TransPacific Partnership (TPP) Negotiating Parties - TPP IP Chapter-Leaked Draft- Section H: Enforcement lyrics

{ENFORCEMENT} {Section H: Enforcement} Article QQ.H.1: {General Enforcement / General Obligations Relating to the Enforcement of Law [187] of Intellectual Property Rights} 1. Each Party shall ensure that enforcement procedures as specified in this section, are available under its law [CL/SG/CA/BN/PE/MX/VN propose: and its legal system] so as to permit effective action against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to future infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. 2. Each Party shall ensure that its procedures concerning the enforcement of intellectual property rights shall be fair and equitable. These procedures shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. [CL/VN/PE/AU/MY/BN/NZ/SG/MX/CA propose: 3. This Section does not create any obligation: (a) to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of each Party to enforce their law in general, or (b) with respect to the distribution of resources as between the enforcement of intellectual property rights and the enforcement of law in general.] [US/SG propose188; BN/VN/PE/MY/NZ/MX/CA oppose: 4. The Parties understand that the distribution of enforcement resources shall not excuse that Party from complying with this Section189.]Article QQ.H.2: {Presumptions}--FOOTNOTES-- 187 [CL propose: For greater certainty, law may include enforcement procedures established under Parties legal systems.] 188 Negotiators' Note: AU/CL can support if there is emerging consensus on this issue. 189 Negotiators' Note: The reference to Section is intended to include enforcement-related provisions throughout the Chapter.66---PAGE BREAK---1. In civil, criminal, and if applicable, administrative proceedings involving copyright or related rights, each Party shall provide: (a) for a presumption [US/CA propose: 190] that, in the absence of proof to the contrary, the person whose name is indicated in the usual manner [CL/VN/BN/AU/MX/CA/SG/PE/NZ propose: 191 ] as the author, performer, producer [CA oppose: , or publisher] of the work, performance, or phonogram [CA propose: , or as applicable, the publisher] is the designated right holder in such work, performance, or phonogram; and (b) for a presumption that, in the absence of proof to the contrary, the copyright or related right subsists in such subject matter. [US/BN/MY/NZ/SG/CA propose; 2 AU/PE/CL/VN/MX oppose192: In civil, [BN/MY oppose: administrative,] and criminal proceedings involving trademarks, each Party shall provide for a rebu*table presumption that a registered trademark is valid. [BN/SG/MY oppose193: In civil or administrative patent enforcement proceedings, each Party shall provide for a rebu*table presumption that each claim in a patent substantively examined and granted by the competent authority satisfies the applicable criteria of patentability in the territory of the Party 194].]Article QQ.H.3: {Enforcement Practices With Respect to Intellectual Property Rights} 1. Each Party shall provide that final judicial decisions and administrative rulings of general application pertaining to the enforcement of intellectual property rights shall [SG/BN/MY/CA propose: preferably] be in writing and [MY oppose: shall] [MY/CA propose: may] state [VN/SG/BN/MY/CA oppose: any relevant findings of fact and] the reasoning or the legal basis on which the decisions and rulings are based. Each--FOOTNOTES-- 190 [US/CA/MY propose: For greater certainty, a Party may implement this Article on the basis of sworn statements or documents having evidentiary value, such as statutory declarations. A Party may also provide that such presumptions are rebu*table presumptions that may be rebu*ted by evidence to the contrary.] 191 Each Party may establish the means by which it shall determine what constitutes the "usual manner" for a particular physical support. 192 Negotiators' Note: JP is considering this provision. 193 Negotiators' Note: JP is considering this provision. 194 Negotiators' Note: AU/MX/US/PE will consider options to address concerns intersessionally and will involve the wider group.67---PAGE BREAK---Party shall also provide that such decisions and rulings shall be published [195] or, where publication is not practicable, otherwise made available to the public, in a national language in such a manner as to enable interested persons and Parties to become acquainted with them. 2. Each Party recognizes the importance of collecting and an*lyzing statistical data and other relevant information concerning intellectual property rights infringements as well as collecting information on best practices to prevent and combat infringements. 3. Each Party [US/AU/PE/NZ/CL/MX/CA/JP/SG/BN/VN propose: shall] [MY propose: may] publish or otherwise make available to the public information on its efforts to provide effective enforcement of intellectual property rights in its civil, administrative and criminal systems, such as statistical information that the Party may collect for such purposes. Article QQ.H.4: {Civil Procedures and Remedies / Civil and Administrative Procedures and Remedies} 1. Each Party shall make available to right holders 196 civil judicial procedures concerning the enforcement of any intellectual property right 197 covered in this Chapter. 2 Each Party shall provide [198] that in civil judicial proceedings its judicial authorities have the authority at least to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered [PE oppose: because of an infringement of that person's intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.] [SG/PE/AU/NZ/MY/CL/CA/MX/BN/VN oppose:199] --FOOTNOTES-- 195 [US: A Party may satisfy the requirement for publication by making the decision or ruling available to the public on the Internet.] 