This is the intervention that the United States made on ACTA on 25 October 2011 during the WTO TRIPS Council discussions of “Enforcement of Intellectual Property Rights”.
O. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS (PARTY III OF THE TRIPS AGREEMENT)The United States thanks Japan for its opening remarks, with which we fully associate ourselves.
We appreciate this opportunity to share with colleagues from other WTO Members our views on the importance of enforcement and to provide some additional information on the ACTA.
By way of background, parties concluded the ACTA because counterfeiting and piracy were spreading faster than governments could effectively react, robbing individuals and businesses of billions of dollars. We realized that because this was a global problem it needed a global solution.
For example, today, counterfeiters and pirates move shipments through multiple ports to hide the origin of the shipment, and to lower the risk of detection by customs. The Internet has provided counterfeiters and pirates with an extremely fast and efficient tool to distribute their illicit products – with the ease of a click of a mouse, pirated movies, music and games can be uploaded or downloaded; counterfeit foods and medicines can be sold and sent. This was not the case when the TRIPS Agreement was concluded.
As my Japanese colleague noted, there are various sections to ACTA. The key substantive Chapters deal with: Legal Framework, Enforcement Practices, and International Cooperation.
The Legal Framework chapter of the agreement concerns the legal tools needed by enforcement authorities to effectively respond to today’s counterfeiting and piracy problems. The Enforcement Practices chapter encourages the creation of mechanisms to combat the proliferation of these illicit products. Finally, the chapter on International Cooperation, a very important element of the agreement, in our view, encourages close global cooperation.
ACTA promotes the enforcement of intellectual property rights through a variety of means:
• The ACTA will create a first-of-its-kind alliance of trading partners representing more than half of world trade to cooperate in the fight against piracy and counterfeiting.
• The ACTA will require that border enforcement authorities be empowered to act on their own initiative against both imports and exports of counterfeit and pirated goods.
• It will require Parties to make criminal penalties available when piracy or counterfeiting is carried out for commercial advantage (such as companies using pirated software).
• It will require that criminal authorities be able to act on their own initiative (“ex officio”) in IP cases, rather than waiting for a complaint.
• It will include new commitments as well as commitments on criminal seizure and destruction of fake goods, seizure of the equipment and materials used in their manufacture, and seizure of the criminal proceeds from IP offenses.
• The Agreement will also clarify existing international requirements for remedies against circumvention of technological protections used in the digital environment (such passwords or encryption) and trade in circumvention devices.
• The ACTA will call on Parties to address widespread distribution of pirated copyrighted works on digital networks while preserving fundamental principles such as freedom of expression, fair process, and privacy.
• The ACTA will enhance the TRIPS Agreement framework on civil enforcement provisions and deals with issues such as damages, provisional measures, recovery of costs and attorneys’ fees, and destruction of infringing goods.
The ACTA will promote practices that contribute to effective enforcement of IPRs, such as specialization, data analysis, internal coordination, stakeholder consultation, risk management, transparency, and public awareness. Finally, we note that ACTA is open to any WTO to apply to join.
[responses to questions raised.]
We would like to respond to some of the questions that Members have asked.
As to the questions of Angola, and Article 35 of the ACTA on capacity building and technical assistance, Angola identified the issue of infrastructure and cost. You are correct that Article 35 provides for capacity building and technical assistance for Member and prospective Members.
As to Article 14.2 of the ACTA, on small consignments and personal luggage, Article 14.2 was taken from Article 60 of the TRIPS Agreement.
As to the WIPO WCT and WPPT, ACTA implements key provisions of those treaties.
Regarding Brazil’s intervention, we welcome Brazils confirmation that the title of the agenda item as originally proposed is acceptable to Brazil.
The concerns raised regarding “TRIPS plus” provisions is somewhat confusing.
The TRIPS Agreement is a minimum standards agreement, and Article 1 of the TRIPS Agreement provides that Members “may…implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement.”
Many Members have chosen to do so, many of which are not ACTA participants. In fact, several WTO Members have adopted ACTA provisions in their domestic law. Again, many of those Members are not ACTA participants.
It is curious that Members oppose ACTA because it is “TRIPS plus” on the one hand, but implement ACTA provisions in their law on the other.
Regarding ex officio authority, for example, Article 16(1)(a) of ACTA requires border enforcement authorities be empowered to act on their own initiative against both imports and exports of counterfeit and trademark goods.
For instance, the India Customs Department can ex-officio suspend the clearance of the alleged counterfeit goods if the department has prima-facie evidence or reasonable grounds to believe the goods to be counterfeit, which is provided in Notification No. 47/2007 – Cus. (N.T.) of 2007.
As the delegate confirmed yesterday under item C of the agenda, Chinese Law, specifically Article 16 of the Regulation on the Customs Protection of Intellectual Property Rights, also provides for ex officio action at the border, as long as the right holder registers its intellectual property with Customs and follows certain procedures.
Likewise, WTO Members have implemented provision on damages and statutory damages that closely follow those in ACTA.
China’s law, for instance tracks ACTA Article 9 on determining the amount of damage suffered by the right holder. Article 65 of China’s Patent Law, Article 56 of China’s Trademark Law and Article 49 of China’s Copyright law align closely with ACTA Article 9.
The same provisions of Chinese law also have provisions on pre-established and statutory damages like those contained in ACTA Article 9.3.