Review of TRIPS Implementing Legislation - Search

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Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations made effective by that Member pertaining to the subject matter of the Agreement to the Council for TRIPS in order to assist the Council in its review of the operation of the Agreement.

This page allows you to search Members' questions and answers on notified laws and regulations. You can consult search results on screen, download and print them in Excel format. You can also download individual documents.

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Page 670 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q4/USA/1 United States of America European Union - injunctions that have been issued (as defined in Article 44 of the TRIPS Agreement) and explain how such injunctions are being enforced;
Statistics on the number of injunctions issued are not compiled separately for intellectual property cases. Injunctions can be enforced by Federal marshals pursuant to 28 U.S.C. § 566. In order to provide information responsive to this request, the US Government asked US industry groups for information regarding civil actions. The following chart summarizes the information received in response to that request. US COPYRIGHT ENFORCEMENT STATISTICS: FEDERAL CIVIL ACTIONS (1996 AND 1997 (JANUARY-30 JUNE 1997)) [Part of the response is in Table format]
18/12/1998
IP/Q4/USA/1 United States of America European Union - provisional measures (as defined in Article 50 of the TRIPS Agreement) that have been granted and the average length to obtain such measures (from the request);
See the reply to question 1. As noted in reply to question 2, the figures in table 2 in the reply to question 1 indicate that right holders make frequent use of temporary restraining orders, preliminary injunctions, ex parte seizures and other provisional remedies in intellectual property enforcement cases, so that only a small percentage of cases filed proceeds to final judgment.
18/12/1998
IP/Q4/USA/1 United States of America European Union - suspensions at the border of counterfeit trademark/pirated copyright goods or in relation to goods where other intellectual property rights are infringed;
[Part of the response is in Table format] Source countries for the largest total domestic value over the period include the following countries: [Part of the response is in Table format]
18/12/1998
IP/Q4/USA/1 United States of America European Union - criminal cases including the sentences that have been applied; whether they have been executed; and please also explain what kind of infringement of an intellectual property right would be regarded as a violation of criminal law;
The Executive Office of United States Attorneys (EOUSA) in the US Department of Justice is charged with compiling statistics regarding cases referred to the Department of Justice by other federal agencies for prosecution under federal criminal laws. The statistics include only cases reported to the EOUSA and do not include cases prosecuted under state criminal laws. Those statistics also do not reflect the imposition of criminal fines which can either supplement or substitute for imprisonment. Copyright-related Criminal Provisions Three Federal crimes, 18 U.S.C. §§ 2318, 2319 and 2319A, relate to copyright infringement. In fiscal years 1996 and 1997, the reported statistics indicate that a total of 146 defendants were prosecuted under these statutes, with 67 being convicted after a plea or trial. Of those convicted, 20 received jail sentences. The following tables contain reported statistics for fiscal year 1996 and 1997, segregated by statutory provision, and preceded by a brief description of each offence. Title 18, United States Code, Section 2318 (18 U.S.C. § 2318) – Trafficking in Counterfeit Labels for Phonorecords, and Copies of Motion pictures or Other Audiovisual Works. Offence: knowingly trafficking in a counterfeit label affixed or designed to be affixed to a phonorecord or a copy of a motion picture or other audiovisual work. [Part of the response is in Table format] Title 18, United States Code, Section 2319 (18 U.S.C. § 2319) – Criminal Infringement of a Copyright. Offence: willful infringement of a copyright for purposes of commercial advantage or private financial gain. [Part of the response is in Table format] Title 18, United States Code, Section 2319A (18 U.S.C. § 2319A) – Unauthorized Fixation of and Trafficking in Sound Recordings and Music Videos of Live Musical Performances. Offence: without the consent of the performer, knowingly and for purposes of commercial advantage or private financial gain, fixing the sounds or sounds and images of a live musical performance, reproducing copies of such a performance from an unauthorized fixation, transmitting the sounds or sounds and images to the public, or distributing, renting, selling, or trafficking (or attempting the preceding) in any copy of an unauthorized fixation. [Part of the response is in Table format] In order to provide some information regarding fines and monetary restitution, information not maintained by EOUSA, the Government of the United States requested the assistance of copyright industry groups. The following charts contain information supplied by those industry groups, as well as information on state criminal actions. US COPYRIGHT ENFORCEMENT STATISTICS: FEDERAL CRIMINAL ACTIONS Fines and Monetary Restitution (1996 and 1997 (January – 30 June 1997)) [Part of the response is in Table format] US ENFORCEMENT STATISTICS: STATE CRIMINAL ACTIONS (1996 and 1997 (January – June 30, 1997)) [Part of the response is in Table format] Trademark-related Criminal Provision: Reported information regarding criminal actions in connection with trademark rights are summarized in the table below, following the description of the relevant criminal law. Title 18, United States Code, Section 2320 (18 U.S.C. § 2320) – Trafficking in Counterfeit Goods or Services. Offence: intentionally trafficking or attempting to traffic in goods or services and knowingly using a counterfeit mark on or in connection with such goods or services. [Part of the response is in Table format]
18/12/1998
IP/Q4/USA/1 United States of America European Union - seizures and/or destruction of counterfeit trademark and pirated copyright goods.
