United States Signs ACTA Amid Privacy, Secrecy Concerns And Constitutional Questions

October 12th, 2011 by spyros lazaris

The United States, together with several other industrialized nations, has signed a major international treaty designed to enhance global protections against counterfeiting and intellectual property piracy. The treaty, known as the Anti-Counterfeiting Trade Agreement, or ACTA for short, requires signatory nations to enact aggressive intellectual property protection legislation similar to that already in place in the United States. Significantly, the agreement was signed by the U.S. government without Congressional debate or approval.

ACTA has been in the works for more than three years. The agreement was signed recently at a Tokyo signing ceremony by Australia, Canada, Japan, Morocco, New Zealand, Singapore, and South Korea, as well as the United States, and significantly tightens global protections against intellectual property infringement, particularly with respect to copyrights. Three other participants in the negotiating process – the European Union, Mexico, and Switzerland – have not yet signed the agreement. The EU’s absence is notable – despite being negotiated by the European Commission on behalf of EU member states, the agreement itself must still be approved by the European Parliament – and the EU has not yet completed its internal procedures authorizing signature.

ACTA is a voluntary agreement that provides a mechanism for the parties involved to collaborate on increasing effective intellectual property rights enforcement.  ACTA is replete with provisions concerning enhanced criminal enforcement. For example, it requires parties to provide criminal penalties and procedures for willful trademark counterfeiting or copyright or related rights piracy on a commercial scale , and applies criminal penalties to willful importation and domestic use of labels or packaging using an unauthorized trademark, as well as unauthorized copying of cinematographic works from a performance in a movie theater. Countries must include imprisonment and heavy fines among the penalties for such activities.

While ACTA is heavily weighted in favor of rights holders and has received significant support from industry groups representing trademark and copyright owners, critics have also made their voices heard. One significant concern asserted is that the agreement, which was negotiated in secret, improperly and unfairly circumvents existing and accepted international negotiating protocols such as TRIPS and WIPO. Critics have also raised concerns about whether information privacy has been adequately considered. For example, among the many provisions requiring enhanced criminal enforcement, ACTA empowers signatory nations to order an online service provider to disclose information sufficient to identify a subscriber whose account was allegedly used for infringement.

In the United States, it remains to be seen whether ACTA will require any changes to existing intellectual property laws or creates any new international obligations. That’s because one significant issue drawing attention is whether public and congressional debate is needed before entering into an international agreement such as ACTA. At least one member of Congress has objected to the unilateral signing of the agreement, asserting that because Congress has plenary powers to regulate foreign commerce and protect intellectual property, the U.S. President does not have constitutional authority to unilaterally enter into such binding international treaties. If a constitutional challenge is brought regarding ACTA, the United States Trade Representative (which is a part of the executive branch and negotiated the treaty on behalf of the U.S.) may be required to provide clarity as to precisely what responsibilities have been imposed by this agreement.

New Italy Trademark Opposition Procedures To Help Brand, Mark Owners Against 3rd Parties

September 1st, 2011 by spyros lazaris

Owners of trademarks and well-known brand and personal names finally have a new intellectual property tool to protect their rights in one of the European Union’s biggest markets. In July 2011, Italy implemented comprehensive trademark opposition procedures to allow rights holders to challenge third parties seeking to usurp those rights.

The new procedures apply to both native Italian trademark applications and Italian extensions of international trademark applications. Oppositions are now available against Italian trademark applications filed as on May 2011, as well as territorial designations of international marks regardless of their date of registration that have been published in the World Intellectual Property Organization (WIPO) Official Gazette as of July 2011.

The new Italian procedures impose time limits on those wishing to initiate opposition proceedings that triggered by dates of publication. For example, oppositions may be brought against Italian trademark applications no later than 3 months from the date of publication in Italy.  Oppositions to local designations of international trademark registrations are possible no later than 3 months from the first day of the month following publication in WIPO’s Official Gazette.

The new procedures should significantly assist intellectual property rights holders protect their investment in trademarks and brand development. Those who have existing trademark rights may institute opposition proceedings against applications for marks that are either identical to that of the application to be opposed and which covering identical products, or that are so similar that a likelihood of confusion exists. Significantly image rights and personal names are also included in the protection available from opposition proceedings to provide recourse where use of the image or name by a third party might injure the associated reputation associated.

Italy’s new opposition procedures therefore come as a welcome benefit, as they offer an alternative to expensive and lengthy judicial cancellation proceedings. In addition to lower costs for the parties and strict time limits that require a decision within 24 months, the procedures include a mandatory initial cooling-off period of two months immediately following official notice that opposition proceedings have been requested. The procedures are therefore encouraged the parties to meet and settle their differences quickly before beginning adversarial proceedings.