196 For the purposes of this Article, the term "right holder" shall include those authorized licensees, federations and a**ociations that have the legal standing and authority to a**ert such rights. The term "authorized licensee" shall include the exclusive licensee of any one or more of the exclusive intellectual property rights encompa**ed in a given intellectual property. 197 Negotiators' Note: AU/US/JP would like to consider this proposal in tandem with the definition of intellectual property rights in this Chapter. 198 [AU/NZ/MY/CA/JP/SG propose: A Party may also provide that the right holder may not be entitled to either of the remedies set out in 2 and 2bis in the case of a finding of non-use of a trademark] [JP/AU/SG/CA/MY propose: it is understood that there is no obligation for a Party to provide for the possibility of the remedies in 2 and 2bis to be ordered in parallel.] 199 [US propose: In the case of patent infringement, damages adequate to compensate for the infringement shall not be less than a reasonable royalty.] [Negotiators' note: JP can go along with consensus.] 68---PAGE BREAK--- 2bis. At least in cases of copyright or related rights infringement and trademark counterfeiting, each Party shall provide that, in civil judicial proceedings, its judicial authorities have the authority to order the infringer to pay the right holder the infringer's profits that are attributable to the infringement.[200] 2ter. In determining the amount of damages under paragraph 2, its judicial authorities shall have the authority to consider, inter alia, any legitimate measure of value the right holder submits, which may include lost profits, the value of the infringed goods or services measured by the market price, or the suggested retail price. [US/CA/BN/AU/JP/MX/NZ/PE/VN propose: 3.201 Each Party shall provide that its judicial authorities have the authority to order injunctive relief that conforms to the provisions of Article 44 of the TRIPS Agreement, inter alia, to prevent goods that involve the infringement of an intellectual property right from entering into the channels of commerce [VN propose: in that Party's Jurisdiction].]202 [CL/PE/BN//VN propose;203 US/NZ oppose: 4. Each Party shall ensure that its judicial authorities shall have the authority to order a party at whose request measures were taken and who has abused enforcement procedures to provide the party wrongfully enjoined or restrained adequate compensation for the injury suffered because of such abuse.]204Article QQ.H.4.X (1) In civil judicial proceedings, with respect to infringement of copyright or related rights protecting works, phonograms, and performances, each Party shall establish or maintain a system that provides for one or more of the following: (a) pre-established damages, which shall be available upon the election of the right holder; or (b) additional damages205. --FOOTNOTES-- 200 [CA propose: A Party may exclude from the application of this Article cases of Copyright or related rights infringement where an infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity or where an infringer is a non-profit entity.][JP propose: A Party may presume those profits to be the amount of damages referred to in the preceding paragraph.] 201 Negotiators' Note: AU supports this paragraph ad referendum. 202 Negotiators' Note: CL/MY/SG will revert back intersessionally. 203 Negotiators' Note: JP is considering this provision. 204 Negotiators' Note: MY support the principle but are still considering the need for this proposal in the context of Article 48 of TRIPS. SG/MX/VN/AU/CA can go along with the consensus. 205 For greater certainty, additional damages may include exemplary or punitive damages.69---PAGE BREAK---(2)206 In civil judicial proceedings, with respect to trademark counterfeiting, each Party [US propose: shall] [NZ/MY/BN/JP propose: may] also establish or maintain a system that provides for one or more of the following: (a) pre-established damages, which shall be available upon the election of the right holder; or (b) additional damages. (3) Pre-established damages shall be set out in an amount that would be sufficient to compensate the right holder for the harm caused by the infingement [VN oppose: , and with a view to deterring future infringements]. (4) In awarding additional damages, judicial authorities shall have the authority to award such additional damages as they consider appropriate, having regard to all relevant matters, including the [seriousness / extent / blatancy of the infringing conduct]207 and the need to deter similar infringements in the future.ARTICLE QQ.H.4.Y [US propose; SG/PE/VN/CA/CL/NZ/MY/BN/AU/MX/JP oppose: 6. In civil judicial proceedings concerning patent infringement, each Party shall provide that its judicial authorities shall have the authority to increase damages to an amount that is up to three times the amount of the injury found or a**essed.208 ] 7. Each Party shall provide that its judicial authorities, [PE oppose: where appropriate,] [CA propose:209] [PE propose: except in exceptional circumstances] have the authority to order, at the conclusion of civil judicial proceedings concerning infringement of at least copyright or related rights, [CA/MX/US propose: patents and] [CA/MX/US oppose: or] trademarks, that the prevailing party be awarded payment by the losing party of court costs or fees and appropriate attorney's fees, or any other expenses as provided for under that Party's law. 9210. In civil judicial proceedings concerning copyright or related rights infringement--FOOTNOTES-- 206 Negotiator's Note: AU is still considering this paragaph. 207 Negotiators' Note: Parties are considering the drafting choice of the word that represent the concept of seriousness. 208 No Party shall be required to apply this paragraph to actions for infringement against a Party or a third party acting with the authorization or consent of a Party. 