EOUSA does not maintain statistics on quantity or value of property seized pursuant to criminal prosecution or information on whether forfeited property has been destroyed.
18/12/1998
IP/Q4/USA/1 United States of America European Union Furthermore, could the Government of the United States explain and give practical examples of: - how the compensation for damages of the infringement of intellectual property rights is calculated (Article 45.1 of the TRIPS Agreement);
For copyright, see 17 U.S.C. § 504; for trademarks including certification marks, see 15 U.S.C. § 1117; for patents and industrial designs, see 35 U.S.C. § 284; for integrated circuit layout designs, see 17 U.S.C. § 911; for trade secrets, reference would be made to the appropriate state law. Calculation of damages is based on the evidence provided by the parties.
18/12/1998
IP/Q4/USA/1 United States of America European Union - what would be regarded as "expenses of the right holder" which have to be reimbursed pursuant to Article 45.2, first half of the first sentence, of the TRIPS Agreement and how they would be calculated;
For copyright, see 17 U.S.C. § 505; for trademarks, including certification marks, see 15 U.S.C. § 1117; for patents and industrial designs, see 35 U.S.C. § 285; for integrated circuit layout-designs, see 17 U.S.C. § 911; and for trade secrets, refer to the appropriate state law. As with damages, calculations are based upon the evidence presented by the parties.
18/12/1998
IP/Q4/USA/1 United States of America European Union - whether attorney's fees can be reimbursed and how such fees would be calculated;
Attorney's fees can be reimbursed in accordance with the sections of law cited above. Fees would be calculated based upon the evidence presented by the parties.
18/12/1998
IP/Q4/USA/1 United States of America European Union - whether Article 45.2, second sentence, of the TRIPS Agreement has been implemented in the United States and how such "damages" would be calculated?
In connection with some forms of intellectual property, judicial authorities have such authority and with others such authority is limited. See above-referenced provisions of law. Such damages would be calculated based upon the evidence presented by the parties.
18/12/1998
IP/Q4/USA/1 United States of America European Union (Follow-up questions from the EC) As set forth in question 7, please provide practical examples with respect to the following: (a) how the compensation for damages for the infringement of intellectual property rights is calculated (Article 45.1 of the TRIPS Agreement); (b) what would be regarded as "expenses of the right holder" which have to be reimbursed pursuant to Article 45.2, first half of the sentence and how they would be calculated; and (c) on what basis "damages" as set forth in Article 45.2 would, in fact, be calculated?
See the answer to the follow-up question to question 2 above.
18/12/1998
IP/Q4/USA/1 United States of America European Union Could the US explain in detail the conditions for the grant of a preliminary injunction or temporary restraining order in intellectual property right-related cases?
To obtain a preliminary injunction, courts have generally required that the moving party demonstrate some or all of the following: a substantial likelihood that it will prevail on the merits of its case; that it will suffer irreparable injury if preliminary relief is not granted; that the threatened injury to it outweighs the harm an injunction might cause the defendant; and that the preliminary injunction will not have a serious adverse effect on the public. A temporary restraining order (TRO) may be granted by a court where it clearly appears from specific facts shown by an affidavit or by a verified complaint that immediate and irreparable injury will result before the adverse party or his attorney can be heard in opposition, and the complainant’s attorney has certified to the court, in writing, the efforts which have been made to give notice and the reasons supporting his claim that notice should not be required. See Rule 65, Federal Rules of Civil Procedure.
18/12/1998
IP/Q4/USA/1 United States of America European Union Could the US explain in detail the conditions applied and the scope of the right conferred when preliminary relief is granted giving the right to obtain evidence inaudita altera parte?
Security is required as a condition for obtaining a TRO or a preliminary injunction in an amount sufficient to cover costs and damages to the party wrongfully enjoined or restrained. Temporary restraining orders expire within ten days unless extended for good cause shown or if the adverse party consents to a longer period. A motion for preliminary injunction must be scheduled for a hearing at the earliest possible time and, the party obtaining the TRO does not proceed with the request for preliminary injunctions, the TRO will be dissolved. See Rule 65, Federal Rules of Civil Procedure. The function of a preliminary injunction is to preserve the status quo pending a determination of the action on the merits. The scope of the preliminary injunction depends upon the facts of the particular dispute.
18/12/1998
IP/Q4/USA/1 United States of America European Union If indeed there exists no statistical data on the time and cost (including official and legal fees) required to obtain such preliminary relief, could the US provide estimates?
