[A2k] SUNS: UN postal agency being roped in to enforce IPR agneda

[Sangeeta]

Development: UN postal agency being roped in to enforce IPR agenda
Published in SUNS #6534 dated 8 August 2008

Geneva, 6 Aug (Sangeeta Shashikant and Riaz K Tayob) -- A United Nations
agency dealing with postal services may soon be used to help to police or
enforce violations of intellectual property rights in a move that has been
little noticed by many developing countries' policymakers.

The 24th Universal Postal Congress (UPC) is meeting in Geneva from 23 July
to 12 August 2008. The UPC is the supreme authority of the Universal Postal
Union.

A Committee of the UPC, on 1 August, discussed the issue of counterfeit and
pirated items sent through the post. Three proposals on this topic were
made, and two of them were adopted by vote.

The discussions on the proposals showed that many countries, including some
developed countries, were concerned that the postal services at national
level were being roped in to fight against counterfeit products when they
did not have the legal and other expertise or the scope to deal with this,
including on determining whether a product is counterfeit or violates
intellectual property laws.

Despite concerns raised by many countries, two of the proposals were
adopted, because the UPU Committee makes decisions based on a vote (after
discussions that are brief and limited, compared to the length of
discussions allowed in other UN organizations), rather than by consensus (as
is the case in most other UN organizations).

The proposals discussed were: (1) a Resolution 40 on "Counterfeit and
pirated items sent through the post"; (2) an amendment to the UPU Convention
on the list of articles prohibited through the post; and (3) an amendment to
the Convention on sender's liability.

The proposed Resolution and the amendment on the list of prohibited articles
were adopted by member states while the amendment concerning sender's
liability was rejected.

According to a source from the UPU, there has been increasing pressure from
the World Customs Organisation (WCO) to adopt proposals on counterfeiting
and pirated items.

The WCO is among the international organizations that are being used to push
forward an "Anti-Counterfeiting Agenda" drawn up by major developed
countries. Other organizations are the World Health Organisation (WHO) and
the World Intellectual Property Organisation (WIPO).

The UPU, with its Headquarters in Berne, is the primary forum for
cooperation between postal-sector players. It has 191 member countries and
is a UN specialised agency. It sets the rules for international mail
exchanges and makes recommendations to stimulate growth in mail volumes and
to improve the quality of service.

According to a policy expert on IPRs, Susan Sell, proponents of the IP
maximalist agenda are using the concepts of "counterfeiting", "piracy" and
"enforcement" in international organizations to push their agenda to set or
enforce higher IP standards.

Sell, who is Director of the Institute for Global and International Studies
and Professor of Political Science and International Affairs at George
Washington University (USA), in a recent paper said the IP
anti-counterfeiting and enforcement agenda involves hundreds of OECD-based
global business firms and their foreign subsidiaries.

It also includes initiatives and programmes such as the Anti-Counterfeiting
Trade Agreement (ACTA); Interpol's Standards to be Employed by Customs for
Uniform Rights Enforcement (SECURE); the US Chamber of Commerce's (USCC)
"Coalition against Counterfeiting and Piracy Intellectual Property
Enforcement Initiatives: Campaign to Protect America"; the Security and
Prosperity Partnership of North America (SPP); WHO's "International
Medicinal Products Anti-Counterfeit Taskforce" (IMPACT); WIPO's Advisory
Committee on Enforcement (ACE) discussions; bilateral and regional free
trade agreements, investment treaties and Economic Partnership Agreements.

These new anti-counterfeiting and enforcement initiatives are the latest
mechanisms to achieve the goals of what Sell calls the "IP maximalists",
which is to "ratchet up" IP protection and enforcement worldwide, beyond the
TRIPS Agreement. Part of the aim is to counter recent setbacks in raising IP
standards at the multilateral level, and to counter public campaigns such as
the access to knowledge and medicines movement, says Sell.

The proposals before the UPU signify that UPU is the latest addition to the
"strategic forum shifting" for pushing forward the "Anti-Counterfeiting"
Agenda.

Resolution 40 which was adopted (with an amendment proposed by Brazil), in
its operative paragraphs: "Urges UPU member countries in the context of
national legislation to encourage their postal administrations to:

-- take all reasonable and practical measures to support Customs in their
role of identifying counterfeit and pirated items in the postal network;

-- cooperate with the relevant national and international authorities to the
maximum possible extent in awareness-raising initiatives aimed at preventing
the illegal circulation of counterfeit goods, particularly through postal
services."

The preamble to Resolution 40 notes that "the postal channel is used,
together with other distribution channels, for the sending of counterfeit
and pirated items"; "that the POC Committee 3 Customs Support Project Group
has carried out a study on UPU customs and security-related issues
concerning intellectual property matters"; "that the results of the study
revealed that postal administration have no legal competence in determining
whether or not an item is a counterfeit or whether a customs declaration has
been falsely completed; "that the Customs and experts on intellectual
property rights are primarily responsible for determining whether an item is
counterfeit"; that the legislation of member countries on how to deal with
counterfeit and pirated items varies from country to country; and finally
"that the above problems cause operational difficulties and legal problems
for the countries concerned".