209 [CA propose: For the purposes of this Article, where appropriate shall not be limited to exceptional cases.] 210 Negotiators note: NZ share view of the article but would rather see it placed some other place; MX is considering this issue in light of Article QQ.H.4.13; JP proposes to move paragraph. 9 to Article QQ.H.5. Otherwise, JP will support VN proposal.70---PAGE BREAK---and trademark counterfeiting, each Party shall provide that its judicial authorities shall have the authority [VN propose: , at the right holder's request,] to order [VN propose: as provisional measures] the seizure or other taking into custody of suspected infringing goods, materials and implements relevant to the infringement, and, at least for trademark counterfeiting, documentary evidence relevant to the infringement. 10211. Each Party shall provide that in civil judicial proceedings: (a) At least with respect to pirated copyright goods and counterfeit trademark goods, each Party shall provide that, in civil judicial proceedings, at the right holder's request, its judicial authorities have the authority to order that such infringing goods be [VN propose: disposed of outside the channel of commerce or] destroyed, except in exceptional circumstances, without compensation of any sort. (b) Each Party shall further provide that its judicial authorities have the authority to order that materials and implements that have been used in the manufacture or creation of such infringing goods, be, without undue 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 infringements. (c) in regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional circumstances, to permit the release of goods into the channels of commerce. 11212. Without prejudice to its law governing privilege, the protection of confidentiality of information sources, or the processing of personal data, each Party shall provide that, in civil judicial proceedings concerning the enforcement of intellectual property rights, its judicial authorities have the authority, upon a justified request [VN: propose213] of the right holder, to order the infringer or, in the alternative, the alleged infringer, to provide to the right holder or to the judicial authorities, at least for the purpose of collecting evidence, relevant information as provided for in its applicable laws and regulations that the infringer or alleged infringer possesses or controls. Such information may include information regarding any person involved in any aspect of the infringement or alleged infringement and regarding the means of production or the channels of distribution of the infringing or allegedly infringing goods or services, including the identification of third persons alleged to be involved--FOOTNOTES-- 211 Negotiator's Note: MX supports this in principle but needs to reflect on this pending discussions on paragraph QQ.H.4.13. 212 Negotiator's Note: MX is still considering this proposal. 213 VN propose: A request for an order under this paragraph may be considered as unjustified in case such order would be out of proportion to the seriousness of the infringement.71---PAGE BREAK---in the production and distribution of such goods or services and of their channels of distribution. 12. Each Party shall provide that in relation to a civil judicial proceeding concerning the enforcement of intellectual property rights, its judicial or other authorities have the authority to impose sanctions on a party, counsel, experts, or other persons subject to the court's jurisdiction, for violation of judicial orders concerning the protection of confidential information produced or exchanged in connection with such a proceeding. 214 13. To the extent that any civil remedy [VN propose; MX oppose:215 ]can be ordered as a result of administrative procedures on the merits of a case, each Party shall provide that such procedures conform to principles equivalent in substance to those set out in this Article (civil and administrative proceedings) 14. In the event that a Party's judicial or other authorities appoint technical or other experts in civil proceedings concerning the enforcement of intellectual property rights and require that the parties to the litigation bear the costs of such experts, that Party should seek to ensure that such costs are reasonable and related appropriately, inter alia, to the quantity and nature of work to be performed and do not unreasonably deter recourse to such proceedings. [US/AU/SG propose; BN/VN/MX/JP oppose216: 15. In civil judicial proceedings concerning the acts described in Article 4.[9] (TPMs) and Article 4.[10] (RMI), each Party shall provide that its judicial authorities shall, at the least, have the authoriy to: (a) impose provisional measures, including seizure or other taking into custody of devices and products suspected of being involved in the prohibited activity; (b) [US/SG propose; NZ/AU/MY oppose: provide an opportunity for the right holder to elect between actual damages it suffered (plus any profits attributable to the prohibited activity not taken into account in computing those damages) or pre-established damages;] [AU/NZ/PE propose: order damages of the type available for the infringement of copyright] (c) order [NZ propose: , where appropriate,] payment to the prevailing party at the conclusion of civil judicial proceedings of court costs and fees, and --FOOTNOTES-- 214 Negotiators' Note: PE/MX are considering the need for this proposal. 215 [For greater certainty, civil remedies do not include administrative measures, decisions or any other actions taken by administrative authorities.] 