I have posed a question following the news that the latest round of negotiations on the Anti-Counterfeiting Trade Agreement (ACTA) have been completed with the Australian Government’s Department of Foreign Affairs and Trade publishing the final text.
ACTA negotiations began in June 2008, based on a concept introduced by Japan when it hosted the 2006 G8 Summit. Since that time there have been 11 rounds of talks. The agreement aims to establish a comprehensive, international framework that will assist in the fight against intellectual property infringements.
What is this voluntary trade agreement worth in real terms and does it actually add anything new to the international intellectual property enforcement framework? The answer has to be ‘not a lot’ unless it acts as a springboard for UK statutory damages following the example of the US?
The key text is at ARTICLE 2.2: DAMAGES:
3. At least with respect to works, phonograms, and performances protected by
copyrights or related rights, and in cases of trademark counterfeiting, each Party shall
also establish or maintain a system that provides for one or more of the following:
(a) pre-established damages, or
(b) presumptions for determining the amount of damages sufficient to
compensate the right holder for the harm caused by the infringement, or
(c) at least for copyright, additional damages.
Pre-established damages would help against infringements where the court only awards the missing licence fee. It is a change to the law that we really need. It would provide deterrence against infringers without needing to revert to the criminal law for deterrence alone which has its own complications with the raised burden of proof being number one.
Intellectual Property Rights are a key asset of the UK economy and the broader European Union. It is vital these are protected so that we may compete with confidence as a knowledge economy. On the positive side it does however provide a standard for enforcement plus an international forum in which the improvement of standards can be pursued. We do need to be clear however, that ACTA will not change the existing body of UK and EU law as this is already more advanced than many of the existing international standards. The effort should not be wasted.
Since the Gowers Review in 2006, we have been arguing for a deterrent to infringers, ACTA should be the inspiration on statutory damages in the new IP Review recently announced by the Prime Minister. The ACTA agreement currently extends to all 27 EU countries, as well as Japan, Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland and the United States of America.