[Ip-health] Pfizer CEO's recommendations on IP enforcement to Senate Finance Comm.

[Manon Ress]

Mikel,
Thanks for the Pfizer quote:
> Congress should act on strong trade agreements that include
> important improvements in IP =96 like the FTA with Korea =96 as soon
> as possible.

We heard the exact same thing from USTR regarding ACTA.  The KOREA/US
agreement enforcement provisions are the baseline.

Here is a summary by Jacqueline Lee (KEI Intern):

General
Each party shall publicize information on its efforts of IP
enforcement and final judicial decisions and administrative rulings of
general application on IP information (paragraphs 1 & 2)

Civil and Administrative Procedures and Remedies
Judicial authorities shall have the authority to order the infringer
to pay the right holder, compensation damage, punitive damage and/or
court related costs (5 & 7); to order destruction and/or seizure of
infringing materials (8); and to allow right holder to choose from
actual damage and pre-established damages (6 & 13b).  Judicial
authorities shall have the authority to order the infringer to release
any information regarding third party related to the infringement (10).

Special Requirements Related to Border Measures
Any right holder initiating procedures for its competent authorities
to suspend release of suspected counterfeit or confusingly similar
trademark goods, or pirated copyright goods into free circulation is
required to satisfy prima facie case of an infringement, and to supply
sufficient information that may reasonably be expected to be within
the right holder=92s knowledge (19).  competent authorities shall have
the authority to require the right holder to provide reasonable
security for the defendant (20).  Border measures may be initiated ex
officio (without formal complaint from a private party or right
holder) with respect to imported, exported, or in-transit merchandise,
or merchandise in free trade zones, that is suspected of being
counterfeit or confusingly similar trademark goods, or pirated
copyright goods (22).  infringing goods shall be destroyed, except in
exceptional circumstances (23).

Criminal Procedures and Remedies
At least in cases of willful trademark counterfeiting or copyright or
related rights piracy on a commercial scale, criminal procedures and
penalties shall be applied (26).  Willful copyright or related rights
piracy on a commercial scale includes non-commercial infringements
(26).  Penalties in criminal proceedings shall include imprisonment
and monetary fines sufficient to deter future infringement (27a).
Judicial authorities shall have the authority to order the seizure of
suspected infringing goods and related materials (27b).
Even when willfull trademark counterfeiting or copyright piracy is
absent, criminal procedures and penalties shall be applied, at least
in cases of knowing trafficking in (a) counterfeit labels or illicit
labels affixed to, enclosing, or accompanying, or designed to be
affixed to, enclose, or accompany: a phonogram, a copy of a computer
program or other literary work, a copy of a motion picture or other
audiovisual work, or documentation or packaging for such items; and
(b) counterfeit documentation or packaging for items of the type
described in (a). (28)


FTA with Korea:

ARTICLE 18.10: ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS

General Obligations
1.Each Party shall provide that final judicial decisions and
administrative rulings of general application pertaining to the
enforcement of intellectual property rights be in writing and state
any relevant findings of fact and the reasoning or the legal basis on
which the decisions and rulings are based. Each Party shall also
provide that those decisions and rulings be published1 or, where
publication is not practicable, otherwise made available to the
public, in its national language in such a manner as to enable
governments and right holders to become acquainted with them.

2.Each Party shall publicize information on its efforts to provide
effective enforcement of intellectual property rights in its civil,
administrative, and criminal systems, including any statistical
information that the Party may collect for such purposes.2

3.In civil, administrative, and criminal proceedings involving
copyright or related rights, each Party shall provide for a
presumption that, in the absence of proof to the contrary, the person
whose name is indicated as the author, producer, performer, or
publisher of the work, performance, or phonogram in the usual manner
is the designated right holder in such work, performance, or
phonogram. Each Party shall also provide for a presumption that, in
the absence of proof to the contrary, the copyright or related right
subsists in such subject matter. In civil, administrative, and
criminal proceedings involving trademarks, each Party shall provide
for a rebuttable presumption that a registered trademark is valid. In
civil and administrative proceedings involving patents, each Party
shall provide for a rebuttable presumption that a patent is valid, and
shall provide that each claim of a patent is presumed valid
independently of the validity of the other claims.

Civil and Administrative Procedures and Remedies

4.Each Party shall make available to right holders3 civil judicial
procedures concerning the enforcement of any intellectual property
right.