To implement the actions, the Resolution mentions several "performance
indicators", including assistance given to designated operators to develop
strategies at a national level in cooperation with national customs
authorities; enabling postal administrations to learn risk-assessment
techniques on how to identify counterfeit and pirated items in the postal
network; reading materials developed in cooperation with the WCO;
participation of the UPU at international forums to study/follow
postal-related issues concerning IP infringements; developing an e-learning
module in cooperation with the WCO.

Resolution 40 is a "Proposal of a General Nature" submitted by Postal
Operations Council (POC) to the Committee. The WCO-UPU Contact Committee and
the POC 3 Customs Support Project Group presented this Resolution to the POC
for examination in January 2008.

France, in introducing the Resolution, said that the postal network was used
to send counterfeit and pirated items, adding that it was the international
customs organisation which raised the issue.

Germany, while supporting the proposal, stressed that postal operators were
not enforcement authorities. It understood that there were pressures from
the WCO and the EU to focus on counterfeiting and pirated items and that it
was linked to risk management. This, it said, has to be done by the proper
authorities, i. e. the custom authorities. Germany said: "We should not
forget that we are not in the position to act as an enforcement authority".
It should be an important topic of the customs support group and WCO-UPU
contact committee, it added.

(The Customs Support Group was reconstituted on the basis of Bucharest
Congress resolution C63/2004. Its overall objective is to raise the profile
of Customs issues and to help UPU member countries prepare for regulatory
changes addressing the issues. One area of activity it has focused on is
closely following regulatory questions and where necessary, representing the
interests of the UPU community at large with policymakers, at national and
international level, paying attention to new regulatory requirements in
various countries and regions, as well as potential intellectual property
rights issues.
(The WCO-UPU contact committee is an official forum for cooperation between
the WCO and UPU. Actions carried out include the possible effect of WCO's
SAFE Framework of Standards, particularly the concept of authorized economic
operator on posts, efforts to combat illegal transactions in counterfeit or
pirated goods, including the possible formulation of regulations, WCO's
input into efforts to develop UPU security standards and procedures,
development of e-learning modules, updating joint WCO-UPU publications etc).

The US supported the concept but added that the implementation of the
actions and goals should be incorporated into the postal security action
group (PSAG) and should be limited to working through the PSAG in developing
guidelines, procedures and tools that will combat the counterfeiter.
Measures should, for example, be on how to use customs electronic
information, how to address isolating shipment etc. PSAC should share the
results with UPU customs group, it added.

The US said that it was the law and customs authorities and not the postal
staff that should be concerned with enforcement. However, postal security
and enforcement can and do coordinate with the law and enforcement
authorities.

(PSAG is chaired by the US and acts to combat the use of the Post as a
vehicle of terrorism, to launder money, improve postal security policies and
develop dynamic security strategies etc).

China said that issues similar to the protection of IP and fighting against
counterfeit have been discussed in the WTO and the WCO and because
developing and developed countries have different understanding, the
proposals in those agencies have not been accepted. It added that the issue
should be studied further, and a hasty decision should not be taken. It
stressed that measures taken should not constitute barriers to international
trade and should be consistent with the WIPO Development Agenda.

A representative of the WCO said that it cooperated to enhance the training
for members and postal administrations and so it generally welcomed and
supported the proposal outlined. It also added that a study was being
conducted to fight against counterfeiting.

Malaysia said that it was concerned with the terminology to support customs
with "reasonable and practical measures" as it was not defined in the
proposal, adding that it did not know the extent of the proposal. It also
said that what Malaysia deems as sufficient may not comply with UPU's
definition of the term.

It was concerned with the requirement to raise maximum awareness to prevent
illegal circulation of counterfeit goods particularly through postal
services. This suggested that the postal service was also responsible to
prevent illegal circulation of counterfeit goods, although such circulation
may not always be through the postal service. In many countries, whether an
item is counterfeit lies with the body that is concerned with IP and so the
language needs to be refined further.
Malaysia added that whatever that is done under the UPU has to be aligned
with WIPO, and WIPO policies differ from country to country. It called for a
further study of the proposal.

France clarified that "reasonable measures" meant that it was up to each
country to decide and one could adapt to the needs of the state. It said the
postal service can take part in the awareness raising, and the purpose would
be to prevent the use of the postal service for counterfeiting.

Brazil proposed adding "in the context of the national legislation" having
heard the concerns of China and Malaysia.

Saudi Arabia said that in its country, the issue of counterfeiting rested
with the ministry of culture and not with customs and while there is
cooperation between the UPU and the WCO, there are differences in the
legislation. It also called for a study of the issue.