While Italy’s move harmonizes options for trademark opposition with regular international practice, it is unclear whether the new procedures provide rights holders with full protection compared to other countries.  Italy’s rules appear to require that an opposition be based on an existing application or registration. Whether it is possible to base such an opposition on trademarks that have been in use but never registered, such as for brand names or logos for which no registration was ever attempted, remains to be seen. Those who have rights based on previous use alone may still need to resort to the Italian courts to challenge later-filed trademark applications or international registrations.

US Senate Introduces More Legislation To Address Protection For Intellectual Property Rights Holders, Exert Influence Over Internet

May 16th, 2011 by spyros lazaris

This past week saw two new bills focusing on IP issues introduced by the United States Senate on the same day. While each deals with a different issue, they are both aimed at the same fundamental goal – to strengthen US law enforcement ability to deal with intellectual property infringement. This time, trademark and copyright protection take center stage, and they follow other attempts in 2011 to legislate on issues involving intellectual property.

The first of these, introduced as S. 968, is known as the “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act” – or the “Protect IP Act” in short form. The legislation is a revision of an earlier attempt to limit the illegal sale of counterfeit goods by cracking down on websites around the world.

The revised legislation, like the original one, confers significant powers to combat the online sale of counterfeit goods. Most of the original provisions remain, but notable among the additions is a limited private right of action that allows copyright holders to pursue injunctions against payment processors and ad networks to eliminate financial viability of a rogue website. The Protect IP Act also appears to respond to previous concerns by critics worried about an overreach of US authority by introducing a narrower definition of what a rogue website site is, and requiring those bringing an action —whether it’s the US Attorney General or a copyright owner —to first proceed against the owner or registrant of a domain name used before bringing an action against the domain name itself.

Nonetheless, Internet censorship worries remain. The revised legislation, as with the original, provides US authorities with the ability to institute an action against “nondomestic domain names,” meaning that law enforcement capability extends to websites not based in the United States – renewing concerns of too much US control over policing the Internet.  These concerns have recently drawn increased attention in the wake of the disclosure of sensitive diplomatic cables by Wikileaks and the vigorous efforts to choke off its ability to get information out to the global community.

The issue centers on the Internet Corporation for Assigned Names and Numbers (ICANN), its relationship with the United States, and its role in managing the global system of Internet protocol addresses and top-level domains. ICANN was originally created to oversee a number of Internet-related tasks previously performed directly on behalf of the US government. Several countries, in conjunction with the United Nations, have recently called for an international body representing the global community that would keep the web access open, free, and with sufficient privacy.

The second piece of legislation, introduced as S. 978, seeks to amend existing criminal penalties for criminal copyright infringement. Current US law makes unauthorized uploads and downloads of copyrighted content a felony. The new legislation specifically targets the illegal streaming of copyrighted content, extending felony status to such conduct. While it does not bring with it the same controversial issues as S. 968, these provisions do represent an attempt to address the constantly-changing nature of technology, such as the emergence of “cloud” computing, and its utility in assisting infringement of copyrights.

Attempts to legislate in the arena of intellectual property are therefore significantly increasing as 2011 progresses. Both bills come on the heels of at least two other major attempts to introduce legislation centered around intellectual property issues – one a controversial attempt to exert further control over the Internet, known as Cybersecurity and Internet Freedom Act, and a renewed attempt to reform US patent law. With the addition of S. 968 and S. 978, there is no doubt that intellectual property issues are firmly in focus for the US legislature.

What Does Explosion of Social Networking and M-Commerce Mean for Protection of Intellectual Property Rights?

February 24th, 2011 by spyros lazaris

Online and mobile distribution of content is rapidly increasing, and mobile commerce sales are exploding – and for companies in the age of “smart” telephones and social networking sites, if they’re not thinking about doing business in the mobile world, they should be. Yet they must also be vigilant when taking advantage of these opportunities, to positively promote brands and ensure protection of valuable intellectual property rights.

As more companies distribute content using social networking sites and allow customers to use applications on mobile platforms, the need for brand support and IP protection has never been greater. Websites for social networking are ubiquitous, as are computers and mobile devices for accessing them – and they provide infinite opportunities for people to connect and express themselves, and for businesses to engage fans with lively content.

M-commerce uses mobile platforms to connect buyers and sellers in real-time and often in-store, and like social networking, offers incredible capabilities to connect with fans and customers. M-commerce has powerful potential to help companies establish and elevate brands, communicate a message, and solidify a reputation globally.  Mobile devices used by consumers are valuable tools for businesses – to distribute content via applications, encourage sales and interaction, and inform and enable purchasing decisions by providing, for example, bar code scanners, guides, product locators, and mobile payment solutions.

Social networking and m-commerce therefore offer unbounded possibilities for recognition and promotion of both brands and trademarks. However, this carries significant risks that must be carefully managed, as the proliferation of both social networking sites and web-enabled devices for conducting m-commerce has created a global breeding ground for intellectual property violation and brand value problems.

