ACTA’s Article 2.3, on “Other Remedies”: the July 1, 2010 text

Article 2.3 of the July 1, 2010 version of the ACTA text provides for “Other Remedies” for infringement. The Japan, Switzerland and EU versions of the text appear to be overreaching, including for example by directly conflicting with explicit TRIPS provisions and provisions in the laws of ACTA negotiating countries, including several European Countries.

The many exceptions found in national laws raise questions about the nature of the obligation proposed for the ACTA, including concerns about the quality and depth of the analysis that went into the drafting of Article 2.3.

The proposed ACTA text reads as follows

Article 2.3: Other Remedies

1. With respect to goods that have been found to be [US/Aus/Can/Sing/Kor/NZ/Mex: pirated or counterfeited] [J/EU/CH: infringing an intellectual property right], each Party shall provide that in civil judicial proceedings, at the right holder’s request, its judicial authorities shall have the authority to order that such goods be destroyed, except in exceptional circumstances, without compensation of any sort.

2. Each Party shall further provide that its judicial authorities shall have the authority to order that materials and implements the predominant use of which has been in the manufacture of [J/EU: infringing][EU/Aus/Can/Sing/NZ/Mex: pirated or counterfeit] goods be, without delay and without compensation of any sort, destroyed or disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringement.

Compare this to Article 37 of the TRIPS

. . . Members shall provide that, after the time that such person has received sufficient notice that the layout-design was unlawfully reproduced, that person may perform any of the acts with respect to the stock on hand or ordered before such time, but shall be liable to pay to the right holder a sum equivalent to a reasonable royalty such as would be payable under a freely negotiated licence in respect of such a layout-design.

Several ACTA negotiating parties have exceptions in their copyright related to the destruction of goods. For example, in Germany:

§ 98 Anspruch auf Vernichtung, Rückruf und Überlassung
(5) Bauwerke sowie ausscheidbare Teile von Vervielfältigungsstücken und Vorrichtungen, deren Herstellung und Verbreitung nicht rechtswidrig ist, unterliegen nicht den in den Absätzen 1 bis 3 vorgesehenen Maßnahmen.

According to Sandy Harnisch, this translates to “Buildings as well as separable/detachable parts of copies/duplicates/reproductions and devices whose production and distribution does not violate law, are excluded from the applications of subparagraphs 1, 2, 3.”

The somewhat nuanced provisions in the Denmark copyright are not consistent with the uncompromising and simplistic draft ACTA text:

Seizure, etc. 84.–

(1) If copies of works or of performances or productions protected according to sections 65-71 have been made in, imported into or made available to the public in Denmark in contravention of this Act or of regulations laid down pursuant to section 61(2) it may by judgment be ordered that such copies shall be seized in favour of the infringed party or be transferred to him against a remuneration not to exceed the production costs.

(2) Instead of seizure or transfer, it may be ordered that the copies shall be destroyed in whole or in part or in any other manner be made unserviceable for unlawful use. If due to the artistic or financial value of the copies or if otherwise deemed reasonable in the circumstances, the courts may allow the copies to be made available to the public against damages and compensation to the infringed party.

(3) The provisions of subsections (1) and (2) shall apply correspondingly to type matters, printing blocks, forms and other things that may serve unlawful production or application of the work or the production.

(4) The provisions of subsections (1)-(3) shall not apply to persons who have acquired copies in good faith for private use, or to persons who have made copies in good faith in contravention of section 11 (3).

(5) Seizure or destruction of buildings may not be demanded in pursuance of subsections (1) and (2).

Consider also the exception in Article 58 of the Finland copyright law.

. . . The provisions of the first paragraph shall not apply to a person who has acquired the property or some specific right therein in good faith, or to works of architecture; however, the modification of a building may be ordered according to circumstances.

Consider also the following from the Italian copyright law:

Article 159
. .. The provisions for destruction and delivery shall not apply to infringing specimens or copies acquired in good faith for personal use.

Article 160
Removal or destruction shall not be demanded in the last year of the term for which the right endures . . .

