Overview

+ Recap

+ Legal framework - points of interest

+ Next steps

+ Questions

ACTA Objectives

+ Establish an international framework to address growing problem of counterfeiting and piracy through:

+ Creating international standards for enforcing intellectual property rights and

+ Improving international co-operation.

Why did NZ Participate?

+ Importance of IP protection in fostering innovation, productivity and economic prosperity

+ Risk to New Zealand businesses from increasing trade in counterfeit goods and pirated works

+ An opportunity to influence international standards

ACTA Content

+ Build on existing international intellectual property rules, in particular WTO TRIPS Agreement, and

+ Look to address enforcement matters where an international legal framework does not exist or needs to be strengthened e.g. as a result of changing technologies.

Key Considerations+ NZ already provides robust, modern IPR enforcement

procedures. + Focus is on counterfeiting and piracy activities that significantly

affect commercial interests, rather than activities of ordinary citizens.

+ Would not impact on NZer’s fundamental rights or civil liberties.

+ ACTA would complement existing NZ domestic legislation for the enforcement of IPR.

+ Ensuring activities in NZ that are currently legal, will continue to be legal in NZ.

ACTA’s Structure

Six Chapters1. Initial Provisions and Definitions2. Legal Framework for Enforcement of IPRs3. International Cooperation4. Enforcement Practices5. Institutional Arrangements6. Final Provisions

Legal Framework For Enforcement

Cross-cutting issues:

+ Scope – which types of intellectual property rights should be covered

+ Drafting of provisions within the legal framework

+ How to accommodate different legal regimes

Civil Enforcement Section+ Injunctions + Damages to compensate for injury/account of profits of the

infringer+ Other remedies

Prevailing party be awarded payment by the losing party of court costs and fees, including attorney fees.

Destruction of infringing goods and materials and implements used in their manufacture

+ Provisional measures+ Information related to infringement

Civil Enforcement (Continued)

Two issues have arisen over interpretation:+ Article 2.x.1: Injunctions against third parties (“over whom

the relevant judicial authority exercises jurisdiction”).+ Article 2.2.3: A Party must do either:

– In cases of copyright or trade marks infringement provide either provide pre-established damages or presumptions, or

– In cases of copyright infringement provide additional damages.

Legislative Changes

+ None required.

Border Protection Measures – Customs Enforcement of IPRs+ ACTA Parties may exclude patents and protection of undisclosed

information from this section. NZ does so.+ ACTA requires in respect of import and export shipments:

– Customs may act upon their own initiative to suspend release of suspected infringing goods (ex officio) and

– Where appropriate, by which right holders may request Customs to suspend release of suspected infringing goods.

+ ACTA requires in respect of suspected goods in-transit:– Parties may provide Customs to act upon their own initiative (ex-

officio) and– Where appropriate, right holders may request Customs to suspend

release of suspected infringing goods

Legislative Changes

+ Amend the border protection measures under the Copyright and Trade Marks Acts to:– Provide Customs with ex-officio powers (act in the absence of

a notice from right holders); and

– Extend the notice regime (which covers imports and in-transit shipments) to cover exports.

Criminal Enforcement+ Parties must have criminal procedures and penalties for:

Willful trade mark counterfeiting and copyright piracy on a commercial scale (Article 61 of TRIPS)

Trafficking and use of counterfeit/illicit labels and packaging

+ “Commercial scale” includes activities carried out as commercial activities for direct or indirect economic or commercial advantage

+ Parties may provide criminal procedures and penalties for videoing movies in cinemas.

Criminal Enforcement (continued)

+ Delivery up and disposal of infringing goods, materials and implements used.

+ Forfeiture of assets derived from criminal activity

+ Ex officio action

Legislative Changes

+ Amend the Trade Marks Act to prohibit importation of counterfeit labels.

Enforcement in the Digital Environment+ Parties shall ensure enforcement procedures of Chapter 2 apply to

infringements of IPRs taking place in the digital environment.+ Enforcement procedures shall apply to infringement of copyright over

digital networks.+ Parties are to endeavour to promote cooperative efforts with business

community to address trade marks and copyright infringement.+ Parties may provide, in accordance with domestic law, for competent

authorities (courts) to order an ISP to disclose to a right holder information to identify a subscriber whose account was allegedly used for infringement.