Because the factors influencing the cost and time of obtaining relief, permanent or preliminary, are so many and varied, the US Government cannot provide estimates.
18/12/1998
IP/Q4/USA/1 United States of America European Union 8. Section 337 of the United States Tariff Act, as amended, gives United States' right holders the possibility to request the United States International Trade Commission to declare unlawful, under certain conditions, the importation or sale of articles that infringe valid United States' patents, registered trademarks, registered copyrights or registered mask works of a semiconductor chip product. Please explain why this procedure is limited to foreign goods and not extended to domestic products. Against this background, please also explain how such legislation complies with the United States' obligations under the relevant WTO Agreements.
The United States amended Section 337 of the Tariff Act of 1930, 19 U.S.C. 1337, as part of our implementation of the Uruguay Round results. As stated in the "Statement of Administrative Action" accompanying the Uruguay Round Agreements Act, those amendments bring US procedures into conformity with national treatment obligations under GATT 1994, while providing for effective enforcement of intellectual property rights at the border. Moreover, the procedures applied under Section 337 fully comply with Article 49 of the TRIPS Agreement in that they "conform to principles equivalent in substance to those set forth" in Section 2 of the TRIPS Agreement. For example, each element of Articles 41 and 42 of the TRIPS Agreement are met in the context of a Section 337 proceeding. The TRIPS Agreement, negotiated after a panel report was issued finding that certain aspects of Section 337 were inconsistent with Article III of GATT 1947, recognizes that it may be necessary to treat domestic and imported products differently to enforce intellectual property rights effectively in respect of imported goods. The 1994 amendments to Section 337 made the following changes to USITC procedures to implement the panel’s recommendations: - Elimination of the requirement that the USITC issue a final determination within a fixed period of time. Instead, the amendment provides that the ITC must complete its investigation "at the earliest practicable time". To promote rapid adjudication, the USITC must establish a "target date" for completion of an investigation within 45 days after it is initiated. These requirements parallel the procedures set out in recently revised Rule 16 of the Federal Rules of Civil Procedure providing district courts with various mechanisms for expediting litigation. They are also consistent with district court efforts to avoid delay, such as by establishing target dates for the completion of various stages of litigation; - Means to prevent infringement proceedings being brought against imported goods in two forums at the same time. A district court hearing an infringement case is required to stay its proceedings, at the request of a respondent in a Section 337 proceeding, in respect of any claim that involves the same issues as those pending before the ITC. Such issues would include questions of patent validity, infringement, and any defences that might be raised in both proceedings. The district court may use its discretionary authority to stay any other claims in the case.
18/12/1998
IP/Q4/USA/1 United States of America European Union [Follow-up question from the EC] Could the United States itself provide the same categories of statistics regarding its own situation as it has requested of all others in its two general follow-up questions on civil and criminal enforcement?
To the degree that such information is available, we have.
18/12/1998
IP/Q4/USA/1 United States of America European Union [Additional question from the EC] Under the United States regulations, since 1 January 1996 works in respect of which copyright has been restored are automatically protected under the Bern Convention and the TRIPS Agreement but the enforcement of this protection is subordinated to compliance by the copyright holders with the "notice of intent to enforce" procedure with regard to users of the works (17 U.S.C., paragraph 104 A(d) (2)). Since 1 January 1998, it has no longer been possible to use the general notification procedure ("constructive notice") filed with the Copyright Office; hence the only means of enforcement open to copyright holders is the individual notification procedure, which is very difficult to do in practice as it implies identifying the United States users and sending them a personal notice. In the circumstances, the United States Government should clarify whether the automatic character of the protection granted to these works enables copyright holders to bring a civil or criminal action against infringers even absent a general or individual notification, and describe the conditions in which such actions may be brought, the evidence available to the copyright holder and the sanctions that may be imposed on infringers. The steps that have to be taken under the individual notice procedure are long, complex and costly: the United States Government should therefore explain how this procedure is consistent with Article 41.1 of the TRIPS Agreement, which provides that enforcement procedures shall permit effective action against any act of infringement of intellectual property rights and be applied in such a manner as to avoid the creation of barriers to legitimate trade; and with Article 41.2, which provides that procedures concerning the enforcement of intellectual property rights shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
