ACTA’s Article 2.X on Injunctions: the July 1, 2010 text

From the July 1, 2010 text of ACTA:

Article 2.X Injunctions

[EU/Sing: 1. ] In civil judicial proceedings concerning the enforcement of [Can/NZ/Aus/US/Sing/Mex: copyright and related rights and trademarks] [J/EU: intellectual property rights], each Party shall provide that its judicial authorities shall have the authority [Can/AUS: subject to any statutory limitations under its domestic law] [US/Kor/J/EU/CH/Mex: subject to any statutory limitations under its domestic law] to issue an order to a party to desist from an infringement, including an order to prevent infringing goods from entering into the channels of commerce.

EU/CH: 2. The Parties [NZ/Mor/Mex: may] shall also ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right fn10]fn11

[EU: 10 The conditions and procedures relating to such injunction will be left to each Party’s legal system.]
11 US,NZ CAN, AUS,Mexc, J, oppose paragraph 2. The US and J are considering its placement

Conflicts with US Law

Note to US ACTA negotiators: the following are examples where current US law provides statutory exceptions to the availability of injunctions.

IP Rights covered: trademarks

5 USC 1114 Remedies; infringement; innocent infringement by printers and publishers.

IP Rights covered: copyright

17 USC USC 512. Limitations on liability relating to material online

28 USC 1498 (b) Use by or for the government

Not to mention proposals for expanding access to orphaned copyrighted works.
See: 110th Congress: S.2913 Shawn Bentley Orphan Works Act of 2008 (Engrossed as Agreed to or Passed by Senate)

IP Rights covered: patents

35 USC 271 (e) (3) The Safe Harbour exception for uses of patents related to the development and submission of information concerning the sale of drugs or veterinary biologic products

35 USC 271(e)(6)(B-C) Non-disclosed biological product patents

35 USC 272 Temporary presence in the United States (meeting obligations under Chicago and Paris conventions).

35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
No injunctions for patent infringement by medical practitioners

42 USC 2184. Injunctions; measure of damages. Nuclear energy

28 USC 1498 (a) Use by or for the government

Semiconductor chip design

17 USC 907 Limitation on exclusive rights: innocent infringement

Plant Breeder Rights

28 USC 1498 (d) Use by or for the government

Designs, including designs of a vessel hull or deck

28 USC 1498 (e) Use by or for the government

Mask work fixed in a semiconductor chip product
28 USC 1498 (e) Use by or for the government

On page 5 of the July 1, 2010 text, in Article 2.x, General Obligations with Respect to Enforcement, the United States has proposed the following text:

4. [US: Notwithstanding the other provisions of this Agreement, the Parties may limit the remedies available against a government’s unauthorized use of intellectual property covered under this Agreement, or against such unauthorized use by a third party that was authorized by a government, to payment of remuneration. Such remuneration shall be adequate to compensate for the injury the right holder has suffered, taking into account the economic value of the use.]fn9

9. Delegations need more time for further consultations.

This would cover the exceptions to the availability of injunctions in the 28 USC 1498 cases. It would not address the other exceptions.

Another example of where countries will provide exceptions to the general right to injunction is based upon a 1944 treaty concerning civil aviation.

The Convention on International Civil Aviation, signed at Chicago, on 7 December 1944 (Chicago Convention)

The United States and most if not all other ACTA members are signatures to the The Convention on International Civil Aviation, signed at Chicago, on 7 December 1944 (Chicago Convention). Article 27 of that Convention provides an exemption from seizure on patent claims. Paragraphs (a) and (b) of the Convention read as follows:

Article 27 – Exemption from seizure on patent claims
(a) While engaged in international air navigation, any authorized entry of aircraft of a contracting State into the territory of another contracting State or authorized transit across the territory of such State with or without landings shall not entail any seizure or detention of the aircraft or any claim against the owner or operator thereof or any other interference therewith by or on behalf of such State or any person therein, on the ground that the construction, mechanism, parts, accessories or operation of the aircraft is an infringement of any patent, design, or model duly granted or registered in the State whose territory is entered by the aircraft, it being agreed that no deposit of security in connection with the foregoing exemption from seizure or detention of the aircraft shall in any case be required in the State entered by such aircraft.
(b) The provisions of paragraph (a) of this Article shall also be applicable to the storage of spare parts and spare equipment for the aircraft and the right to use and install the same in the repair of an aircraft of a contracting State in the territory of any other contracting State, provided that any patented part or equipment so stored shall not be sold or distributed internally in or exported commercially from the contracting State entered by the aircraft.

The Chicago Convention prohibits any patent related seizure, detention, claim or other interference against the owner or operator of an aircraft engaged in international air navigation, with or without landings. Since most if not all ACTA members have signed this Convention, and benefit from the freer nature of air traffic, the ACTA text should be clear that such exceptions from the availability of injunctions are possible.

Canada’s exception for buildings

Like many other countries, Canada has special provisions in its copyright laws for architectural works, including this provision:

No injunction in case of a building

40. (1) Where the construction of a building or other structure that infringes or that, if completed, would infringe the copyright in some other work has been commenced, the owner of the copyright is not entitled to obtain an injunction in respect of the construction of that building or structure or to order its demolition.

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