The International Bureau of UPU said that the Resolution was only a
statement of intent and each country can interpret the resolution.

Despite several countries wishing to make statements on the issue, the Chair
cut the debate short and called for a vote. In response, South Africa raised
a motion to continue debate, which was put to vote, but the vote did not
succeed, and as a result, the Resolution was put to vote.

95 countries voted in favour of the Resolution, 22 against and 20 countries
abstained from voting.

The result of the outcome has now led several countries to file an appeal to
the plenary session, when the Resolution comes up for final adoption. The
appeal is co-sponsored by Egypt, India, Jordan, Libya, Malaysia, Pakistan,
Saudi Arabia, South Africa, Syria, China and Turkey.

The amendments proposed are to the preamble of the Resolution as follows:

PP 1 (bis) -- "Without prejudice to the ongoing IP related work in other
competent international organizations"

PP4 (alt) -- "Understanding that determination of counterfeit items is the
responsibility of relevant national authorities, in accordance with national
legislation"

On the proposal of PP4 (alt), the concern is that the original version will
shift responsibility of determining IP infringement from a state's judiciary
to customs, although the latter may not have adequate competence in the
matter.

The proponents are confident that the appeal will go through.
France and Italy supported by Great Britain and Netherlands also introduced
a proposal to amend Article 15 of the 2004 Bucharest Convention which
pertains to the list of articles prohibited (to be sent by post).

They proposed to include in the list of prohibited articles: (1) a new para
2.1.2bis on "counterfeit and pirated articles"; (2) the word "other" in
front of "articles the importation or circulation of which is prohibited in
the country of destination"; and (3) a new paragraph 2.1.5bis on "where
prohibited articles are identified, they shall be treated in accordance with
the national legislation".

According to the proposal, the reasons for this amendment was to reduce the
circulation of counterfeit and pirated articles between UPU members and show
customs authorities that the UPU actively supports the WCO's current
campaign to stamp out the production and circulation of pirated and
counterfeit products, such as dangerous toys and electrical items, dangerous
counterfeit medicines and brand goods, which do serious economic harm to
domestic and international companies.

The proposal added that "with the introduction of the article, the sender
will be obliged to take responsibility for the content of the item when she
signs the CN 23 form".

In introducing the proposal, Italy dropped the amendment to include para
2.1.5bis.

The WCO strongly supported the proposal, adding that it will give a strong
message to UPU to fight against counterfeit and pirated goods. It said that
it has always been involved in the fight against counterfeiting and piracy
particularly in the area of public health and security.

Canada raised several concerns with the amendment. It said that it is not
within the expertise of postal employees to identify such items, adding that
there were other authorities especially the custom authorities, which were
better placed to deal with these items and thus it could not support the
provision.

Bangladesh said that the implications for developing countries have to be
kept in mind. For every item imported, a request for certificate is made and
everything is stuck with the Customs. It said that this proposal should not
be accepted since the previous proposal
(i. e. the Resolution) has been accepted.

When the proposal was put to vote, there was agreement from 118 countries,
with 3 countries opposing and 14 countries abstaining.

The third proposal before the Congress was to amend Article 23 of the
Convention and to include a new paragraph 4 bis on sender's liability, i. e.
"The sender of a pirated or counterfeit good shall be fully liable, under
the legislation of the country of origin as well as that of the country of
destination". The proposal was moved by France, supported by Great Britain
and Italy.
Canada said that the proposal creates extraterritorial liabilities. It seems
that we are creating civil offences and it is not clear whether it is
creating criminal liability and there was a need to show mens rea (i. e.
intention), it added. Considering that Resolution 40 had been adopted, the
proposal on sender's liability be left for further consideration, it said.

Kazakhstan, New Zealand, China, and the US supported Canada. The US
expressed concern with regards to the extraterritoriality of the law. Egypt
said that the liability of the sender is set out in the country of origin
and it was not aware of liability in the country of destination.

France said that it was important for the postal administration to establish
the principle that they do not accept liability and it was possible to
revisit this question. It added that what the proposal does is to establish
a foundation of rules that applies equally and with no distortion from
country to country.

The proposal was put to vote, and was rejected with 42 countries agreeing
with the proposal, 53 countries disagreeing and 36 countries abstaining.

The Congress will close on 12 August. More than 2,000 delegates are
attending the Congress, which is the supreme authority of the Union.
Although the Congress' main function is legislative, the recent tendency has
been to focus more on strategic and broad policy issues and the 2008
Congress will adopt a World Postal Strategy that will serve as a roadmap for
member countries and UPU bodies until the next Congress in 2012.

(Note: Future editions of the SUNS will publish more articles on the role of
other international organizations in IP enforcement as part of the
anti-counterfeiting agenda.) +


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