Copyright 2009, Blake, Cassels & Graydon LLP
Originally published in Blakes Bulletin on International Trade & Investment/Intellectual Property, April 2009
On October 23, 2007, Canada announced that it would participate in preliminary discussions with six countries and the European Union towards an Anti-Counterfeiting Trade Agreement (ACTA) to develop international standards to better combat trade in counterfeit trade-marked and pirated copyright goods. Currently, there are 27 member states that are involved in the negotiations.
Since the 2007 announcement, there have been rounds of meetings, discussions and negotiations but there is, as yet, no agreement. The negotiations towards ACTA are not public nor are they part of or conducted under the auspices of any existing international organization; rather, they would establish a new international body which countries could join on a voluntary basis. In addition to creating standards for intellectual property enforcement, ACTA would also enable increased criminal prosecution powers, international co-operation, including information sharing among law enforcement agencies of the signatory countries in relation to counterfeit and pirated works.
From Canada's perspective, the main purpose of ACTA is to develop international standards to fight the trade in counterfeit trade-marked and pirated copyright goods. Postings on the website of Foreign Affairs and International Trade Canada have attempted to address concerns with the lack of transparency in the negotiations leading towards a concluded agreement. Similar information releases have also recently appeared on the website of the Office of the United States Trade Representative. However, until recently, it was reported that the United States regarded discussions around ACTA to be a national security secret.
WHY AND WHAT IS ACTA?
ACTA is intended as an international response to the increase in the global trade of counterfeit goods and pirated copyright protected works. Its scope is broad and includes not only physical counterfeit goods but also Internet distribution and information technology. The latter has resulted in reports that the proposed agreement would empower border officials to conduct searches of laptops, MP3 players and cellular phones for illegally downloaded music and movies. This has prompted some of the participating states to issue "fact sheets" to address consumer concerns about a secret "treaty" affecting their privacy rights.
To date, there has been no release of the text of the proposed ACTA. Although it was expected to be concluded at the end of 2008, it is now clear that negotiations will continue into 2009. Pending the availability of text for review, the following framework information has been provided by the Government of Canada in April 2009 (the Summary).
1. Provisions And Definitions
ACTA will have a preamble and set out the objective, scope and definition of key terms used in ACTA, and may also include interpretive principles.
2. Legal Framework And Enforcement
Topics examined for enforcement are "civil enforcement", "border measures", and "criminal enforcement". Generally, civil and criminal enforcement and border measures will focus on the scope of the enforcement powers of the applicable authorities, the procedures and rules that will govern the actions of these authorities, and the penalties that may be imposed by authorities for violations of intellectual property rights. These three sections also have some distinguishing features: under "civil enforcement," the Summary includes a discussion of a definition and determination of adequate damages and reimbursement of legal fees and costs; "border measures" includes a discussion of procedures for intellectual property right holders to request that customs authorities suspend entry of suspect goods; and "criminal enforcement" includes a discussion of judicial authority to order the forfeiture of assets that are a product of intellectual property infringing activity.
3. Centrality Of International Co-Operation
The Summary notes that international co-operation in the growing trade in cross-border intellectual property infringement is essential, and that the success of ACTA is contingent upon this co-operation. Co-operation will be required among the competent authorities of all parties to ACTA, and the parties must share relevant information (e.g., statistics and best practices) and assist in each others' capacity-building to improve enforcement capabilities.
4. Enforcement Practices
ACTA will have "enforcement" provisions for authorities to apply in a manner that is consistent with existing international agreements and other laws (e.g., privacy laws). These provisions will stipulate the collection and analysis of statistics and best practices from other parties concerning infringement of intellectual property rights, internal co-ordination among authorities of the parties, measures to help customs authorities identify and target suspected goods, publication of enforcement procedures, and the promotion of public awareness of detrimental effect of infringement. Parties expect that ACTA will foster expertise through the collection of data, internal co-ordination, targeting suspect shipments, and fostering public awareness.
5. Institutional Arrangements
ACTA contemplates a secretariat or oversight committee to encourage transparency and facilitate consultation among the parties.
6. Final Provisions
ACTA will have provisions for future amendments and accessions by participating states.
When finalized, ACTA should assist governments around the world to more effectively combat counterfeit and pirated goods. Criminal prosecutions and investigations are anticipated to be an integral part of ACTA. Critics have and continue to argue that the negotiations should be more open and transparent so that interest groups can participate. This has led to the consolidation of further stakeholder participation.
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