Consolidated Text

• Leaked by La Quadrature du Net
• 56 pages
• U.S. Confidential
• Foreign Government Confidential
• Modified Handling Authorized
• January 18, 2010

(7 MB)

Chapter Two
Legal Framework for Enforcement of Intellectual Property Rights

Section 1: Civil Enforcement

[MX: The use of wordings such as “judicial authorities” and “competent authorities” shall be precisely review and in accordance with the content of the provision taking into consideration that the Industrial Property Law and the Federal Law of Copyrights authorize IMPI and INDAUTOR to investigate, request information, perform provisional measures to prevent and cease the infringement of the intellectual property rights and, moreover, to impose administrative sanctions.  The legal nature of said Institutions is administrative, not judicial.]

Article 2.1: [US/J: Availability of Civil Procedures] [EU: Scope of the Civil Enforcement]

1. Each Party shall make available to right holders [US/J: civil judicial] [Mcx/NZ: or administrative] procedures concerning the enforcement of any [US/J: intellectual property right] [Sing/Can/NZ: copyrights and related rights and trademarks] [Kor: as provided for in the following individual articles in this Section].

[2. EU/Can/NZ: Those measures, procedures and remedies shall also be eftective, proportionate and deterent.]

Article 2.X: Injunctions

Option 1: In civil judicial proceedings concerning the enforcement of [Can/NZ: copyright or related rights and trademarks] [US/J: intellectual property rights], each Party shall provide that its [US/J: judicial authorities] [NZ: competent authorities) shall have the authority to issue an order to a party to desist from an infringement, including an order to prevent infringing goods from entering into the channels of commerce [US/Aus/Kor/Mor/NZ: and to prevent their exportation].

Option 2: [EU: Each Party shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. The Parties shall also ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right]

Article 2.2: Damages
Each Party shall provide that:

(a) in civil judicial proceedings, [US/J: its judicial authorities] [Mex/NZ: or competent authonties] [EU/NZ: on application of the (EU: injured party){NZ: right holder}] shall have lhe authority to order he infringer [EU/NZ: who knowingly or with reasonable ground to know, engaged in infringing activity] of [Can/Sing/NZ: copyright or related rights and trademarks] [US/J: intellectual property rights] to pay the right holder
(I) damages adequate to compensate for the [EU: actual] injury the right holder has suffered as a result of the infringement; or [EU: or]

(ii) [US/Mor/Aus/Kor/Sing: at least in the case of copyright or related rights infringement and trademark counterfeiting,][MX: in the case of IPR inrfinuernentsJ the profits of the infringer that are attributable to the infringement, which may be presumed to be the amount of damages referred to in clause (i)[Aus/Sing/NZ/EU: which may be presumed to be the amount of damages referred to in clause (i)]; and

[EU: Delete (ii) (as originally proposed?) and move (ii) into paragraph 2.2. 1(b)–Please clarify]

[(iii) Can/NZ: For greater certainty, a Party may limit or exclude damages in certain spexial cases.]

(b) in determining the amount of damages for [Can/Sing/NZ: copyright or related rights infringement][MX: IPR] infringement [US/J: of intellectual property rights] [Can/Sing: and trademark counterfeiting], its [US/J: judicial][NZ: competent] authorities [US/J: shall][Aus/Can/NZ: may] consider, inter alia, [Can/NZ: any legitimate measure of value that may be submitted by the right holder, including] [EU/Can/NZ: the lost profits], the value of the infringed good or service, measured by the market price, [Can: or] the suggested retail price [NZ: suggested retail price], or other legitimate measure or value submitted by the right holder [Can/NZ: or other legitimate measure of value submitted by the right holder], [EU: the profits of the infringer that are attributable to the infringement].

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Article 2.4: Information Related to Infringement

[EU: without prejudice to other statutory provisions which, in particular, govern 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 [US/J: intellectual property rights][Can: copyright or related rights and trademarks], authorities shall have the authority upon a justified request of the right holder, to order the infringer to provide, [US/J: for the purpose of collecting evidence] [EU: for the purpose of collecting evidence][Mor: within the framework of measures of inquiry or investigation], any [Can: relevant] information [EU: information on the origin and distribution network of the infringing goods or services on a commercial scale] [J: in the form as prescribed in its applicable laws and regulations] that the infringer possesses or controls, [J/Can/EU/MX: where appropriate,] to the right holder or to the judicial authorities. Such information may include information regarding any person or persons involved in any aspect of the infringement and regarding the means of production or distribution channel of such goods or services, including the identification of third persons involved in the production and distribution of the infringing goods or services or in their channels or distribution. [Can: For greater clarity, this provision does not apply to the extent that it would conflict with common law or statutory privileges. such as legal professional privilege.]

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