5.Each Party shall provide that:
(a) in civil judicial proceedings, its judicial authorities shall have
the authority to order the infringer to pay the right holder:
(i) damages adequate to compensate for the injury the right holder has
suffered as a result of the infringement;4 or
(ii) at least in the case of copyright or related rights infringement
and trademark counterfeiting, 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); and
(b) in determining damages for infringement of intellectual property
rights, its judicial authorities shall consider, inter alia, the value
of the infringed good or service, measured by the market price, the
suggested retail price, or other legitimate measure of value submitted
by the right holder.

6.In civil judicial proceedings, each Party shall, at least with
respect to works, phonograms, and performances protected by copyright
or related rights, and in cases of trademark counterfeiting, establish
or maintain pre-established damages, which shall be available on the
election of the right holder. Pre-established damages shall be in an
amount sufficient to constitute a deterrent to future infringements
and to compensate fully the right holder for the harm caused by the
infringement.295


7.Each Party shall provide that its judicial authorities, except in
exceptional circumstances, shall have the authority to order, at the
conclusion of civil judicial proceedings concerning copyright or
related rights infringement, patent infringement, or trademark
infringement, that the prevailing party shall be awarded payment by
the losing party of court costs or fees and, at least in proceedings
concerning copyright or related rights infringement or willful
trademark counterfeiting, reasonable attorney=92s fees. Further, each
Party shall provide that its judicial authorities, at least in
exceptional circumstances, shall have the authority to order, at the
conclusion of civil judicial proceedings concerning patent
infringement, that the prevailing party shall be awarded payment by
the losing party of reasonable attorneys=92 fees.

8.In civil judicial proceedings concerning copyright or related rights
infringement and trademark counterfeiting, each Party shall provide
that its judicial authorities shall have the authority to order the
seizure of allegedly infringing goods, materials, and implements
relevant to the act of infringement, and, at least for trademark
counterfeiting, documentary evidence relevant to the infringement.

9.Each Party shall provide that:
(a) in civil judicial proceedings, at the right holder=92s request,
goods that have been found to be pirated or counterfeit shall be
destroyed, except in exceptional circumstances;
(b) its judicial authorities shall have the authority to order that
materials and implements that have been used in the manufacture or
creation of such pirated or counterfeit goods be, without compensation
of any sort, promptly destroyed or, in exceptional circumstances,
without compensation of any sort, disposed of outside the channels of
commerce in such a manner as to minimize the risks of further
infringements; and
(c) in regard to counterfeit trademarked goods, the simple removal of
the trademark unlawfully affixed shall not be sufficient to permit the
release of goods into the channels of commerce.
10.Each Party shall provide that in civil judicial proceedings
concerning the enforcement of intellectual property rights, its
judicial authorities shall have the authority to order the infringer
to provide, for the purpose of collecting evidence, any information
that the infringer possesses or controls 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 of distribution, and to provide this information to the
right holder or the judicial authorities.

11.Each Party shall provide that its judicial authorities have the
authority to:
(a) fine, detain, or imprison, in appropriate cases, a party to a
civil judicial proceeding who fails to abide by valid orders issued by
such authorities; and
(b) impose sanctions on parties to a civil judicial proceeding, their
counsel, experts, or other persons subject to the court=92s
jurisdiction, for violation of judicial orders regarding the
protection of confidential information produced or exchanged in a
proceeding.

12.To the extent that any civil remedy can be ordered as a result of
administrative procedures on the merits of a case, each Party shall
provide that such procedures conform to principles equivalent in
substance to those set out in this Chapter.

13.In civil judicial proceedings concerning the acts described in
paragraphs 7 and 8 of Article 18.4, each Party shall provide that its
judicial authorities shall, at the least, have the authority to:
(a) impose provisional measures, including seizure of devices and
products suspected of being involved in the prohibited activity;
(b) provide an opportunity for the right holder to elect award of
either actual damages it suffered or pre-established damages;
(c) order payment to the prevailing right holder at the conclusion of
civil judicial proceedings of court costs and fees, and reasonable
attorney=92s fees, by the party engaged in the prohibited conduct; and
(d) order the destruction of devices and products found to be involved
in the prohibited activity.
Neither Party may make damages available under this paragraph against
a nonprofit library, archives, educational institution, or public
noncommercial broadcasting entity that sustains the burden of proving
that it was not aware and had no reason to believe that its acts
constituted a prohibited activity.