216 Negotiators Note: PE/MY/NZ/CL/CA reserve their positions pending resolution of related provisions regarding TPM and RMI.72---PAGE BREAK--- appropriate attorney's fees, by the party engaged in the prohibited conduct; and (d) order the destruction of devices and products found to be involved in the prohibited activity. [US/AU/SG/NZ/MY/CL/CA propose [US propose: No Party shall make damages available under this paragraph] [AU/SG/NZ/MY/CL/CA propose: A Party may provide that damages shall not be available] against a [MY oppose: nonprofit] library, archives, educational institution, [CA propose: museum, or any other nonprofit entity as determined by a Party's law] [CA oppose: or public noncommercial broadcasting entity] [MY oppose: that sustains the burden of proving that such entity was not aware and had no reason to believe that its acts constituted a prohibited activity].]]217 [NZ/CA/SG/CL/MY propose: 16. Each Party may adopt or maintain measures to discourage vexatious or unreasonable proceedings, including those involving pharmaceutical products that are subject to marketing, regulatory or sanitary approval.]Article QQ.H.5: {Provisional Measures} 1. Each Party's authorities shall act on requests for relief inaudita altera parte expeditiously in accordance with the Party's judicial rules. 2. Each Party shall provide that its judicial authorities have the authority to require the applicant, with respect to provisional measures, to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant's right is being infringed or that such infringement is imminent, [VN//PE: and that any delay in the issuance of such measures is likely to cause irreparable harm to the right holders, or there is a demonstrable risk of evidence being destroyed,] and to order the applicant to provide a security or equivalent a**urance set at a level sufficient to protect the defendant and to prevent abuse. Such security or equivalent a**urance shall not unreasonably deter recourse to such procedures.Article QQ.H.6: {Special Requirements Related to Border Enforcement218 / Special Requirements related to Border Measures} [219]--FOOTNOTES-- 217 Negotiator's Note: This will be discussed in relation to provisions regarding TPM and RMI. 218 Negotiators Note: The scope of border measures in this section will be confined to counterfeit trademark goods, pirated copyright goods. The US proposal for inclusion of, confusingly similar trademark goods is still under negotiation and Parties have different views on this proposal. 219 [CA propose: It is understood that there shall be no obligation to apply the procedures set forth in this Article to goods put on the market in another country by or with the consent of the right holder.]73---PAGE BREAK--- 1. Each Party shall provide that any right holder initiating procedures for its competent authorities to suspend release of suspected counterfeit [SG/BN/MY/VN/CA oppose: or confusingly similar] trademark goods, or pirated copyright goods220 into free circulation is required to provide adequate evidence to satisfy the competent authorities that, under the law{s} of the [CA/NZ/MX/US/PE/AU oppose: country of importation] [CA/NZ/MX/US/PE/AU221 propose: Party providing the procedures], there is prima facie an infringement of the right holder's intellectual property right and to supply sufficient information that may reasonably be expected to be within the right holder's knowledge to make the suspected goods 222reasonably recognizable by its competent authorities. The requirement to provide such information shall not unreasonably deter recourse to these procedures. 1bis. Each Party shall provide for applications to suspend the release of, or to detain, any suspect goods 223 [SG/VN oppose: under customs control 224 in its territory.] [SG/VN propose: that are imported into the territory of the Party225] A Party may provide that, at the request of the right holder, an application to suspend the release of, or to detain, suspect goods may apply to selected points of entry [US/CA/JP/MX226 propose; CL/SG/VN oppose: and exit] under customs control.]227228 [US/AU/CA/JP/NZ propose; MX /PE/CL/MY/SG/VN/BN oppose: Each Party shall provide that applications [NZ oppose: shall] remain in force [NZ propose: for the period requested by the right holder but not exceeding five years, or] for a period of not less than one year from the date of application, or the period that the good is protected by copyright or the relevant trademark registration is valid, whichever is shorter.[NZ propose: A Party may provide that its competent authorities have the authority to suspend or invalidate an application when there is due cause.] --FOOTNOTES-- 220 For purposes of Article 14: (a) counterfeit trademark goods means any goods, including packaging, bearing without authorization a trademark that is identical to the trademark validly registered in respect of such goods, or that cannot be distinguished in its essential aspects from such a trademark, and that thereby infringes the rights of the owner of the trademark in quesiton under the law of the country of importation; and (b) pirated copyright goods means any goods that are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and that are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation. 221 Negotiators' Note: AU supports this ad referendum. 222 Negotiators' Note: Need to clean up terminology in H.6 relating to 'goods' and 'merchandise'. 223 Negotiators' Note: MY/CA/SG/AU/VN/BN: suspect goods need to be defined and revert back. 224 Negotiators' Note: CA/MY/AU: Customs controls need to be defined and revert back. 225 [SG propose: the requirement to provide for such application is applicable to the obligation to provide procedures referred to in Article QQ.H.6.1.] 226 Negotiators' Note: AU/PE can support consensus. 227 Negotiators' Note: MY/SG/VN/BN are considering this first clause. 228 Negotiators' Note: Parties are considering the need for a footnote to deal with the scope of this clause. 