In brief

  • On 15 November 2010 international agreement was reached on the Anti-Counterfeiting Trade Agreement (ACTA).
  • The agreement includes articles relating to civil and criminal enforcement as well as specific articles relating to IP in the digital environment.
  • DFAT comments that Australia will not be required to change its laws.  

On 16 November 2010, Australia’s Minister for Trade, Dr Craig Emerson, announced that after three years of negotiations, international agreement has been reached on the Anti-Counterfeiting Trade Agreement (ACTA). Australia is among the countries that have been involved in the negotiation of ACTA.

ACTA is intended to combat commercial scale trade in counterfeit and pirated goods on a worldwide scale. Participants have stated that ACTA will improve intellectual property enforcement by promoting international cooperation, enforcement of best practice and by putting in place consistent enforcement legal frameworks which complement the TRIPS Agreement.

The ACTA participants have made clear that the agreement is not intended to target individuals, the privacy of individuals or the property of individuals where those individuals are not engaged in commercial scale trade in counterfeit and pirate goods.

Of particular interest are articles within the agreement that, subject to some exceptions and limitations, impose obligations on intermediaries like internet service providers (ISP) to provide information to rights holders regarding their subscribers.

The negotiations for ACTA were undertaken by 37 countries including Australia, the US, New Zealand, the EU and its member states, Canada, Japan and Singapore.

We set out below a brief overview of some of the key points.

Civil enforcement

 

  • Judicial authorities will have the authority to issue injunctions to prevent continuing infringement.
  • Judicial authorities will have the power to order that an infringer provide any relevant information on the origin of the infringing goods or services that the infringer possesses or controls, to the IP rights holder or to the judicial authorities. Such information may include information regarding any person involved in any aspect of the infringement, regarding the means of production and distribution channel of the goods or services, and the identification of third parties involved in the infringement.  

IP in the digital environment

  • Each party to ACTA must ensure that its enforcement procedures apply to ‘…infringement of copyright or related rights over digital networks, which may include the unlawful use of means of widespread distribution for infringing purposes’ (Article 2.18).
  • Through enforcement by the relevant authorities, rights holders are entitled to obtain information from an ISP relating to the identity of a subscriber whose account the rights holder alleges has been used for infringement. The rights holder must file a ‘legally sufficient’ claim of infringement of its intellectual property rights.
  • There is to be no requirement under ACTA that an ISP affirmatively seek facts showing that infringement is occurring.
  • Authorities are to provide legal protection and remedies against the unauthorised circumvention of legitimate technology used by authors, producers, artists etc to exercise their rights in relation to their intellectual property (musical works, performances etc).
  • Such protection is to at least include protection against products (computer programs, devices, services etc) that are offered to the public for the purpose of circumventing such legitimate technologies.

The ACTA measures relating to ISPs are particularly interesting in light of the recent Australian Federal Court decision in Roadshow Films Pty Ltd v iiNet Limited (No. 3) [2010] FCA 24 which was the subject of an appeal in August of 2010 for which judgment is reserved. On 4 February 2010, the Federal Court found that iiNet was not liable for infringement of various film and television copyright works by its customers and that iiNet did not ‘sanction, approve or countenance copyright infringement’. It is open to debate what impact (if any) ACTA may have on future court cases addressing the issue of ISP liability in relation to copyright infringement perpetrated by its subscribers.

Border measures

 

  • Authorities are not required to take action against small ‘non-commercial’ quantities of goods contained in traveller’s personal luggage (for example, in iPods).

Criminal enforcement

  • Criminal procedures and penalties to be in place at least for cases of wilful trade mark counterfeiting and copyright piracy on a commercial scale.
  • For offences described above (and limited others), authorities are to provide penalties that include both monetary fines and imprisonment.  

Next steps

A media release dated 16 November 2010 from Australia’s Department of Foreign Affairs and Trade (DFAT) includes that Dr Emerson states that Australia would not be required to change existing domestic laws to implement the ACTA.

The finalised text of ACTA was released by participants on 15 November 2010 and is available through DFAT’s website.1 The finalised text is subject to legal review.

The Federal Government will make a final determination whether to ratify the ACTA treaty once it has been examined by the Joint Standing Committee on Treaties.