What is Not Included

+ Cutting Internet access for anyone found infringing copyright online three times.

+ ISPs having to filter or monitor their networks for copyright infringing material.

+ ISPs taking over the responsibility of judicial authorities to determine copyright infringement.

+ Creation of a “safe harbours” for ISP in regards to either copyright or trade mark infringements.

Legislative Changes

+ None required:– Copyright (Infringing File Sharing) Amendment Bill

2010 unaffected

Implementation of Enforcement Procedures (Article 2.18.2)+ Avoids creation of barriers to legitimate activity (e.g. e-

commerce)

+ Preserves fundamental prinicples– Freedom of expression– Fair process (natural justice)– Privacy

+ Consistent with a Party’s law.

Promoting Cooperation (Article 2.18.3)

+ Parties shall endeavour to promote cooperative efforts within business community to effectively address trade mark and copyright infringements.

+ Preserve legitimate competition+ Preserve fundamental principles

– Freedom of expression– Fair process (or natural justice)– Privacy

Identifying Infringing Users (Article 2.18.4)+ A Party may provide its competent authorities (e.g. courts) with the

authority to order an ISP to disclose information sufficient to identify a subscriber whose account was allegedly used for infringement

+ In accordance with domestic law+ Legally sufficient claim of infringement+ For the purpose of protecting or enforcing a copyright or trade mark

right+ Avoids creating barriers to legitimate activity (e.g. e-commerce)+ Preservers fundamental principles

Technological Protection Measures (TPMs)

+ Article 2.18.5 – Replication of the standard of protection required under the WIPO Copyright Treaty and WIPO Performers and Performances Treaty (“WIPO Internet Treaties”).

+ New Zealand has not joined the WIPO Internet Treaties.+ Legislative changes – amend the Copyright Act to extend

protection to cover performances.

TPMs Definition

+ Taken from EU Directive 2001/29/EC (with minor modification).

+ Includes reference to “access control”.

+ Provides some flexibility as to how we might interpret the definition for our own purposes.

TPMs - Adequate legal protection and effective legal Remedies - (Article 2.18.6)

+ To the extent provided by law:– Prevent unauthorised circumvention– Prevent marketing of circumvention devices and services

+ Prevent manufacture, importation or distribution of circumvention devices and services that:– Are primary designed or produced for the purpose of

circumventing a TPM; or– Have only limited commercially significant purpose other than

circumventing a TPM.

Legislative Changes

+ Amend definition of “TPM circumvention device” under section 226 of the Copyright Act to prohibit a broader the range of circumvention devices.

TPM circumvention device means a device or means that—(a) is primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of a technological protection measure; (and or)(b) has only limited commercially significant application except for its use in circumventing a technological protection measure

TPMs – Exceptions and Limitations (Article 2.18.8)+ May adopt or maintain appropriate limitations

or exceptions to protection provided.

+ Obligations are without prejudice to the rights, limitations, exceptions or defences to copyright infringement provided under domestic law.

Rights (Copyright) Management Information – CMI – (Article 2.18.7)+ Provide protection consistent with the protection mandated by

the WIPO Internet Treaties.

+ Amendments to the Copyright Act:– Broaden protection to include CMI used in relation to performances;

and

– Prohibit non-commercial dealings in works and performances subject to CMI interference

Next Steps+ Final text witnessed by each delegation after conclusion of

negotiations (week of 22 November)+ Legal verification process (week of 29 Nov)+ Government decision on Signature of the Agreement+ Public consultations on joining the Agreement (includes legislative

changes)+ Government decision on ratification (National Interest Analysis)+ ACTA text and a National Interest Analysis reviewed by Parliament

(Select Committee consideration)+ Bill to Parliament to amend the Copyright and Trade Marks Acts+ Document of ratification given to depository - Japan

ACTA Contacts

+ Ministry of Economic Development George Wardle

Phone 04 474 2196 Email inquiries: trademarks@med.govt.nz