1. 1 Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? Sixth Advanced Research Forum on Intellectual Property Rights, Selected Topics on Cultural and Legal Pluralism in IP Law, World Intellectual Property Organization (WIPO) and the Faculty of Law, Hebrew University of Jerusalem WIPO, Geneva May 29-31 2012 Christophe Geiger Associate Professor, Director General and Director of the Research Department, Centre for International Intellectual Property Studies (CEIPI), University of Strasbourg

2. 2 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? INTRODUCTION  What is ACTA? The Anti-Counterfeiting Trade Agreement (ACTA) is a plurilateral agreement aimed at combating the proliferation of counterfeiting within the global economy  Why is ACTA? - Preamble of ACTA : “DESIRING TO combat such proliferation through enhanced international cooperation and more effective international enforcement; INTENDING TO provide effective and appropriate means, complementing the TRIPS Agreement, for the enforcement of intellectual property rights”

3. 3 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? Some impressive figures on the proliferation of counterfeiting in third countries have been published - OECD, The Economic Impact of Counterfeiting and Piracy, Paris, OECD Publishing, 2008. - updated in: OECD, Magnitude of counterfeiting and piracy of tangible products: an update, Nov. 2009, p. 3: “counterfeit and pirated goods in international trade grew steadily over the period 2000-2007 and could amount to up to USD 250 billion in 2007 (...). The share of counterfeit and pirated goods in world trade is also estimated to have increased from 1.85% in 2000 to 1.95% in 2007”.

4. 4 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? If ACTA has a legitimate aim, why does it faces so many criticism? I.The rise of ACTA II.The context of ACTA III.The content of ACTA IV.Is ACTA a new strategy for the implementation of stronger provisions on criminal enforcement of IPRs?

5. 5 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? I.The rise of ACTA 1.Current legal framework on enforcement of intellectual property rights  At international level, the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs) establishes the standard for the enforcement of intellectual property rights (only minimum rules)  The international framework was considered by most developed nations to be insufficient or ineffective at an early stage.

6. 6 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.Current enforcement of intellectual property rights (bis)  The “weakness” of the international regulation: oWTO Panel decision on the case brought by the United States against China, WTO Panel report of 26 January 2009, China – Measures affecting the protection and enforcement of intellectual property rights, WT/DS362/R oThe WTO’s Panel cautious interpretation of the “commercial scale” concept, which permits the adjustment of the obligations under the Agreement in terms of penalties to the specific circumstances and needs of the country in question

7. 7 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.Current enforcement of intellectual property rights (bis)  At European level, the European Union have a constant preoccupation to improve the legal framework regarding enforcement of intellectual property rights and to combat counterfeiting, such as revisal of several Directives and Regulations.

8. 8 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.Current enforcement of intellectual property rights (bis) oDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, OJEU L 157 of 30 April 2004 corrected in OJEU L 195 of 2 June 20042004/48/EC oProposal for a Regulation of the European Parliament and of the Council concerning customs enforcement of intellectual property rights of 24 May 2011, COM(2011) 285 final, 2011/0137 (COD), C7-0139/11 oThe European Observatory on “Counterfeiting and Piracy”, recently became “European Observatory on Infringements of Intellectual Property Rights”: Regulation (EU) No 386/2012 of 19 April 2012, OJEU L 129 of 16 May 2012, p. 1

9. 9 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.Current enforcement of intellectual property rights (bis)  Aware of the difficulty of enforcing intellectual property rights effectively in certain regions, the European Union adopted a “Strategy aimed at ensuring the enforcement of intellectual property rights in third countries”, OJEU C 129 of 26 May 2005: oAnnex I: "It has become clearly insufficient to limit the efforts of the EC to merely monitoring the creation of general legislative frameworks in WTO member countries. It is essential that the EC increasingly focuses on vigorous and effective implementation of the enforcement legislation."

