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COU CIL OFBrussels, 7 ovember 2011 THE EUROPEA U IO
12076/1/09 REV 1 -
DROIPE 65 WTO 141 PI 70 DECLASSIFICATIO
of document: 12076/09 RESTREINT UE
dated: 22 July 2009 new status: Public
Subject: Anti-counterfeiting Trade Agreement ( ACTA) Chapter 2 -Criminal Provisions
Delegations will find attached the declassified version of the above document.
The text of this document is identical to the previous version.
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COU CIL OF - Brussels, 22 July 2009
THE EUROPEA U IO
12076/09
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-
DROIPE 65 WTO 141 PI 70 -
OTE from : Presidency
to : Delegations
prev.doc.: 8031/09 DROIPEN 15 WTO 60 RESTREINT UE Subject : Anti-counterfeiting Trade Agreement ( ACTA) Chapter 2 -Criminal Provisions
I. I TRODUCTIO
In 2007, the EU and a number of other WTO members began to work on a new international
agreement the Anti-Counterfeiting Trade Agreement (ACTA). ACTA is intended to step up the
fight against global counterfeiting and piracy. This means that the agreement will, among other
things, include criminal provisions.
During the French Presidency, delegations managed in a relatively short time to agree on a text for
this chapter. This text was presented to the ACTA-partners in December 2008 (MD 652/08) and,
again, in March 2009 during the Czech Presidency (doc. 8031/09).
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Since then, Japan has presented a consolidated text outlining the positions by all ACTA-partners
(MD 389/09). This text shows that while the other ACTA-partners agree with EU Member States in
many areas, there are some areas where they have different opinions. These differences will be
discussed at the next ACTA-Negotiating Round, on 4-6 November 2009. The ambition is to
conclude the ACTA-Agreement as soon as possible in 2010.
In the light of the above, the Swedish Presidency would like to explore if Member States are
prepared to accept any/some of the proposals put forward by other ACTA-partners. The Presidency
would also like to ensure that the EU can present good arguments for its positions.
In order to achieve this, the Presidency intends to follow a two-fold approach. The first step, which
is planned for 3 September, is to have a discussion on the substantive questions outlined in this
paper. The second step, which is planned for the second half of September, is to have a discussion
on different drafting issues (including the structure). These discussions will take place at "Friends
of the Presidency" meetings, to which both experts on criminal law and experts on intellectual
property law will be invited.
II. SUBSTA TIVE ISSUES FOR DISCUSSIO (step one)
1. SCOPE
All ACTA-partners have proposed that the chapter on criminal provisions shall cover trademarks,
copyright and related rights, but there are some differences between the proposals.
1.1 Trademark infringements
The Japan-U.S. joint proposal on scope (Article 2.14.1) contains the expression "trademark
counterfeiting". This expression can also be found in Article 61 TRIPs. Trademark counterfeiting is
not defined in Article 61 TRIPs, but Article 51 note (a), on Suspension of Release by Customs
Authorities, contains, for the purposes of TRIPs, a definition of "counterfeit trademark goods".
According to this definition, counterfeit trademark goods shall mean any goods, including
packaging, bearing without authorization a trademark which is identical to the trademark validly
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registered in respect of such goods, or which cannot be distinguished in its essential aspects from
such a trademark, and which thereby infringes the rights of the owner of the trademark in question
under the law of the country of importation.
Several ACTA-partners, including the EU, have supported the proposal to use the expression
trademark counterfeiting in ACTA too. However, Japan has proposed to add "confusingly similar
trademark goods". Some ACTA-partners have expressed their support for this proposal, or said that
it is acceptable, while other ACTA-partners have declared that they cannot accept it. Furthermore,
Switzerland has proposed to use the more general wording "infringements of trademarks".
The Community law on trademarks only governs registered trademarks. According to Article 5.1 of
Directive 2008/95/EC, the proprietor of such a trademark "shall be entitled to prevent all third
parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are
identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the
identity or similarity of the goods or services covered by the trade mark and the sign,
there exists a likelihood of confusion on the part of the public, which includes the
likelihood of association between the sign and the trade mark.".
However, Member States are also allowed to protect trademarks on the basis of use and to extend
the protection for trademarks which has a reputation in the Member State to goods or services
which are not similar to those for which the trade mark is registered.
