Unión Europea
Estados Unidos de América
Observancia de los derechos de propiedad intelectual
2. Under the American Rule, the claimant and defendant in a proceeding to enforce intellectual property rights generally must bear their own attorneys' fees. In many cases, attorneys’ fees can exceed the potential damages for infringement. As a result, the American Rule acts as a deterrent against pursuing a civil enforcement action, except in cases involving significant damages. Please explain how the United States complies with the requirement of Article 41.1 of the TRIPS Agreement that "Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement".
The United States is in full compliance with Article 41.1. Enforcement procedures as specified in Part III of the TRIPS Agreement are available so as to permit effective action against any act of infringement. Article 45 requires that damages be authorized only in situations where the infringer knew, or had reasonable grounds to know, his activity was infringing. Judges in Federal courts have such authority (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; and for trade secrets, refer to the appropriate state laws). US judges have the authority, required by Article 44, to enjoin infringement for the life of the relevant intellectual property right (for copyright, see 17 U.S.C. § 502; for trademarks, see 15 U.S.C. § 1116; for patents and industrial designs, see 35 U.S.C. § 283; for integrated circuit layout designs, see 17 U.S.C. § 911; and for trade secrets, see relevant state laws), and, in all but very rare cases, do so when infringement is found to exist. Most intellectual property owners bring legal actions soon after they become aware of an infringement, not seeking primarily to obtain damages for infringement that has already occurred, but to enjoin further infringement. Finally, US judges have the authority to award costs, including attorneys' fees in appropriate circumstances, as required by Article 45.2. We note that the EC question, like others it has submitted, is based upon unsupported assertions first, that "in many cases, attorneys' fees can exceed the potential damages for infringement" and second, that the first unsupported assertion deters right holders from pursuing civil enforcement actions. The United States believes that the data provided in the tables in our response to question 1, giving the number of cases filed annually, indicate that right holders are not deterred from enforcing their rights.