One concern is usernames – brand and trademark owners must proactively ensure that usernames related to or incorporating a brand or trademark are reserved for them. Usernames take on the role of brand identifiers, similar to domain names, except that the worlds of social networking and mobile commerce do not provide a uniform dispute mechanism for misappropriated brands or trademarks in usernames. Misappropriation complaints in the domain name context are handled through the relatively straightforward procedures of Internet Corporation for Assigned Names and Numbers – but not so with social networking sites or m-commerce. While it may be possible to successfully recover a username, there is by no means a uniform mechanism for doing so.

Similarly, brand and trademark owners must be watchful against trademark infringement and dilution, and take steps to make sure any negative or inappropriate references are minimized to prevent damage.  Companies must be alert for instances where a trademark is being used inappropriately, and be attentive to content and comments distributed by users of social networking sites or re-distributed by users of mobile commerce applications through social networking integration that contain information that may be harmful.

Social network sites and m-commerce offer unprecedented capacity to increase brand value and recognition, raise the value of trademark rights to distinguish products or services from others, and nearly limitless opportunities to connect with customers. But huge challenges confront owners of brands and trademarks, who must protect their investment by being constantly alert as the ability to engage with customers changes. Owners must make constant vigilance a priority while keeping customers and fans engaged in a positive way, as it can easily become difficult to deal with and minimize negative and damaging information distributed about a brand or trademark using the many tools now available.

New International IP Treaty on the Horizon as Final Draft of Anti-Counterfeiting Trade Agreement Released

November 22nd, 2010 by spyros lazaris

Last week, the parties negotiating the multi-lateral Anti-Counterfeiting Trade Agreement, or more commonly known as ACTA, finalized their draft document in what has been a long, tedious, and often controversial process. ACTA began in October 2007 in a combined international attempt to address counterfeiting and piracy of goods. If ratified and enacted into law, ACTA may have profound global implications on international copyright and trademark issues.

As a product of negotiations between countries and involving various other governmental and non-governmental organizations, ACTA becomes part of a growing body of international intellectual property treaties. The agreement, however, has a number of nuances that make it exceptional among these treaties, and includes several notable provisions that may conflict with existing laws in many jurisdictions. Scholars and commentators are just beginning to weigh in, and now that the final text has been released, expect to see extensive debate on its implications.

One aspect of ACTA that makes it exceptional is that it was negotiated outside the framework of existing and accepted international intellectual property protocols, notably WIPO and the WTO’s 1994 TRIPS agreement. Initially, the United States, the European Union, Switzerland, and Japan announced that they would begin negotiating what would become ACTA, and were soon joined by a number of other countries. The parties clearly acknowledge and recognize the role of such international protocols and existing intellectual property agreements – yet conducting their negotiations outside of traditional bodies such as WIPO and TRIPS means that they need not listen to the views or voices of anyone outside of their negotiating circle.

ACTA’s stated objective is to strengthen existing intellectual property enforcement. The text of the final draft reveals a strong slant in favor of IP rights holders, which is not unexpected in view of the countries invited to participate. With provisions strengthening civil enforcement, enhancing damages, and increasing border vigilance of intellectual property infringement, ACTA clearly intends to tighten the global framework for protecting the rights of IP owners.

One example of this is an entire section entitled “Criminal Enforcement” which explicitly mandates that parties provide for criminal penalties for intellectual property rights violations. While criminal liability already exists in many countries, one persistent problem is uneven and inconsistent international enforcement. ACTA appears to elevate priority for criminal enforcement of intellectual property rights violations with some broad and sweeping provisions.

One such provision explicitly requires parties to provide criminal penalties and procedures for willful trademark counterfeiting or copyright or related rights piracy on a commercial scale – which means, broadly, acts carried out as commercial activities for direct or indirect economic or commercial advantage.  Other specific examples of where criminal procedures and penalties apply include willful importation and domestic use of labels or packaging using an unauthorized trademark, and unauthorized copying of cinematographic works from a performance in a movie theater. Penalties are specifically meant to include imprisonment and heavy fines.

The language of ACTA also invites questions of whether information privacy is being adequately considered. For example, ACTA includes an entire section acknowledging how quickly and easily intellectual property rights infringement can occur in the digital age. The agreement’s section on Enforcement in the Digital Environment empowers parties to order an online service provider to disclose information sufficient to identify a subscriber whose account was allegedly used for infringement. ACTA also includes detail on how parties should cooperate internationally, encouraging cross-border information sharing and coordination of criminal and border enforcement of violations. Yet another issue with ACTA is the mechanism for domestic ratification – in the United States, for example, it is possible that ACTA may be ratified by executive action rather than by the legislature, circumventing any public debate about the implications of its provisions.

ACTA seeks to enhance protections available to IP rights holders to address increasing counterfeiting and piracy around the globe, noting that effective enforcement of intellectual property rights is critical to sustaining and promoting global economic growth. It remains to be determined, however, whether the real effect of ACTA will simply be to enable an erosion of privacy protections and an increase in criminal penalties without any actual impact on reducing global IP violations.



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