With regard to the rights conferred by Community trade marks, similar provisions exists in Council
- Delegations are invited to comment on how "trademark counterfeiting" should be interpreted and
if the EU could accept to go beyond this expression. Delegations are also invited to give some
arguments for their positions.
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1.2 Related rights infringements
The Japan-U.S. joint proposal on scope (Article 2.14.1) covers "related rights piracy". This
expression cannot be found in Article 61 TRIPs, which only refers to "trademark counterfeiting"
and "copyright piracy". However, Article 51 note (b) TRIPs define "pirated copyright goods" as any
goods which are copies made without the consent of the right holder or person duly authorized by
the right holder in the country of production and which are made directly or indirectly from an
article where the making of that copy would have constituted an infringement of a copyright or a
related right under the law of the country of importation. Some argue that this definition shows that
Article 61 TRIPs also covers related rights, while others reject this interpretation.
All ACTA-partners, including the EU, seems to agree that this provision in ACTA should cover
related rights, but the EU has put this expression in brackets and asked for a definition. Canada has
suggested that such a definition should be provided in Chapter One, among the general definitions.
Member States have recently discussed the scope of "related rights" in the context of the Free Trade
Agreement (FTA) with the Republic of Korea. The result of these discussions was a compromise
according to which it is up to each party to define related rights "in accordance with its international
obligations" (doc. 11277/1/09 REV 1 RESTREINT UE ).
- Delegations are invited to comment on if the solution used in the FTA with the Republic of Korea
could be proposed for the criminal provisions in ACTA too. Delegations are also invited to give
some arguments for their positions.
1.3 The concept of commercial scale
The Japan-U.S. joint proposal on scope (Article 2.14.1) contains a definition according to which
willful copyright or related rights piracy on a commercial scale includes:
(a) significant willful copyright or related rights infringements that have no direct or
indirect motivation of financial gain; and
(b) willful copyright or related rights infringements for purposes of commercial advantage
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The Japan-US joint proposal also includes a footnote, according to which financial gain, for the
purposes of ACTA, includes the receipt or expectation of receipt of anything of value.
The EU has proposed not to define willful copyright or related rights piracy on a commercial scale,
while the other ACTA-partners seems to accept including such a definition. However, some of them
have proposed to amend the definition in different ways. Mexico has proposed that the concept
"financial gain" should include financial loss, i.e. money which right holders would be deprived of
as a result of illegal activities. Mexico has further proposed that the term "commercial advantage or
private financial gain" should be defined. The Republic of Korea has proposed that with regards to
the word "significant", the following footnote should be inserted: The concept of "significant" shall
be interpreted in accordance with the criteria set out in each Party's domestic legislation, such as the
amount of damages involve, or the duration or frequency of infringements.
In this context the attention should be drawn to the WTO panel report on the US-China dispute over
intellectual property rights issued on 26 January 2009 (WT/DS362/R). One of the questions in
dispute was whether China was in violation of Article 61 TRIPs, which requires criminal
procedures and penalties to be applied at least in cases of willful trademark counterfeiting or
copyright piracy on a commercial scale. Third parties in this case arguing, regarding the concept of
commercial scale, were inter alia the ACTA-partners Australia, Canada, the European
Communities, Japan, the Republic of Korea and Mexico. The WTO panel report shows that it's not
easy to define commercial scale.
- Delegations are invited to comment on whether or not ACTA should include a definition of
copyright or related rights piracy on a commercial scale and, if this is the case, which elements
should be included in such a definition. Delegations are also invited to give some arguments for
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1.4 Importation and exportation
The Japan-U.S. joint proposal on scope (Article 2.14.1) contains a footnote which prescribes that
"Each party shall treat willful importation or exportation of counterfeit goods [Option J:
confusingly similar trademark goods] or pirated copyright goods [Option J:, in accordance with its
laws and regulations,] as unlawful activities subject to criminal penalties under this Article. A Party
may comply with its obligation relating to exportation of pirated goods through its measures
concerning distribution."
The EU and New Zealand have proposed to delete this footnote, while many other ACTA-partners
seems to be prepared to accept it. However, Canada has proposed that it should be limited to import
on a commercial scale (i.e. the reference to export should be deleted). Australia has proposed that
the last sentence also should cover trademarks.
