ACTA Signature Hopefully in Near Future; Panel Discusses Benefits to Practitioners

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The Anti-Counterfeiting Trade Agreement will be open for signature in the near future and the U.S. government is currently working with the other ACTA-party governments to find the most appropriate time to get together and finish the proceedings, according to Stanford K. McCoy, assistant U.S. trade representative for intellectual property and innovation

McCoy, who participated in an April 7 panel discussion titled “ACTA: What Will It Mean For the IP Practitioner?” at the ABA's 26th Annual Intellectual Property Law Conference, said that many of the comments the Office of the U.S. Trade Representative has received on the final text say that the agreement is “more or less fine in principle, but that the administration needs to clarify certain aspects regarding the signing of the agreement.” McCoy also said that ACTA will “create a first of a kind trading partnership” that will help to provide the legal and regulatory infrastructure that American companies with foreign interests can use to be innovative, creative, and profitable in the global marketplace.

According to McCoy, countries like China and India look to “climb the value chain in their economies,” they are increasingly realizing the importance of export strategies and protecting their innovations, so time will tell as to how involved they will become in trade agreements and treaties that aim to protect intellectual property.

Another panel member, Philip Barengolts of Pattishall, McAuliffe, Newbury, Hillard & Geraldson, Chicago, said that he would love to have China, India, and other actors involved in multi-lateral trade agreements, but he and Matthew Schruers, vice president of law and policy at the Computer and Communications Industry Association, Washington, D.C., said that they did not think it will happen any time soon.

ACTA Text Finalized, Awaiting Ratification.

ACTA consists of six chapters, including ones on international cooperation and institutional arrangements. The formal negotiations on the agreement began in 2008 under the Bush administration.

The proponents of ACTA aim to establish a comprehensive international framework for combatting IP rights infringement, in particular the proliferation of counterfeiting and piracy, which are seen to undermine legitimate trade and the sustainable development of the world economy. The agreement includes provisions on civil, criminal, border, and digital environment enforcement, as well as provisions to assist the participating parties in their enforcement efforts and for the establishment of best practices for effective IP rights enforcement, according to the Office of the U.S. Trade Representative.

In addition to the United States--represented by the USTR's office--ACTA participants included Australia, Canada, the European Union and its member states, Japan, Mexico, Morocco, New Zealand, Singapore, South Korea, and Switzerland.

Hailed by some (81 PTCJ 105, 11/26/10), others have worried about the constitutionality of the ACTA process (81 PTCJ 72, 11/19/10).

The USTR accepted final comments on the ACTA text in February (81 PTCJ 524, 2/25/11) and on March 31, Michitaka Nakatomi, president of the Japan External Trade Organization, an arm of the Ministry of Economy, Trade and Industry, said at a panel discussion in Paris that ACTA should eventually be used as a model to establish international rules on protecting intellectual property within the World Trade Organization framework (81 PTCJ 760, 4/8/11).

How ACTA Will Impact IP Practitioners.

At the ABA conference panel, Barengolts said that ACTA will not effect US-based trademark practitioners: “Here in the U.S., nothing will change. The practice will continue as is.”

However, he said that foreign companies and U.S.-based companies with interests overseas will be impacted in a positive way: ACTA will offer a “floor” for trademark owners to obtain enforcement in countries where it has become more important. Thus, he said, “if you have foreign clients, this will help you.”

Schruers seemed to share Barengolts's sentiment, adding that most of the countries party to ACTA already have strong IP laws. He said that much of the controversy surrounding ACTA was around the digital copyright issues, specifically concerns about damages in general and secondary liability. Most countries were concerned about the idea of selectively exporting certain U.S. laws that would lead to greater liability for companies overseas that wouldn't already have the protection at home.

Stevan D. Mitchell of the Entertainment Software Association, Washington, D.C., said that ACTA is not meant to be a static agreement and he hopes that each year, the parties will meet, find ways to incorporate best practices, encourage participation by new parties as those parties recognize the value of “signing on to the highest levels of enforcement and enforcement cooperation.” He added that from the ESA's perspective ACTA is “all a positive” from a substantive and process standpoint.

ACTA to Help Foster Innovation?

When asked whether they think, as it stands now, ACTA will help foster innovation and creativity, the panelists gave a mixed reaction.

Schruers said that he did not think ACTA will be as effective as other policies the United States could be pursuing. Paralleling Schruers's feelings, Barengolts said that, personally, he did not think that if the agreement in and of itself would help foster innovation.

McCoy seemed more optimistic, stating that ACTA will help foster copyright protections of American exports. Mitchell agreed, stating that the entertainment software industry is happy to see that ACTA will help provide for less creativity and innovation amongst pirates. He said that there is an entire underground and illegal industry of pirates constantly creating circumvention devices that are designed to bypass gaming consoles which sell for a lot of money themselves.

The panel was moderated by Michele J. Woods, the Copyright Office's acting associate register for policy and international affairs.

By Nathan Pollard