14.In civil judicial proceedings concerning the enforcement of
intellectual property rights, each Party shall provide that its
judicial authorities shall have the authority to order a party to
desist from an infringement, in order, inter alia, to prevent
infringing imports from entering the channels of commerce and to
prevent their exportation.

15.In the event that a Party=92s judicial or other competent authorities
appoint technical or other experts in civil proceedings concerning the
enforcement of intellectual property rights and require that the
parties to the litigation bear the costs of such experts, the Party
should seek to ensure that such costs are closely related, inter alia,
to the quantity and nature of work to be performed and do not
unreasonably deter recourse to such proceedings.

Alternative Dispute Resolution
16.Each Party may permit use of alternative dispute resolution
procedures to resolve civil disputes concerning intellectual property
rights.

Provisional Measures
17.Each Party shall act on requests for provisional measures inaudita
altera parte expeditiously.

18.Each Party shall provide that its judicial authorities have the
authority to require the plaintiff, with respect to provisional
measures, to provide any reasonably available evidence in order to
satisfy themselves with a sufficient degree of certainty that the
plaintiff=92s right is being infringed or that such infringement is
imminent, and to order the plaintiff to provide a reasonable security
or equivalent assurance set at a level sufficient to protect the
defendant and to prevent abuse, and so as not to unreasonably deter
recourse to such procedures.

Special Requirements Related to Border Measures
19.Each Party shall provide that any right holder initiating
procedures for its competent authorities to suspend release of
suspected counterfeit or confusingly similar trademark goods, or
pirated copyright goods306 into free circulation is required to
provide adequate evidence to satisfy the competent authorities that,
under the laws of the country of importation, there is prima facie an
infringement of the right holder's intellectual property right and to
supply sufficient information that may reasonably be expected to be
within the right holder=92s knowledge to make the suspected goods
reasonably recognizable by its competent authorities. The requirement
to provide sufficient information shall not unreasonably deter
recourse to these procedures. Each Party shall provide that the
application to suspend the release of goods shall apply to all points
of entry to its territory and remain applicable for a period of not
less than one year from the date of application, or the period that
the good is protected by copyright or that the relevant trademark
registration is valid, whichever is shorter.

20.Each Party shall provide that its competent authorities shall have
the authority to require a right holder initiating procedures to
suspend the release of suspected counterfeit or confusingly similar
trademark goods, or pirated copyright goods, to provide a reasonable
security or equivalent assurance sufficient to protect the defendant
and the competent authorities and to prevent abuse. Each Party shall
provide that the security or equivalent assurance shall not
unreasonably deter recourse to these procedures. Each Party may
provide that the security may be in the form of a bond conditioned to
hold the importer or owner of the imported merchandise harmless from
any loss or damage resulting from any suspension of the release of
goods in the event the competent authorities determine that the
article is not an infringing good. In no case shall an importer be
permitted to post a bond or other security to obtain possession of
suspected counterfeit or confusingly similar trademark goods, or of
pirated copyright goods.
21.Where its competent authorities have seized goods that are
counterfeit or pirated, a Party shall inform the right holder within
30 days of the seizure of the names and addresses of the consignor,
importer, exporter, or consignee, and provide to the right holder a
description of the merchandise, the quantity of the merchandise, and,
if known, the country of origin of the merchandise.
22.Each Party shall provide that its competent authorities may
initiate border measures ex officio317 with respect to imported,
exported, or in-transit merchandise,328 or merchandise in free trade
zones, that is suspected of being counterfeit or confusingly similar
trademark goods, or pirated copyright goods.
23.Each Party shall provide that goods that have been suspended from
release by its customs authorities, and that have been forfeited as
pirated or counterfeit, shall be destroyed, except in exceptional
circumstances. In regard to counterfeit trademark goods, the simple
removal of the trademark unlawfully affixed shall not be sufficient to
permit the release of the goods into the channels of commerce. In no
event shall the competent authorities be authorized, except in
exceptional circumstances, to permit the exportation of counterfeit or
pirated goods or to permit such goods to be subject to other customs
procedures.

24.Where an application fee or merchandise storage fee is assessed in
connection with border measures to enforce an intellectual property
right, each Party shall provide that the fee shall not be set at an
amount that unreasonably deters recourse to these measures.