Under Community law, the rights conferred by a trademark include, among other things, import and
export in the course of trade of goods under the protected sign (Article 5.3.c of Directive
2008/95/EC and, with regard to Community trade marks, Article 9.2.c of Council Regulation [EC]
No 207/2009). However, the rights conferred by a copyright are constructed in a different way and
include the right of re-production, the right of communication to the public of works, the right of
making available to the public other subject-matter and the right of distribution (Articles 3-5 of
Directive 2001/29/EC). This means that import and export as such does not necessarily constitute a
copyright infringement. At the same time, Article 51 TRIPs seems to imply that at least import shall
be illegal when the copy is made without the consent of the right holder or person duly authorized
by the right holder in the country of production and which are made directly or indirectly from an
article where the making of that copy would have constituted an infringement of a copyright or a
related right under the law of the country of importation (see also Council Regulation [EC]
1383/2003, in particular recital 3).
- Delegations are invited to further comment on the footnote proposed in the Japan-U.S. joint
proposal, in particular on how they interpret their obligations under Article 51 TRIPs and Council
Regulation (EC) 1383/2003. Delegations are also invited to give some arguments for their
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2. PE ALTIES
According to the Japan-U.S. joint proposal on penalties (Article 2.14.2.a) each party shall provide
penalties that include sentences of imprisonment "as well as" monetary fines.
The corresponding EU-proposal (Article 2.18) provides for penalties that include sentences of
imprisonment "and/or" monetary fines. The Republic of Korea and Australia seems to suggest that
both imprisonment and monetary fines should be available for the court, but the court should not be
expected to apply both of them in parallel in a specific IPR infringement case.
- Delegations are invited to comment on if a solution along the lines suggested by the Republic of
Korea and Australia could be an option, i.e. the availability of both options and freedom for courts
to decide which one to apply in a specific case. Delegations are also invited to give some arguments
for their positions.
3. SEIZURE/CO FISCATIO
3.1 Predominantly
According to the Japan-U.S. joint proposals on seizure, forfeiture and destruction, the judicial
authorities shall have the authority to seize, forfeit and destroy materials and implements used in the
commission of the alleged offence (Articles 2.14.2.b and 2.14.2.d.ii).
According to the corresponding EU-proposals (Articles 2.17 and 2.19), the judicial authorities shall
only have this authority in respect of materials and implements "predominantly" used in the
commission of the alleged offence.
The other ACTA-partners seems to accept the Japan-U.S. joint proposal in respect of seizure, but in
respect of forfeiture and destruction Canada has proposed to add "predominantly" and New Zealand
has proposed to add "specifically designed or adapted".
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All Member States have ratified the Council of Europe Convention of 8 November 1990 on
Laundering, Search, Seizure and Confiscation of the Proceeds from Crime. According to Article 2.1
in this Convention, each party shall adopt such legislative and other measures as may be necessary
to enable it to confiscate instrumentalities and proceeds or property the value of which corresponds
to such proceeds. In Article 1 (c), "instrumentalities" is defined as any property used or intended to
be used, in any manner, wholly or in part, to commit a criminal offence or criminal offences. This
means that the prerequisite "predominantly" is not included in this Article.
- Delegations are invited to comment on if the EU could accept to delete the prerequisite
"predominantly" (Article 2.17 and 2.19). Delegations are also invited to give some arguments for
their positions.
3.2 Individual identification of items
The Japan-U.S. joint proposal on seizure (Article 2.14.2.b) prescribes that orders for seizure need
not "individually identify" the items that are subject to seizure, so long as they fall within the
specified categories in the relevant order.
This sentence seems to be based on a legal system where it's normally e.g. a court that takes the
decision on seizure and another authority (e.g. the police) that executes this decision at a later stage.
However, in some Member States the legislation is constructed in a different way. The decision on
seizure is normally taken by the police authority at sight, i.e. when the police during a search or
otherwise finds an item that needs to be seized. This is one of the reasons why the EU has proposed
to delete this sentence. The only other ACTA-partner that has commented on this proposal
(Switzerland) has proposed the following wording: Each Party shall provide that such orders need
not determine the items that are subject to seizure in more detail than necessary to allow their
unambiguous identification for the purpose of the seizure.
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- Delegations are invited to comment on if a provision concerning the need to individually identify
items could be included in the EU-proposal and, if this is the case, elements that might be included
in such a provision. Delegations are also invited to give some arguments for their positions.
4. U AUTHORIZED CAMCORDI G
The Japan-U.S. joint proposal contains a provision on unauthorized camcording (Article 2.16).