74---PAGE BREAK--- 2. Each Party shall provide that its competent authorities have the authority to require a right holder initiating procedures to suspend the release of suspected counterfeit [BN/SG/MY/VN/CA oppose: or confusingly similar] trademark goods, or pirated copyright goods, to provide a reasonable security or equivalent a**urance sufficient to protect the defendant and the competent authorities and to prevent abuse. Each Party shall provide that such security or equivalent a**urance shall not unreasonably deter recourse to these procedures. A Party may provide that such security may be in the form of a bond conditioned to hold the defendant harmless from any loss or damage resulting from any suspension of the release of goods in the event the competent authorities determine that the article is not an infringing good. 3. Without prejudice to a Party's laws pertaining to privacy or the confidentiality of information, where its competent authorities have detained or suspended the release of goods that are suspected of being counterfeit or pirated, a Party may provide that its competent authorities have the authority to inform the right holder [CA/VN propose: who has filed a request for a**istance] [MY/CA/BN/PE/VN oppose: promptly] [MY/CA/PE229 /BN/SG/VN propose: within a reasonable period] of the names and addresses of the consignor, exporter, consignee or importer, a description of the merchandise, quantity of the merchandise, and, if known, the country of origin of the merchandise.: Where a Party does not provide such authority to its competent authorities when suspect goods are detained or suspended from release, it shall provide [US/VN propose: , at least in cases of imported goods,] its competent authorities with the authority to provide the foregoing information to the right holder [SG/VN oppose: within 30 days230] [SG/VN propose: within a reasonable period] of the seizure or determination that the goods are counterfeit or pirated, whichever is earlier. [US/PE/AU/SG/MY/CL/CA/BN/JP propose; NZ/VN/MX oppose: 4. Each Party shall provide that its competent authorities may initiate border measures ex officio231 with respect to [AU propose: merchandise that is] imported, [MY/CL/AU/PE/BN oppose: exported,] [CL/AU/PE propose; SG oppose: destined for export,] [AU/MY/SG/CA/BN/CL oppose: or in-transit merchandise,[PE oppose: 232 ]] [PE/SG/MY/CL/CA/BN oppose: or [AU oppose: merchandise] [US propose: entering into or exiting from] [US oppose: in] free trade zones], that is suspected of being --FOOTNOTES-- 229 Negotiators' Note: CA would need to include minor amendments on disclosure. 230 For purposes of this Article, "days" shall mean "business days". 231 For greater certainty, the parties understand that ex officio action does not require a formal complaint from a private party or right holder [MY/BN propose: , provided that they have acquired prima facie evidence that intellectual property rights are being infringed]. 232 For purposes of this Article, in-transit merchandise means goods under "Customs transit" and goods "transhipped," as defined in the International Convention on the Simplification and Harmonization of Customs Procedures (Kyoto Convention). 75---PAGE BREAK--- counterfeit [SG/PE/MY/CA/BN oppose: or confusingly similar] trademark goods, or pirated copyright goods.] 5. Each Party shall adopt or maintain a procedure by which its competent authorities may determine, within a reasonable period of time after the initiation of the procedures described under Article QQ.H.6(1)233 whether the suspect goods infringe an intellectual property right. Where a Party provides administrative procedures for the determination of an infringement, it [VN234 propose: may] [VN oppose: shall] also provide its authorities with the authority to impose administrative penalties, which may include monetary penalties or the seizure of the infringing goods, following a determination that the goods are infringing. 6. Each Party shall provide that its competent authorities have the authority to order the destruction [VN propose: , or disposal outside the channel of commerce,] of goods following a determination that the goods are infringing. In cases where such goods are not destroyed, each Party shall ensure that, except in exceptional circumstances, such goods are disposed of outside the channels of commerce in such a manner as to avoid any harm to the right holder. In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit the release of the goods into the channels of commerce. 7. Where a Party establishes or a**esses, in connection with the procedures described in this section [article], an application fee, storage fee, or destruction fee, such fee shall not be set at an amount that unreasonably deters recourse to these procedures 8. Each Party shall include in the application of this Article goods of a commercial nature sent in small consignments. A Party may exclude from the application of this Article small quantities of goods of a non-commercial nature contained in travellers' personal luggage.235Article QQ.H.7: {Criminal Procedures and Remedies / Criminal Enforcement} 1. Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright or related rights piracy --FOOTNOTES-- 233 Negotiators' Note: US to revisit after the decision on scope of application ex officio. 234 Negotiators' Note: VN can accept "shall" option if the scope of Border control is confined to trademarks counterfeit and copyright pirated goods. 235 For greater certainty, a Party may also exclude from the application of this Article small quantities of goods of a non-commercial nature sent in small consignments. 76---PAGE BREAK--- on a commercial scale. 