10. 1010 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? I.The rise of ACTA (bis) 2.Initiatives to negotiate ACTA and signatory parties  The China-Enforcement case confirmed to many developed countries the inadequacies of the existing international provisions on the enforcement of intellectual property rights

11. 1 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.Initiatives to negotiate ACTA and signatory parties (bis)  Thus, in October 2007, the EU, the US, Japan, Canada and other seven countries started a three years negotiating process on the Anti- Counterfeiting Trade Agreement  Several draft versions of the Agreement have been released since April 2010, with the final version published on 3 December 2010

12. 1212 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.Initiatives to negotiate ACTA and signatory parties (bis)  ACTA was signed on 1 October 2011 in Tokyo by : Australia, Canada, Japan, the Republic of Korea, the Kingdom of Morocco, New Zealand, the Republic of Singapore and the United States of America  On 26 January 2012 the European Union and 22 of its Member States signed the Agreement

13. 1313 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? II.The context of ACTA 1.The problematic premises of ACTA 2.The consequence: A ‘Tough climate’

14. 1414 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? II.The context of ACTA (bis) 1.The problematic premises of ACTA  Secrecy  ‘Forum shifting’  Non-signatory third countries

15. 1515 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.The problematic premises of ACTA (bis)  Secrecy oNegotiating the future of intellectual property law between countries sharing the same interests, without the participation of emerging countries oThe secrecy approach developed mistrust and widespreaded speculation on the content and on the aim of the Agreement among the general public

16. 1616 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.The problematic premises of ACTA (bis)  ‘Forum shifting’ oGiven the difficulty in achieving satisfactory rules within the classical multilateral framework, a number of likeminded countries engaged in what is called ‘forum shifting’ o‘Forum shifting’ risks in the long term to considerably weaken multilateralism in the field of intellectual property law making

17. 1717 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.The problematic premises of ACTA  Non-signatory third countries oWhy to adopt and negotiate a legal text that does not modify the legal provisions applicable to intellectual property rights? oThe answer stays in the Preamble of the Agreement: ACTA is mainly addressed at non-signatory emerging countries! Establishment of a special body to implement the Agreement, the “ACTA Committee” (Chapter V, Art. 36, ACTA). Function: to decide upon “the terms of accession to this Agreement of any member of the WTO” and to invite “those signatories not parties to this Agreement to participate in the Committee's deliberations on those rules and procedures”.

18. 1818 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? II.The context of ACTA (bis) 2.The consequence: A ‘Tough climate’!  The complexity and technical nature of the Agreement, combined with the lack of transparency concerning the negotiation process, has given rise to numerous reactions from different stakeholders: oPublic oNegotiating parties

19. 1919 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.‘Tough climate’ (bis)Public United Kingdom Sweden Spain Germany France Green Party

20. 2020 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.‘Tough climate’ (bis) oNegotiating parties  On 9 May 2012, the Swiss Confederation has decided to postpone the signature of ACTA  Within the European Union, as a result of the protests especially around Europe, Cyprus, Estonia, Germany, the Netherlands and Slovakia decided not to sign ACTA until the European Parliament expresses its vote  Other Member States of the European Union which signed the Agreement such as Poland, Czech Republic, Latvia, Austria and Romania decided to freeze the ratification of ACTA

21. 2121 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.‘Tough climate’ (bis) oThe European Commission of the European Union oThe European Commission of the European Union reacted to the public opposition to ACTA by agreeing on the referral of the Agreement to the CJEU  The following question is being asked to the CJUE: "Is the envisaged Anti-Counterfeiting Trade Agreement (ACTA) compatible with the European Treaties and in particular with the Charter of Fundamental Rights of the European Union?"

