticals Goods in Transit Famous brands Remedies destruction environmental considerations
26 Border Measures Concerns? Scope of border measures section Border measures extended to goods in transit? Patents? Counterfeit vs. other forms of TM infringement (risk of confusion, dilution)
27 Border Measures Preamble Recognizing the principles set forth in the Doha Declaration on the TRIPS Agreement and Public Health, adopted on November , at the Fourth WTO Ministerial Conference;
28 Border Measures Scope of Border Measures In providing [ ] for effective border enforcement of intellectual property rights, a Party should do so in a manner that does not discriminate unjustifiably between intellectual property rights and that avoids the creation of barriers to legitimate trade. (Art. 13) Parties agree that patents and protection of undisclosed information do not fall within the scope of this Section. (Section 3, Art. 13, footnote 6)
29 Border Measures Patents excluded from border measures chapter (ACTA previous text all IPR covered) Export and import required; goods in transit optional but not mandatory under ACTA (TRIPS requires only border measures against importation).
30 Seizure Provisions Each Party shall adopt or maintain procedures with respect to import and export shipments under which: (a) its customs authorities may act upon their own initiative to suspend the release of suspect goods; and (b) where appropriate, a right holder may request the competent authorities to suspend the release of suspect goods. (Art. 16 (1))
31 Seizure Provisions Application by Right Holder Each Party shall provide for applications to suspend the release of, or to detain, any suspect under customs control in its territory Footnote 7: The requirement to provide for such applications is subject to the obligations to provide procedures referred to in para 1(b) and 2(b) of article 16.
32 Goods in Transit Each Party may adopt or maintain procedures with respect to suspect in-transit goods or in other situations where the goods are under Customs control under which: (a) its customs authorities may act upon their own initiative, to suspend the release of, or to detain, suspect goods; and (b) where appropriate, a right holder may request its competent authorities to suspend the release of, or to detain, suspect goods. Art. 16 (2)
33 Goods in Transit generics in transit detained in EU
34 Goods in Transit Example 1 Detention of generic medicines (Losartan) in transit from India to Brazil at Schiphol Airport (Netherlands) basis: EU Council Regulation No 1383/2003 May 2010: Brazil requests consultations at WTO (WT/DS409/1) Example 2 Decision of the Court of Justice of the EU in Dec Nokia Case: fake mobile phone parts from Hong Kong to Colombia via Heathrow airport in London Philips Case: shavers from Shanghai through Belgium
35 Border Measures - Remedies Each Party shall provide that its competent authorities have the authority to order the destruction of goods following a determination under Article 19 that the goods are infringing. In cases where such goods are not destroyed, each Party shall ensure that, except in exceptional circumstances, such goods are disposed of outside the channels of commerce in such a manner as to avoid any harm to the right holder. (Art. 20)
36 Border Measures - Remedies Environmental considerations The destruction of goods infringing intellectual property rights shall be done consistently with the laws and regulations on environmental matters of the Party in which the destruction takes place. (Art. 32)
37 Monetary Remedies General obligations Civil Enforcement Factors mentioned to specify the amount of damages Criminal Enforcement: Penalties
38 Future of ACTA Does ACTA go too far? Will it come into force? If so, what effect will it have on trade and counterfeiting? What will happen and what are the implications if the ACTA does not come into force? Has the ACTA played a role in ongoing free trade agreement negotiations, including the TPP? Procedural matters should engage in a meaningful dialogue on substance once procedural matters fixed