Article 161
. . . Seizure may not be effected in the case of works resulting from the collaboration of two or more persons, except in particular serious cases or where the infringement is imputable to all joint authors. . . .

Article 169
Actions in defence of the rights relating to the authorship of a work shall give rise to removal or destruction only if the damage cannot be remedied by means of the addition or suppression of notices on the work which refer to its authorship or by other means of publicity.

Article 170
Actions in defence of the rights bearing relating to the integrity of a work shall give rise to removal or destruction of the deformed, mutilated or otherwise modified copy of the work only when it is not possible to restore such copy in its original form at the expense of the party wishing to avoid removal or destruction.

The Sweden copyright act also provides for exceptions from the general right to order the destruction of an infringement.

Article 55. Anyone who commits an act involving infringement or a violation pursuant to Article 53 shall, if this is considered reasonable, surrender to the author or his successor in title, for a compensation, the property involvement in the infringement or the violation.

Instead of issuing an order for surrender pursuant ot the first Paragraph, the Court may, at the request of the author or his successor in title, in accordance with what is considered reasonable, order that such property shall be destroyed or altered in specific ways or that other measures shall be taken to prevent wrongful use.

The provisions of the first and second Paragraphs shall not apply in respect of persons who have in good faith acquired the property or a right in it, nor in cases involving the construction of a work of architecture.

Decisions pursuant to this Article shall not be issued, if forfeiture or measures for the prevention of wrongful use are to be decided pursuant to Article 53a or the Criminal Code.

Switzerland, it its own intellectual property laws, provides a specific exception for architectural works already completed.

Art. 63 Confiscation d’exemplaires
1 Le juge peut ordonner la confiscation assortie de la réalisation ou de la destruction des objets fabriqués illicitement, ou des instruments, de l’outillage et des autres moyens destinés principalement à leur fabrication./51

2 Sont exceptées les oeuvres d’architecture déjà réalisées.

fn51 Nouvelle teneur selon le ch. 1 de l’annexe à la LF du 22 juin 2007, en vigueur depuis le 1er juillet 2008 (RO 2008 2551 2567; FF 2006 1).

Also relevant is the provision in the United States, under 19 USC 1337 ,that provides a discretionary exception for infringing works that have an impact on public health and welfare or the competitive conditions in the United States economy, and provides also for a mandatory exception for the importation of infringing works “by or for the United States” government.

Part II—United States International Trade Commission
§ 1337. Unfair practices in import trade

(d) Exclusion of articles from entry
(1) If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States, unless, after considering the effect of such exclusion upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, it finds that such articles should not be excluded from entry.

. . .

(i) Forfeiture
(1) In addition to taking action under subsection (d) of this section, the Commission may issue an order providing that any article imported in violation of the provisions of this section be seized and forfeited to the United States . . .

. . .
(l) Importation by or for United States
Any exclusion from entry or order under subsection (d), (e), (f), (g), or (i) of this section, in cases based on a proceeding involving a patent, copyright, mask work, or design under subsection (a)(1) of this section, shall not apply to any articles imported by and for the use of the United States, or imported for, and to be used for, the United States with the authorization or consent of the Government. Whenever any article would have been excluded from entry or would not have been entered pursuant to the provisions of such subsections but for the operation of this subsection, an owner of the patent, copyright, mask work, or design adversely affected shall be entitled to reasonable and entire compensation in an action before the United States Court of Federal Claims pursuant to the procedures of section 1498 of title 28.

Another area where the ACTA text is contrary to US law concerns cases of trademark infringement involving a newspaper, magazine, or other similar periodical or in certain electronic communication, where judicial authorities cannot destroy existing infringing materials, where the infringement was “innocent.” In such cases, destruction of the infringing goods can only be considered in future issues of the publication, where there would be no defense concerning the lack of knowledge about the infringement.

TITLE 15 CHAPTER 22 SUBCHAPTER III § 1114 Remedies; infringement; innocent infringement by printers and publishers

(2) (A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 1125 (a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing.

(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510 (12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125 (a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.

(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 1125 (a) of this title with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.