2. [US/AU/SG/PE propose; CL/VN/MY/NZ/CA/BN/MX oppose: Willful copyright or related rights piracy on a commercial scale includes: (a) significant willful copyright or related rights infringements that have no direct or indirect motivation of financial gain; and (b) willful infringements for purposes of commercial advantage or [AU/SG/PE/JP oppose: private] financial gain.[AU/SG/PE/CA/JP oppose: 236]]Each Party shall treat willful importation [SG/MX/BN/MY/VN oppose: or exportation] of counterfeit trademark goods [VN oppose: or pirated copyright goods] on a commercial scale as unlawful activities subject to criminal penalties. 237 [US propose; AU/BN/MY/NZ/SG/CL/VN/PE/CA/MX/JP oppose: 3. Each Party shall also provide for criminal procedures and penalties to be applied, even absent willful trademark counterfeiting or copyright or related rights piracy, at leastin cases of knowing trafficking in: (a) labels or packaging, of any type or nature, to which a counterfeit trademark 238 has been applied, the use of which is likely to cause confusion, to cause mistake, or to deceive; and (b) counterfeit or illicit labels239 affixed to, enclosing, or accompanying, or --FOOTNOTES-- 236 [US propose; AU/SG/PE/CA/JP oppose: For greater certainty, "financial gain" for purposes of this Article includes the receipt or expectation of anything of value.] 237 [US/CA propose; JP oppose: A Party may comply with this obligation in relation to [JP: importation and] exportation of pirated [JP: copyright] goods through its measures concerning distribution.] [JP alternatively propose: AParty may comply with its obligation relating to importation and exportation of counterfeit trademark goods or pirated copyright goods by providing for distribution, sale or offer for sale of such goods on a commercial scale as unlawful activities subject to criminal penalties.] 238 US: Negotiator's Note: For greater certainty, the definition of "counterfeit trademark goods" in footnote [12] shall be used as context for this Article. 239 US: For purposes of this Article, "illicit label" means a genuine certificate, licensing document, registration card, or similar labeling component:(A) that is used by the copyright owner to verify that a phonogram, a copy of a computer program or literary work, a copy of a motion picture or other audiovisual work, or documentation or packaging for such phonogram or copies is not counterfeit or infringing of any copyright; and(B) that is, without the authorization of the copyright owner— (i) distributed or intended for distribution not in connection with the phonogram or copies to which such labeling component was intended to be affixed by the respective copyright owner; (ii) in connection with a genuine certificate or licensing document, knowingly falsified in order to designate a77---PAGE BREAK---designed to be affixed to, enclose, or accompany the following: (i) a phonogram, (ii) a copy of a computer program or a literary work (iii) a copy of a motion picture or other audiovisual work, (iv) documentation or packaging for such items; and (c) counterfeit documentation or packaging for items of the type described in subparagraph (b).][NZ/AU/BN/MY/US/CA/SG/MX/JP propose; PE/CL/VN oppose: 4. Each Party shall provide for criminal procedures and penalties to be applied in cases of willful importation 240 and domestic use, in the course of trade and on a commercial scale, of labels or packaging 241: (a) to which a mark has been applied without authorization which is identical to, or cannot be distinguished from, a trademark registered in its territory; and (b) which are intended to be used in the course of trade on goods or in relation to services which are identical to goods or services for which such trademark is registered.] [US propose; CA/JP oppose: Each Party shall further ensure that criminal penalties and procedures are applied in cases of knowing trafficking in illicit labels242 affixed, higher number of licensed users or copies than authorized by the copyright owner, unless that certificate or document is used by the copyright owner solely for the purpose of monitoring or tracking the copyright owner's distribution channeland not for the purpose of verifying that a copy or phonogram is noninfringing.--FOOTNOTES-- 240 A Party may comply with its obligation relating to importation of labels or packaging through its measures concerning distribution. 241 A Party may comply with its obligations under this paragraph by providing for criminal procedures a nd penalties to be applied to attempts to commit a trademark offence. 242 US: For purposes of this Article, "illicit label" means a genuine certificate, licensing document, registration card, or similar labeling component:(A) that is used by the copyright owner to verify that a phonogram, a copy of a computer program or literary work, a copy of a motion picture or other audiovisual work, or documentation or packaging for such phonogram or copies is not counterfeit or infringing of any copyright; and (B) that is, without the authorization of the copyright owner— (i) distributed or intended for distribution not in connection with the phonogram or copies to which such labeling component was intended to be affixed by the respective copyright owner; or (ii) in connection with a genuine certificate or licensing document, knowingly falsified in order to designate a higher number of licensed users or copies than authorized by the copyright owner, unless that certificate or document is used by the copyright owner solely for the purpose of monitoring or tracking the copyright owner's distribution channel and not for the purpose of verifying that a copy or phonogram is noninfringing. 78---PAGE BREAK---enclosing, or accompanying, or designed to be affixed to, enclose, or accompany phonograms, copies of computer programs, literary works, motion pictures, or other audiovisual works.] 