Counterfeit

The leaked version of the latest ACTA draft helpfully includes country positions, information that was scrubbed from the official release last April. As I noted yesterday, much of the debate boils down to U.S. and European proposals with the remaining ACTA countries picking sides. Jonathan O'Hara, one of my research students this summer, has helped compile a list of the Canadian positions where negotiators have failed to reach consensus. It is notable that most Canadian positions seek to limit the scope of ACTA or incorporate some balancing provisions.

Chapter One: Initial Provisions and Definitions

Section A: Initial Provisions

Article 1.2: Nature and scope of obligations

In the phrase “more extensive protection and enforcement” Canadian is proposing to delete “protection”, which would limit the scope of ACTA to enforcement, rather than to protection of IP generally.

Article 1.3: Relation to standards concerning availability and scope of intellectual property rights

Canada is proposing to add a paragraph “No Party shall be obliged to apply this section to any goods that do not infringe an intellectual property right held within the territory of that Party.”

Canada seems to be attempting to limit the applicability of ACTA by requiring that IPRs be recognized in the territory of a member, for a member to have obligations to enforce IPRs.

Article 1.X: (General principles)

Canada is proposing to add an article that outlines principles of IP enforcement, such as technology dissemination and transfer, a manner conducive to social and economic welfare, measures necessary to protect health and nutrition, etc.

Section B: General Definitions

Canada has reserved its position on all the definitions pending discussion.

Chapter Two: Legal Framework for Enforcement of Intellectual Property Rights

General Obligations

Article 2.X: General obligations with respect to enforcement

Canada is proposing: “(3) In respect of civil remedies and criminal penalties for enforcement of intellectual property rights, each Party shall take into account, as appropriate the need for proportionality between the seriousness of the infringement, the interests of third parties and the applicable remedies or penalties.”

The major difference between this and another option is the requirement to take the interests of third parties into account, and that specificness of the wording around proportionality.

Canada is proposing in paragraph (5) that the agreement shall apply ONLY to trademark counterfeiting and copyright piracy.

Section 1: Civil Enforcement

Article 2.1: Availability of Civil Procedures

Canada is proposing that civil procedures only be available for copyright, related rights and trademark rights.

Article 2.X: Injunctions

Again Canada is limiting the availability of injunctions to copyright, related rights or trademarks. Canada is suggesting that the power of judicial authorities be “subject to any statutory limitations under its domestic law”. This suggesting has been explicitly opposed by the US, Japan, EU, Switzerland, Korea and Mexico.

Article 2.3: Other Remedies

In two paragraphs of this article Canada is proposing remedies regarding destruction of goods or implements to create the goods, be limited to good which are found to be related to piracy or counterfeiting.

Canada is also proposing that judicial authorities have the power to order the destruction to occur at the infringer's expense.

Article 2.5: Provisional Measures

Canada is proposing the that provision measures only be available where there is an imminent infringement of copyright, related rights or trademark rights.

Canada is proposing that for provisional measures, authorities can require sufficient evidence to ensure that infringement is imminent before provision measures are taken.

Section 2: Border Measures

Article 2.X: Scope of border measures

Canada is proposing that provisions for border measures be applied to trademark counterfeiting and copyright piracy. While Canada has not explicitly used the work “only” to strictly limit the application of border measures, but the US, Singapore and Japan have suggested changes to the wording to make border measures more broadly available, including “applies to at least trademark counterfeiting and copyright piracy”.

Article 2.X: De Minimis Provision

Canada is proposing to make the wording of the de minimis provision the same as the TRIPS equivalent, and include goods “sent in small consignments”.

Article 2.6: Application by Right Holder

Canada is proposing that Parties shall provide procedures for import, but not be obligated to provide measures to exported goods. In a footnote to this, Canada is also wanting to clarify that there is no obligation to apply the procedures to grey market goods. Canada is is also proposing that accepted applications for border measures be effective for a least one year.

Article 2.7: Ex-Officio Action

Canada is proposing that Parties give their customs authorities the power to suspend goods suspected of being pirated copyright or counterfeit trademarked while they are exported from the country or in transit through the country. This differs from the position of the US who propose that Parties shall give their customs authorities the power to seize on import/export/transit.

Article 2.X (Information sharing cooperation in lieu of suspension of goods)

Canada is proposing that any information sharing between an exporting or transit country and the destination country is limited by and must be consistent with any bilateral information sharing agreements.

Article 2.9: Security or equivalent assurance

Canada proposes to modifying the wording of this article to apply to copyright, related rights or trademark rights, which is consistent with Canada's position that ACTA clearly apply only to those IPRs, rather than all IPRs.

Section 3: Criminal Enforcement

Article 2.14: Criminal Offenses

Paragraph 1:

Canada is proposing to clarify that criminal offenses apply to acts of piracy (rather than acts of infringement as the US is proposing). In either case, the piracy or infringement still must be commercial in nature. This seems like an attempt by Canada to make clear that criminal enforcement applies to a specific subset of infringement activities, rather than using infringement loosely in different contexts.

Paragraph 5:

Canada is proposing to specifically include that a theatre manager can be guilty of camcording of movies crimes, even in their own theatre.

Article 2.16: Seizure, forfeiture and destruction

Paragraph 1:

Canada is proposing that competent authorities have the power to authorise (rather than “order”, which is what the article reads otherwise) the seizure of suspected infringing goods and the implements associated with them

Paragraph 3:

Canada is proposing that authorities have the power to order forfeiture “at least for serious” offenses.

Section 4: Special Measures Related to Technological Enforcement of Intellectual Property in the Digital Environment

Article 2.18: Enforcement Procedures in the Digital Environment

Canada has reserved the right to revisit the elements of this section at a later date, which may reflect the fluidity of Bill C-32.

Paragraph 1:

Canada has proposed that the wording of this article be limited to permit action against trademark, copyrights or related rights (as opposed to any type of intellectual property, which is what Japan, EU and Switzerland are proposing).

Paragraph 2:

In two instances of this paragraph, Canada is limiting the types of infringement covered by ACTA to copyrights or related rights, rather than general intellectual property rights, as the EU and Switzerland are proposing.

Paragraph 3(a)(iii):

Canada is proposing wording that clarifies that ISPs not be held liable in cases of referring or linking users to a location containing infringing material.

Paragraph 3(b):

Canada is proposing that ISPs can be allocated a defined period of time (rather than a more general “ “expeditiously”) to remove/disable access to infringing material.

Paragraph 3(c)(iii):

Canada is proposing that an ISP be exempt for liability if they have no actual knowledge of a court decision that materials are infringing.

Paragraph X: Exceptions to technological enforcement in 2.18.4

Canada is proposing wording slightly clarifying that a party can implement exception to provisions (rather than measures). Canada also proposes to distinguish the technological measures themselves from the provisions, so that exceptions apply to the provisions rather than to the measures.

Paragraph 6:

In the context of electronic rights management information, Canada is proposing that infringements of related rights is only enforceable when the related rights pertains to phonograms.

Paragraph 6(b):

Canada is proposing that importation for distribution only be an prohibited when the copyright owner is prejudicially affected.

Paragraph 7: Exceptions to technological enforcement

This paragraph seems to be almost identical to paragraph X, except that it may provide exceptions to 2.18.4 and 2.18.5.

As in paragraph 2.18.X, Canada is proposing wording slightly clarifying that a party can implement exception to provisions (rather than measures). Canada also proposes to distinguish the technological measures themselves from the provisions, so that exceptions apply to the provisions rather than to the measures.