draft

Based on the ACTA August text, note a newer text has been published in October.

The EU does not want statutory limitations on civil measures in ACTA. Well known EU statutory limitations are the ISP safe harbors, and the EU home, photo and social institution copies. ACTA may outlaw these limitations. And limitations on injunctions in ACTA fall short of the limitations in Directive 2004/48/EC.

Other statutory limitations can be found in: Chapter III of Directive 98/44/EC on the legal protection of biotechnological inventions, Articles 9, 9a, 21, 22 Proposal for a COUNCIL REGULATION on the European Union patent, REGULATION (EC) No 816/2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems, Euratom treaty chapter 2 DISSEMINATION OF INFORMATION.

Dutch law: Rijksoctrooiwet 1995 art 57 - 60. Other national laws may contain similar rules. See also KEI

Knowledge Ecology International has posted the latest leaked version of the Anti-Counterfeiting Trade Agreement (ACTA) text, the Washington DC August 2010 text.

The EU does not want domestic law exceptions on civil measures in ACTA art. 2.x.4 (page 7), nor does it want statutory limitations on injunctions in art. 2.X.1 (page 8).

Knowledge Ecology International has stressed the importance of liability rules. Under such rules, rights owners can not exercise injunctions against infringements of intellectual property rights, but only are entitled to compensation. This is important in cases of government use, public health, interoperability, the fight against climate change, etc.

In April 2010 Knowledge Ecology International published KEI Research Note 2010:1 Comments on ACTA Provisions on Injunctions and Damages. In the part on injunctions, KEI reports that both the US and the EU proposed texts require ACTA members to give judicial authorities the authority to grant injunctions to stop an infringement, without exception. See here for an update

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004)

This directive provides for injunctions, and in art 12 for exeptions: "if that person acted unintentionally and without negligence, if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory." See below for details.

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society

Article 8 provides injunctions, limitations are formulated in a general way: "Member States shall provide appropriate sanctions and remedies" and "The sanctions thus provided for shall be effective, proportionate and dissuasive." See below for details.

ACTA Article 2.X: General Obligations with Respect to Enforcement contains some general remarks regarding the procedures. Like: "Procedures adopted, maintained, or applied to implement this Chapter shall be fair and equitable." The text still is bracketed. The EU proposed: "In respect of measures, procedures and remedies adopted, maintained or applied to implement this Chapter, each Party shall ensure the need for proportionality in relation to the infringement."

This proposal resembles Directive 2001/29/EC, but falls short of Directive 2004/48/EC.

Home, Photo and Social Institution copies

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society

Art 5 contains a long list of exceptions and limitations, Member States may provide for. Art 5.5 says:

• "The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder."

This suggests that Art 5 is based on Trips Article 13 Limitations and Exceptions:

• "Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder."

And this seems justified for instance for Art 5.3

• "(d) quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author's name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose;"

In three cases, the exception requires fair compensation.

• 5.2 "(a) in respect of reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects, with the exception of sheet music, provided that the rightholders receive fair compensation;"

  5.2 "(b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned;"

  5.2 "(e) in respect of reproductions of broadcasts made by social institutions pursuing non-commercial purposes, such as hospitals or prisons, on condition that the rightholders receive fair compensation."

These cases seem to go beyond TRIPS art 13. Since in these cases fair compensation is needed, these cases seem based on TRIPS 44.2:

• "Notwithstanding the other provisions of this Part and provided that the provisions of Part II specifically addressing use by governments, or by third parties authorized by a government, without the authorization of the right holder are complied with, Members may limit the remedies available against such use to payment of remuneration in accordance with subparagraph (h) of Article 31. In other cases, the remedies under this Part shall apply or, where these remedies are inconsistent with a Member's law, declaratory judgments and adequate compensation shall be available."

The EU home, photo and social institution copies are allowed under TRIPS 44.2, but not under ACTA. ACTA will also rule out a solution for orphaned copyrighted works.

EU legislation details

Directive 2004/48/EC

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004)

This directive provides for injunctions, and in art 12 for exeptions: "if that person acted unintentionally and without negligence, if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory."

• "Article 9 Provisional and precautionary measures 1.Member States shall ensure that the judicial authorities may, at the request of the applicant:

  (a) issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder; an interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right; injunctions against intermediaries whose services are used by a third party to infringe a copyright or a related right are covered by Directive 2001/29/EC;"

  "Article 11 Injunctions Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member States shall also ensure that rightholders 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, without prejudice to Article 8(3) of Directive 2001/29/EC. Article 12 Alternative measures

  Member States may provide that, in appropriate cases and at the request of the person liable to be subject to the measures provided for in this section, the competent judicial authorities may order pecuniary compensation to be paid to the injured party instead of applying the measures provided for in this section if that person acted unintentionally and without negligence, if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory."

Consideration 23 states that the conditions and procedures relating to such injunctions should be left to the national law of the Member States. Consideration 25 explains pecuniary compensation as an alternative.

• "(23) Without prejudice to any other measures, procedures and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary whose services are being used by a third party to infringe the rightholder's industrial property right. The conditions and procedures relating to such injunctions should be left to the national law of the Member States. As far as infringements of copyright and related rights are concerned, a comprehensive level of harmonisation is already provided for in Directive 2001/29/EC. Article 8(3) of Directive 2001/29/EC should therefore not be affected by this Directive."

  "(25) Where an infringement is committed unintentionally and without negligence and where the corrective measures or injunctions provided for by this Directive would be disproportionate, Member States should have the option of providing for the possibility, in appropriate cases, of pecuniary compensation being awarded to the injured party as an alternative measure. However, where the commercial use of counterfeit goods or the supply of services would constitute an infringement of law other than intellectual property law or would be likely to harm consumers, such use or supply should remain prohibited."

Directive 2001/29/EC

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society

Article 8 provides injunctions, limitations are formulated in a general way: "Member States shall provide appropriate sanctions and remedies" and "The sanctions thus provided for shall be effective, proportionate and dissuasive."

• "Article 8 Sanctions and remedies

• Member States shall provide appropriate sanctions and remedies in respect of infringements of the rights and obligations set out in this Directive and shall take all the measures necessary to ensure that those sanctions and remedies are applied. The sanctions thus provided for shall be effective, proportionate and dissuasive.
• Each Member State shall take the measures necessary to ensure that rightholders whose interests are affected by an infringing activity carried out on its territory can bring an action for damages and/or apply for an injunction and, where appropriate, for the seizure of infringing material as well as of devices, products or components referred to in Article 6(2).

• Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right."

Consideration 59 makes clear Member States are free to set conditions and modalities.

• "(59) In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party's infringement of a protected work or other subject-matter in a network. This possibility should be available even where the acts carried out by the intermediary are exempted under Article 5. The conditions and modalities relating to such injunctions should be left to the national law of the Member States."

Euratom http://eur-lex.europa.eu/en/treaties/dat/12006A/12006A.htm

Directive 98/44/EC on the legal protection of biotechnological inventions http://eur-lex.europa.eu/smartapi/cgi/sga_doc?smartapi!celexapi!prod!CELEXnumdoc&lg=en&numdoc=31998L0044&

Proposal for a COUNCIL REGULATION on the European Union patent http://register.consilium.europa.eu/pdf/en/09/st16/st16113-ad01.en09.pdf

Rijksoctrooiwet http://www.st-ab.nl/wetten/1005_Rijksoctrooiwet_1995.htm