22. 2 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer?  Nevertheless: Announcement of the intention: Announcement of the question: Announcement of the referral: 22 February 2012 04 April 2012 11 May 2012

23. 2323 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? III.The content of ACTA ACTA has five chapters: -Chapter 1: INITIAL PROVISIONS AND GENERAL DEFINITIONS -Chapter 2: LEGAL FRAMEWORK FOR ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS -Chapter 3: ENFORCEMENT PRACTICES -Chapter 4: INTERNATIONAL COOPERATION -Chapter 5: INSTITUTIONAL ARRANGEMENTS

24. 2424 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? Chapter 2: The “Core” of ACTA Contains in particular provisions concerning: - civil enforcement, - border measures, - criminal enforcement - an additional section on the specific measures aimed at enforcing intellectual property rights in the digital environment (the "digital chapter" of the Agreement).

25. 2525 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer?  In the final version of the Agreement, numerous controversial provisions envisaged during the negotiations have been abandoned or had their scope considerably narrowed: oFor example “graduated response”-systems for combating file sharing on the Internet have been dropped!

26. 2626 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? III.The content of ACTA (bis)  A number of rules are included in the Agreement as to guarantee balanced procedures (safeguards): - Art. 2(3): The objectives and principles of the TRIPS Agreement, in particular in Articles 7 and 8, shall apply, mutatis mutandis, to the Agreement. - Article 6(2) provides to adopt and implement “fair” and “equitable” procedures in regard with the enforcement of IPRs - Article 6(3) states the principle of proportionality - Article 27(2) calls for the preservation of “fundamental principles such as freedom of expression, fair process, and privacy” in the procedures for the enforcement of copyright in digital networks

27. 2727 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? III.The content of ACTA (bis)  Nevertheless: - provisions and scope of ACTA differ on a number of points from the international legal framework and from the acquis communautaire

28. 2828 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? oOpinion of European Academics on Anti-Counterfeiting Trade Agreement, 2011 Journal of Intellectual Property, Information Technology and E- Commerce Law (JIPITEC) Vol. 2 oThe Anti-Counterfeiting Trade Agreement (ACTA): An Assessment, June 2011, EXPO/B/INTA/FWC/2009-01/Lot7/12, PE 433.859, a study of the Institute for Globalisation and International Regulation (IGIR) of the University of Maastricht for the European Parliament oWorkshop: The Anti-Counterfeiting Trade Agreement (ACTA), March 2012, EXPO/B/INTA/FWC/2009-01/Lot7/25, PE 457.105, Workshop Policy Department DG EXPO for the Committee on International Trade of the European Parliament

29. 2929 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? III.The content of ACTA (bis)  Moreover, there are legal uncertainties about the interpretation and the consistency of ACTA A large number of difficulties are appointed in the application of the Agreement related to broad and vague provisions: Precise, transparent and binding interpretation guidelines which should be offered to the signatories  A number of controversial provisions that have for the most part been worded in a non-binding manner (“may”-provisions): reflects an intention to induce the parties to introduce those provisions into their national law

30. 3030 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer?  I  In the EU, consequences of uncertainty are: oThe European Parliament rapporteur on ACTA, David Martin, recently recommended that the “European Parliament declines to give consent to ACTA” (Draft Recommendation, 12 April 2012 (2011/0167(NLE)), PR\898850EN.doc) oThe European Data Protection Supervisor (EDPS) issued its Opinion on 24 April 2012, where expresses concerns on the “ (…) lack of precision is regrettable as the Agreement does not lay out with sufficient legal certainty the types of mechanisms that could be put in place as a result of entering into ACTA and the safeguards against the misuse of personal data or to protect the right of defence.” (para. 33)

31. 3131 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? IV.Is ACTA a new strategy for the implementation of stronger provisions on criminal enforcement of IPRs?  Article 23(1) ACTA provides that “each Party shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright or related rights piracy on a commercial scale. For the purpose of this Section, acts carried out on a commercial scale include at least those carried out as commercial activities for direct or indirect economic or commercial advantage.”