5. [AU/NZ/SG/MY/ CA/US propose; PE/VN/BN/MX/CL oppose: [US/CA propose: Each] [US/CA oppose: A] Party [SG/NZ/CL oppose: shall] [SG/NZ/CL/JP: may] provide criminal procedures and penalties [US/CA oppose: , in appropriate cases,] for the [US/CA propose: knowing and] unauthorized copying [MY: or recording] [US propose; CA/JP oppose: or transmittal] of [US/CA propose: a [JP propose: first-run] cinematographic work, or any part thereof,] [US/CA oppose: cinematographic works] from a performance in a [CA oppose: motion picture exhibition facility generally open to the public] [CA/JP propose: movie theater].] 6. With respect to the offenses for which this Article requires the Parties to provide for criminal procedures and penalties, Parties shall ensure that criminal liability for aiding and abetting is available under its law. 7. With respect to the offences described in Article QQ.H.7[1]-[4] above, each Party shall provide: (a) penalties that include sentences of imprisonment as well as monetary fines sufficiently high to provide a deterrent to future acts of infringement, consistently with the level of penalties applied for crimes of a corresponding gravity;243 (b) 244that its judicial authorities shall have the authority, when determining penalties, to account for the seriousness of the circumstances, which may include those that involve threats to, or effects on, health or safety;245 (c) that its judicial [VN propose: or other]authorities shall have the authority to order the seizure of suspected counterfeit trademark goods or pirated copyright goods, any related materials and implements used in the commission of the alleged offense, documentary evidence relevant to the alleged offense [MY oppose: , and a**ets 246 derived from, or obtained directly [VN oppose: or indirectly] through the alleged infringing activity]. --FOOTNOTES-- 243 It is understood that there is no obligation for a Party to provide for the possibility of imprisonment and monetary fines to be imposed in parallel. 244 Negotiator's Note: CL/PE/MX/CA is still considering pending consultation with capital. 245 A Party may also account for such circumstances through a separate criminal offense. 246 Negotiators' Note: CA/BN/VN are reflecting on the definition of "a**ets".79---PAGE BREAK---Where a Party requires the identification of items subject to seizure as a prerequisite for issuing any such judicial order, that Party shall not require the items to be described in greater detail than necessary to identify them for the purpose of seizure; (d) that its judicial authorities shall have the authority to order the forfeiture, at least for serious offenses, of any a**ets derived from, or obtained directly [VN oppose: or indirectly] through the infringing activity; (e) that its judicial authorities shall have the authority to order the forfeiture or destruction of: (i) all counterfeit trademark goods or pirated copyright goods; and (ii) materials and implements [CA/VN/MX propose: predominantly] [CA/VN/MX oppose: that have been] used in the creation of pirated copyright goods or counterfeit trademark goods; and [CL/PE/VN/BN/SG/AU/CA/MX/JP oppose: (iii) any other articles consisting of a counterfeit trademark]. In cases where counterfeit trademark goods and pirated copyright goods are not destroyed, the [MY oppose: judicial] [MY/SG/CL/AU/PE/MX/VN/JP: competent247] authorities shall ensure that, except in exceptional circumstances, such goods shall be disposed of outside the channels of commerce in such a manner as to avoid causing any harm to the right holder. Each Party shall further provide that forfeiture or destruction under this subparagraph and subparagraph(c) 248 shall occur without compensation of any kind to the defendant; [US/NZ propose; BN/SG/MY/CL/PE/AU/VN/CA/MX/JP oppose: (f) that its judicial authorities have the authority to order the seizure or forfeiture of a**ets the value of which corresponds to that of the a**ets derived from, or obtained directly or indirectly through, the infringing activity]; (g) that its judicial or other competent authorites shall have the authority to release or, in the alternative, provide access to, goods, material, implements, and other evidence held by the authority to a right holder for--FOOTNOTES-- 247 Negotiators Note: The use of the term "competent/judicial" in this subparagraph will be revisited. 248 Negotiators' Note: The cross reference to subparagraph (c) will be revisited during legal scrubbing.80---PAGE BREAK--- civil249 infringement proceedings. [US/NZ/PE/SG/BN/CL/AU/MY/CA/MX propose: VN/JP oppose: (h) that its competent authorities may act upon their own initiative to initiate a legal action without the need for a formal complaint by a private party or right holder]. Article QQ.H.8 {Trade Secrets} 1.250[CL propose: In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention] Parties shall ensure that natural and legal persons have the legal means to prevent trade secrets lawfully in their control from being disclosed to, acquired by, or used by others (including state commercial enterprises) 251 without their consent in a manner contrary to honest commercial practices.[252 ] As used in this Chapter, trade secrets encompa**, at a minimum, undisclosed information as provided for in Article 39.2 of the TRIPS Agreement. [US/MX/CA/NZ/JP253 propose; SG/MY/PE/VN/CL/AU254/BN oppose: 2. Each Party shall provide for criminal procedures and penalties at least in cases in which a trade secret relating to a product in national or international commerce is misappropriated, or disclosed, willfully and without authority for purposes of commercial advantage or financial gain, and with the intent to injure the owner of such trade secret.]Article QQ.H.9: {Protection of Encrypted Program-Carrying Satellite Signals/Protection of Encrypted Program-Carrying Satellite and Cable Signals} 1. Each Party shall make it a [CL/MX propose: civil or,] [VN propose: administrative or] criminal offense to: (a) manufacture, a**emble, modify, import, export, sell, lease, or otherwise --FOOTNOTES-- 249 A Party may also provide such authority in connection with administrative infringement proceedings. 