US Rightsholders Seek Narrower Scope Of ACTA, Clarity On Trademark Infringement Vs. Counterfeiting

Many of the 11 negotiating partners of the Anti-Counterfeiting Trade Agreement (ACTA) for years have underlined that the new anti-counterfeiting and anti-piracy agreement will not change their national laws, with the United States and the European Union especially firm on this point. Yet the Washington, DC-based Intellectual Property Owners’ Association (IPO) in a recent letter to the US Trade Representative stated concern that ACTA “potentially change(s) United States law by transforming what are the commonly occurring non-counterfeit-types of civil action infringements into activity that is to be punished under federal criminal law.”

The IPO letter is available here.

Existing US law clearly distinguishes between trademark infringement and counterfeiting, the IPO letter said, with only the latter being sanctioned by criminal law. But the April ACTA draft, if unchanged, would unwittingly broaden “the scope of the seizure power of Customs and Border Patrol forces to encompass civil action trademark infringement and raising the specter of potential abuse in many countries around the globe.” IPO also recommended patents be left out of the agreement.

Another concern and change to US law raised with USTR by the IPO is the potential criminalisation of keywords used as metadata on the internet in those cases where they were confusingly similar to a trademark. The IPO recommended to tailor ACTA definitions of IP narrower according to the stated purpose of anti-counterfeiting, and in general “to ensure that the scope of the act is appropriately limited to its stated purpose of addressing the limited, though important, subset of infringement known as ‘counterfeiting’.

It is unclear whether these concerns were addressed in the latest round of ACTA talks held last week in Lucerne, Switzerland, as the draft text was not released again after the meeting.

The question of the scope of ACTA has been the topic of numerous ACTA discussions in the various jurisdictions. The European Parliament, for example, called on the Commission to limit ACTA negotiations “to the existing European IPR enforcement system against counterfeiting.”

How the Parliament will react to the decision of ACTA negotiators to not publish the most recent text is an open question as the Parliament had asked for “public and parliamentary access” to the document. Christian Engstroem, member of the European Parliament for the Swedish Pirate Party/Green Party Group, said the Commission would act against their mandate if they continue negotiations in secret.