The EU, Australia, New Zealand and Switzerland have proposed the provision to be deleted. New
Zealand has also raised a number of questions and concerns relating to this Article (presented in
document MD 389/09). Morocco has asked Japan/U.S. to clarify the reason to provide a special
provision for film copy or audio-visual work. Japan and the U.S. have argued inter alia that
unauthorized camcording poses an international problem.
- Delegations are invited to comment on if they still think that this article should be deleted.
Delegations are also invited to give some arguments for their positions.
5. EX OFFICIO CRIMI AL E FORCEME T
The Japan-U.S. joint proposal (Article 2.17) contains a provision according to which its authorities
shall be able to act ex officio (investigation and/or legal action).
The EU has proposed the provision to be deleted. Arguments put forward by delegations were, inter
alia , that many Member States does not provide for ex officio criminal enforcement and that it is
difficult to pursue investigation and legal action in this area unless the rightholder is involved. Other
ACTA-partners have indicated that they could accept some kind of ex officio provision.
- Delegations are invited to comment on if they still think that this article should be deleted.
Delegations are also invited to give some arguments for their positions.
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6. LIABILITY OF LEGAL PERSO S
The EU has put forward a proposal according to which each party shall adopt such measures as may
be necessary, consistent with its legal principles, to establish the liability of legal persons for the
offences referred to in Article 2.14. The EU-proposal also contains a sentence which clarifies that
this liability "may be criminal or non-criminal". This is in line with commonly used language in
criminal law instruments, both at EU and international level, and can be explained by the fact that
jurisdictions have different ways to hold legal persons liable for criminal offences.
The other ACTA-partners have not yet commented on this provision. However, the same wording
was rejected by the Republic of Korea in the recent FTA-negotiations. The Republic of Korea's
main argument was that since there is a whole chapter on civil enforcement, which is binding and
applies to legal persons too, this provision is redundant. If the provision were to be maintained it
should, according to the Republic of Korea, only refer to criminal liability. Such a provision could
not be accepted by Member States. In the end, a compromise was reached with the Republic of
Korea according to which "Each Party shall adopt such measures as may be necessary, consistent
with its legal principles, to establish the liability of legal persons for the offences referred to in
Article...", but without explicitly mentioning that this liability "may be criminal or non-criminal".
In the light of the discussions with the Republic of Korea, it is important to keep in mind that this
provision is about liability for criminal offences, as opposed to liability for damages. Consequently,
a provision of this kind belongs in a chapter on criminal law. At the same time it is clear that the EU
needs to be prepared to explain its position.
- Delegations are invited to comment on the added value of including, in ACTA, a provision on the
liability of legal persons for criminal offences. Are delegations of the opinion that this is an
additional liability in relation to what is prescribed in the chapter on civil enforcement?
Delegations are also invited to give some arguments for their positions.
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7. COMPLICITY
The EU has put forward a proposal on complicity (Article 2.16). Some other ACTA-partners have
raised the question whether or not this term has the same meaning as aiding and abetting.
The Swedish Presidency is of the opinion that the term complicity includes incitement/instigation as
well as aiding and abetting (cf. e.g. Article 4 in Directive 2008/99/EC). At the same time, the
Presidency notes that there are a number of regional and international treaties that refer to aiding
and abetting, but not to incitement/instigation (see e.g. Article 5.1. [b] UNTOC, Article 23.1.b [ii]
United Nations Convention against Corruption and Article 24 of the Council of Europe Convention
on the Protection of Children against Sexual Exploitation and Abuse).
- Delegations are invited to comment on if they agree with the Presidency's interpretation of the
term complicity and if the proposed article could be amended in order to clarify this interpretation
(by explicitly prescribing the criminalisation of incitement as well as aiding and abetting).
Delegations are also invited to comment on the importance of this article and in particular, if
needed, they could accept to limit its scope to aiding and abetting. Last, but not least, delegations
are invited to give some arguments for their positions.
8. RIGHTS OF DEFE DA TS A D THIRD PARTIES
The EU has put forward a proposal (Article 2.21) according to which each Party shall ensure that
the rights of the defendants and third parties shall be duly protected and guaranteed.
The other ACTA-partners have not yet commented on this provision. However, the same wording
was rejected by the Republic of Korea in the recent FTA-negotiations.
- Delegations are invited to comment on how they interpret this article and the importance of it
being included in ACTA. Delegations are also invited to give some arguments for their positions.
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