A Defence of Intellectual Property Enforcement and The Acta – by Michael Blakeney

Pirate Street vendor (Wikimedia Commons)

The Anti-Counterfeiting Trade Agreement (ACTA) was formulated to deal with the burgeoning growth in the trade in counterfeit and pirate products which was estimated to have increased ten-fold since 1994. Michael Blakeney discusses the ACTA, intellectual property enforcement and its impact on the international community.

It was concerns about the perceived scale of the trade in counterfeit branded products and pirated copyright works, estimated to be around $US60 billion per annum in 1986, which caused the creators of the World Trade Organization to oblige its members to sign an IP agreement (TRIPS) which contained measures for the civil, criminal and administrative enforcement of IP rights. However, within 10 years of the commencement of the TRIPS Agreement the size of this trade was estimated to have increased ten-fold. In fact it was estimated by the UN’s Commission on Transnational Crime in 2005 that the global trade in infringing products was worth more than the trade in illicit drugs. As a consequence, enforcement authorities such as INTERPOL and the World Customs Organization, identified that the sale of pirate and counterfeit products had become very attractive to organized crime groups because of the large profits to be made and the very low risks of punishment if caught. For similar reasons, INTERPOL suggested that this trade had also become a source of funding for terrorists.

These various concerns were addressed by the G8 Group of Nations which at its Glen Eagles meeting in 2005 called for legislative action to enhance IP enforcement. A direct response was the ACTA negotiations which were designed to address the enforcement shortcomings of the TRIPS Agreement. The ACTA Agreement was consummated at the end of 2010 and is currently being considered for implementation by those countries involved in its negotiation.

The controversial circumstances of the negotiation of ACTA, the fact that it was negotiated between a small group of like-minded nations and in circumstances of some secrecy, has resulted in a number of the negotiating parties, such as Australia, the EU, Mexico and Switzerland delaying in their ratification of ACTA. Even in the USA, which played a leading role in initiating the ACTA negotiations, constitutional objections have been made to its adoption by Executive Decree.

The unfortunate circumstances of the ACTA negotiations should not prejudice the sound arguments which support an improvement in the IP enforcement regime. Probably the most significant innovation proposed by ACTA is the introduction of procedures for the confiscation of the proceeds of IP crime. This sanction was originally introduced in the 1980s in the USA in the Racketeer Influenced Corrupt Organization Act (RICO) to deal with the confiscation of drug profits. Removing the profits from IP crime is a powerful way of removing the incentive for this crime and the cost of enforcement is borne by offenders as the confiscated proceeds can be used to subsidize further enforcement actions.

When the TRIPS Agreement was originally concluded it was regarded by developing countries principally as an instrument by which foreign brand owners could seek to enforce their rights around the world. The devastating consequences in those countries of the growing trade in counterfeit medicines which undermines their capacity to deal with major diseases such as malaria, HIV/AIDS, avian flu and SARS has converted them to an appreciation of the importance of IP enforcement. Although ACTA might be rejected by them because of the nature of its negotiation, the various enforcement measures which it contains and which are examined in my book will have a practical application to deal with this particular problem.

A number of the ACTA provisions were originally introduced in IP chapters in bilateral free trade agreements. Following on from the conclusion of the ACTA negotiations, its enforcement provisions have been included in the Trans Pacific Partnership Agreement (TPP) which is being negotiated between the USA and a number of Pacific Rim countries. In this way those provisions will become part of the international intellectual property enforcement landscape.

Professor Michael Blakeney is Professor of Law at the University of Western Australia and Visiting Professor in Intellectual Property at Queen Mary University of London. He is the author of Intellectual Property Enforcement A Commentary on the Anti-Counterfeiting Trade Agreement (ACTA). This book arose out of his work with the European Commission in establishing IP enforcement regimes in a number of the new EU Member States: Bulgaria, Latvia, Poland and Romania and in some of the applicant states: Bosnia, Croatia, FYROM and Serbia.

Intellectual Property Enforcement: A Commentary on the Anti-Counterfeiting Trade Agreement (ACTA)

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