As noted in the question itself, works in respect of which copyright has been restored in the United States receive protection automatically without the need for compliance with any formality. 17 U.S.C. § 104A(a)(1)(A). The European Communities and their Member States are incorrect, however, that enforcement of this protection generally requires compliance with the "notice of intent to enforce" procedures set out in the law. Service of a notice of intent to enforce is required only with respect to a claim against a person who used the work in certain ways prior to restoration-a "reliance party", as defined in the Copyright Act (§104(h)(4)) and only if the copyright owner has not filed such a notice with the Copyright Office within the two-year period set out in the Act (§104A(d)(2)(A)). As to all other users of restored works - the vast majority of infringement claims - the copyright owner can proceed with an infringement case in the same manner and to the same extent as for a newly created work. See §104A(d)(1) (Enforcement of Copyright in Restored Works in the Absence of a Reliance Party). Accordingly, the "notice of intent to enforce" procedures apply only in a narrow category of circumstances. As explained by the United States in response to question 5 from the European Communities and their Member States in connection with the July 1996 TRIPS Council Review of Copyright Legislation, this approach to restoration of works in the public domain is fully consistent with the requirements of Berne Article 18 and Articles 9 and 14.6 of the TRIPS Agreement, as a reasonable and limited "condition of application" of the principle of retroactive protection, to deal with the special situation of those who have in the past invested in the use of material then in the public domain. In response to the request for a description in the second paragraph of the question, the conditions in which infringement actions may be brought with respect to restored works, the evidence available to the copyright owner, and the sanctions that may be imposed on infringers, are all identical to those involved with respect to any other copyrighted work. Finally, the United States disagrees with the question's characterization of the notice procedure as "long, complex and costly". The procedure could not be simpler or more inexpensive. It merely entails sending a short statement on a piece of paper, in no particular format, signed by the copyright owner. The statement must set out the basic facts necessary to indicate a claim: the work's title (including a translation or alternative titles), the address and telephone number of the copyright owner, the use to which the copyright owner objects, and, in the case of a derivative work based on the restored work, an identification of that derivative work. While service of a notice does necessitate locating the reliance party in the United States, this is no more difficult than identifying any infringer located in another country.
18/12/1998
IP/Q4/USA/1 United States of America Hong Kong, China [Questions posed to several Members] 1. Is it correct to say that intellectual property infringement cases often end in the interim interlocutory stage? If yes, what seem to be the reasons? Is this desirable in the interest of justice?
The following table indicates the stages at which cases in US Federal courts involving copyrights, patents, and trademarks were terminated for the twelve months ending 30 June 1997. [Part of the response is in Table format] The data indicate that the vast majority of cases are resolved through settlement before action begins or during the discovery phase. Discovery provides each side with information allowing it to evaluate its position and the likelihood of success if it pursues action on the merits of the case. Resolution in this manner is desirable and, since it comes about as a result of decisions of the parties themselves, justice is served.
18/12/1998
IP/Q4/USA/1 United States of America Hong Kong, China 2. In civil proceedings, are there any proof facilitation provisions which could create legal presumptions of intellectual property subsistence and ownership and thus could excuse the right owner from appearing in court and to testify these issues? If not, why?
There is no absolute obligation for a right owner to appear in court and testify to demonstrate the existence of a particular form of intellectual property or of its ownership. Other evidence, including documents, affidavits, the testimony of other parties etc., can often be substituted for personal appearances by the right owner. US law does contain some "proof facilitation provisions". Copyrights: See 17 U.S.C. § 410 under which a copyright certificate of registration made before or within five years after first publication constitutes prima facie evidence of the validity of the copyright and of the facts stated in the certificate, including the name of the copyright claimant. Trademarks: See 15 U.S.C. § 1057(b) under which a trademark certificate of registration on the principal register serves as prima facie evidence of validity of the registered mark and of the registrant’s ownership of the mark. Patents: See 35 U.S.C. § 282 under which patents are presumed to be valid. Integrated Circuit Layout-Designs: See 17 U.S.C. § 908(f) under which the certificate of registration of a mask work constitutes prima facie evidence of the facts stated in the certificate, including the name of the claimant. Trade Secrets: There is no presumption in relation to trade secrets since the existence of a trade secret is a matter of proof.
18/12/1998
IP/Q4/USA/1 United States of America Hong Kong, China 3. Does any intellectual property enforcement agency have the legal power to seize and forfeit suspected infringing articles, whether or not a charge has been laid? If not, why?
It is not completely clear what is meant by "a charge" being laid. We interpret it to mean a criminal charge or indictment has been made against the person whose property is being seized. Section 509 of the Copyright Act, 17 U.S.C. § 509, provides for the seizure and forfeiture of infringing copies and articles of infringement used in criminal copyright infringement. The seizures are performed by agents, officials or persons authorized by the US Attorney General. These procedures can be instituted upon the government's showing of probable cause; a criminal indictment or criminal conviction is not required.
18/12/1998
IP/Q4/USA/1 United States of America Hong Kong, China 4. Is there a specialized criminal intellectual property enforcement agency? If not, what is the rationale?
The US Department of Justice enforces the criminal provisions of US intellectual property laws. It deals with all enforcement of federal criminal laws, not just those dealing with intellectual property, but it does have specialists within the Department who deal with violations involving intellectual property.
18/12/1998

Page 670 of 677   |   Number of documents : 13533

 
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