250 Negotiators' Note: AU supports this paragraph ad referendum. 251 Negotiators' Note: BN seeks further clarification on "state commercial enterprise". 252 [US: For greater certainty, a Party may treat disclosure of a trade secret to that Party's authorities in connection with providing evidence of an alleged violation of that Party's law as not contrary to honest commercial practices.][AU propose: for the purposes of this paragraph "a manner contrary to honest commercial practices" shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition.] 253 Negotiators' Note: CA/MX/NZ/JP supports in principle subject to final drafting. 254 Negotiators' Note: AU opposes this paragraph ad referendum.81---PAGE BREAK--- distribute a tangible or intangible device or system, knowing[CL 255] [CL/JP oppose: or having reason to know] that the device or [CL oppose: system is primarily of a**istance] [CL propose: system's principal function is solely to a**ist] in decoding an encrypted program-carrying satellite [CL/VN/SG/PE/CA/MX oppose: or cable] signal without the authorization of the lawful distributor of such signal256; and US/AU/NZ/PE/MY/SG/MX/VN/CA/CL propose, BN/JP oppose: (b) [VN oppose: [CA propose: except in circumstances where the lawful distributor has not made the signal available to persons in the area where the decoding occurs,] willfully receive257 [CL oppose: and make use of,] [258] or] willfully further distribute a program-carrying signal that originated as an encrypted satellite [PE/SG/MX/VN/CL/CA oppose: or cable] signal knowing that it has been decoded without the authorization of the lawful dstributor of the signal, [PE/SG/MX/VN/CL/CA oppose: or if the signal has been decoded with the authorization of the lawful distributor of the signal, willfully to further distribute the signal for purposes of commercial advantage knowing that the signal originated as an encrypted program-carrying signal and that such further distribution is without the authorization of the lawful signal distributor.] [US/AU/PE/NZ/MX/CL 259 propose 260, MY/BN/VN/CA oppose: 2. Each Party shall provide for civil remedies, [CL/MX oppose: including compensatory damages,] for any person injured by any activity described in paragraph [1], including any person that holds an interest in the encrypted programming signal or its content.] Article QQ.H.10: {Special Measures Relating to Enforcement in the Digital Environment} [US/AU/CA/SG/NZ/PE propose, VN/ oppose: 1. Each Party shall ensure that enforcement procedures, to the extent set forth in the civil and criminal enforcement sections of this Chapter, are available under its law so as to permit effective action against an act of trademark, copyright or related rights infringement which takes place--FOOTNOTES-- 255 [CL propose: For purposes of paragraph 1, knowledge may be demonstrated through reasonable evidence, taking into account the facts and circumstances surrounding the alleged illegal act.] 256 [CA/AU/SG propose: The obligation regarding export may be met by making it a criminal offence to possess and distribute such a device or system.] 257 [CA propose: willfully receiving may mean operating a radio apparatus so as to receive an encrypted signal]. 258 [US propose; CL/AU oppose: For greater certainty, "make use of" includes viewing of the signal, whether private or commercial]. 259 Negotiators' Note: CL position will depend on the outcome of paragraph 1(a). 260 Negotiators' Note: SG agrees in principle but will reflect further on the language.82---PAGE BREAK---in the digital environment, including expeditious remedies to prevent infringement and remedies which constitute a deterrent to further infringement.] 261 Article QQ.H.11: {Government Use of Software / Government Use of Software and Other Materials Protected by Copyright or Related Rights} Each Party 262 shall adopt or maintain appropriate laws, regulations, policies, orders, government-issued guidelines, or administrative or executive decrees providing that its [US/AU/CA/MY/VN/MX propose: central 263 ] government agencies use only non- infringing 264 computer software [US/AU/CA/MX propose:; SG/CL/PE/NZ/MY/BN/VN oppose: and other materials protected by copyright or related rights] in a manner authorized by law and by the relevant license. These measures shall apply to the acquisition and [PE/CA oppose: management] [PE/CA propose: use] of such software [PE/CL/BN/SG/NZ/MY/VN oppose: and other materials] for government use. Article QQ.H.12265: [US propose: Notwithstanding Article QQ.G.16 [limitations and exceptions] and Article QQ.G.14.3(b) [over the air broadcasting reference], no Party may permit the retransmission of television signals (whether terrestrial, cable, or satellite) on the Internet without the authorization of the right holder or right holders of the content of the signal and, if any, of the signal. 266] --FOOTNOTES-- 261 Negotiator's Note: MX/MY/CL/BN are still considering this provision. 262 Negotiators' Note: CA confirming with government procurement people. 263 Negotiators' Note: CA support for central depends on how it is defined throughout the agreement. 264 Negotiators' Note: SG/CL/MY/BN/VN subject to consideration of parallel importation issues. 265 Negotiators' Note: delegations are still considering this proposal, and are also reflecting on the placement of this proposal in the Chapter. 266 [US: For purposes of this Article and for greater certainty, retransmission within a Party's territory over a closed, defined, subscriber network that is not accessible from outside the Party's territory does not constitute retransmission on the Internet.] 83---PAGE BREAK---