32. 3232 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? IV.Is ACTA a new strategy for the implementation of stronger provisions on criminal enforcement of IPRs? (bis)  Criminal enforcement measures for intellectual property rights infringement is a highly sensitive issue  Harmonization of criminal law at global and regional level rises a number of questions

33. 3 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? IV.Is ACTA a new strategy for the implementation of stronger provisions on criminal enforcement of IPRs?(bis) 1.International criminal enforcement 2.Criminal enforcement: the particular case of the EU

34. 3434 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? IV.Is ACTA a new strategy for the implementation of stronger provisions on criminal enforcement of IPRs?(bis) 1.International criminal enforcement  Article 61 TRIPs Agreement requires to “provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale”

35. 3535 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 1.International criminal enforcement (bis)  Compromise reached among parties at the moment of negotiating the TRIPs Agreement to allow flexibility when deciding the manner to implement criminal penalties in their national law in regard with intellectual property rights.  Flexible interpretation safeguarded by the WTO Panel in 2009.  “Achille’s heel” (Peter YU, 2011) of the TRIPs Agreement leaded to adoption of stronger provisions on criminal enforcement included in ACTA

36. 3636 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? IV.Is ACTA a new strategy for the implementation of stronger provisions on criminal enforcement of IPRs?(bis) 2.Criminal enforcement: the particular case of the EU  Within the legislative framework of the European Union, there are currently no provisions concerning criminal penalties for the infringement of intellectual property rights

37. 3737 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.Criminal enforcement: the particular case of the EU (bis)  Proposal for a Directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights of 26 April 2006  The proposal have been rejected, mainly due to the opposition from the European Parliament, which has sought significant amendments to guarantee a balanced interpretation of the text

38. 3838 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2.Criminal enforcement: the particular case of the EU (bis)  Problem: at European level, the criminal component of the Agreement does not currently include the guarantees demanded by the European Parliament on the occasion of the discussions on the failed directive proposal, e.g. “commercial scale” definition  Consequence: ACTA model when a directive comes to be drafted in the future, ACTA will serve as a model, since the text will have to be compatible with the international commitments of the European Union

39. 3939 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2. Criminal enforcement: the particular case of the EU (bis)  Recommendation: oThe Member States to examine the precise impact of the Agreement on their national legislation, specifically on the criminal component of their intellectual property law, in order to be able to commit themselves in full knowledge of the consequences oBefore the adoption of ACTA, to undertake a broad comparative study on the provisions on criminal enforcement of IP rights in the national legislations of the EU

40. 4040 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? 2. Criminal enforcement: the particular case of the EU (bis)  Intellectual property criminal law is a sensitive subject and deserves to be examined in depth, to ensure that its future function will be dissuasive but also differentiated and balanced (Ex: music file sharing is not the same then counterfeited medicine!)  This reflection has not been conducted sufficiently within the framework of ACTA!

41. 4141 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? CONCLUSIONS  ACTA appears primarly addressed to non-signatory third countries, which will be later invited to ‘join the club’  The most problematic aspect of the Agreement seems to be the method rather then the substance: A secret negociation of the future of IP law between a few like minded countries, outside the competent international organisations, is clearly a bad method!

42. 4242 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? CONCLUSIONS (bis)  The struggle against counterfeiting and the effective enforcement of intellectual property rights might be successfully defended within the international bodies (i.e. WIPO, the WTO), by taking third countries participation into consideration  Several emerging countries have became very proactive when it comes to IP protection, these economies gradually developing strategies for stronger protection of their intellectual property rights  ACTA puts the legitimacy of the global IP system at risk!

43. 4343 Christophe Geiger Harmonizing Enforcement of IP Rights at Global Level: Is ACTA the Right Answer? Christophe Geiger, The Anti-Counterfeiting Trade Agreement (ACTA): A Comprehensive Assessment from a European Perspective, Study for the Committee on International Trade (INTA), Directorate-General for External Policies of the European Parliament, EXPO/B/INTA/FWC/2009-01/Lot7/25, March 2012. Short version forthcoming in the W.I.P.O.J. 2012, Vol. 3, Issue 2: “Weakening Multilateralism in Intellectual Property Lawmaking: A European Perspective on ACTA”.