25.Each Party shall provide the other Party, on mutually agreed terms,
with technical advice on the enforcement of border measures concerning
intellectual property rights, and the Parties shall promote bilateral
and regional cooperation on these matters.


Criminal Procedures and Remedies
26.Each Party shall provide for criminal procedures and penalties to
be applied at least in cases of willful trademark counterfeiting or
copyright or related rights piracy on a commercial scale. Willful
copyright or related rights piracy on a commercial scale includes:
(a) significant willful copyright or related rights infringements that
have no direct or indirect motivation of financial gain; and
(b) willful infringements for purposes of commercial advantage or
private financial gain.339
Each Party shall treat willful importation or exportation of
counterfeit or pirated goods as unlawful activities subject to
criminal penalties.3410

27.Further to paragraph 26, each Party shall provide:
(a) penalties that include sentences of imprisonment as well as
monetary fines sufficient to provide a deterrent to future
infringements, consistent with a policy of removing the infringer=92s
monetary incentive. Each Party shall further encourage judicial
authorities to impose those penalties at levels sufficient to provide
a deterrent to future infringements, including the imposition of
actual terms of imprisonment when criminal infringement occurs for
purposes of commercial advantage or private financial gain;
(b) that its judicial authorities shall have the authority to order
the seizure of suspected counterfeit or pirated goods, any related
materials and implements used in the commission of the offense, any
documentary evidence relevant to the offense, and any assets traceable
to the infringing activity. Each Party shall provide that such orders
need not individually identify the items that are subject to seizure,
so long as they fall within general categories specified in the order;
(c) that its judicial authorities shall have the authority to order,
among other measures, the forfeiture of any assets traceable to the
infringing activity;
(d) that its judicial authorities shall, except in exceptional cases,
order
(i) the forfeiture and destruction of all counterfeit or pirated
goods, and any articles consisting of a counterfeit mark; and
(ii) the forfeiture and/or destruction of materials and implements
that have been used in the creation of pirated or counterfeit goods.
Each Party shall further provide that forfeiture and destruction under
this subparagraph and subparagraph (c) shall occur without
compensation of any kind to the defendant;
(e) that, in criminal cases, its judicial or other competent
authorities shall keep an inventory of goods and other material
proposed to be destroyed, and shall have the authority temporarily to
exempt these materials from the destruction order to facilitate the
preservation of evidence on notice by the right holder that it wishes
to bring a civil or administrative case for damages; and
(f) that its authorities may initiate legal action ex officio with
respect to the offenses described in this Chapter, without the need
for a formal complaint by a private party or right holder.

28.Each Party shall also provide for criminal procedures and penalties
to be applied, even absent willful trademark counterfeiting or
copyright piracy, at least in cases of knowing trafficking in:
(a) counterfeit labels or illicit labels affixed to, enclosing, or
accompanying, or designed to be affixed to, enclose, or accompany: a
phonogram, a copy of a computer program or other literary work, a copy
of a motion picture or other audiovisual work, or documentation or
packaging for such items; and
(b) counterfeit documentation or packaging for items of the type
described in subparagraph (a).

29.Each Party shall also provide for criminal procedures to be applied
against any person who, without authorization of the holder of
copyright or related rights in a motion picture or other audiovisual
work, knowingly uses or attempts to use an audiovisual recording
device to transmit or make a copy of the motion picture or other
audiovisual work, or any part thereof, from a performance of the
motion picture or other audiovisual work in a public motion picture
exhibition facility.

Liability for Service Providers and Limitations

30.For the purpose of providing enforcement procedures that permit
effective action against any act of copyright infringement covered by
this Chapter, including expeditious remedies to prevent infringements
and criminal and civil remedies that constitute a deterrent to further
infringements, each Party shall provide, consistent with the framework
set out in this Article:
(a) legal incentives for service providers to cooperate with
copyright3511 owners in deterring the unauthorized storage and
transmission of copyrighted materials; and
(b) limitations in its law regarding the scope of remedies available
against service providers for copyright infringements that they do not
control, initiate, or direct, and that take place through systems or
networks controlled or operated by them or on their behalf, as set
forth in this subparagraph (b).3612
(i) These limitations shall preclude monetary relief and provide
reasonable restrictions on court-ordered relief to compel or restrain
certain actions for the following functions, and shall be confined to
those functions:3713
(A) transmitting, routing, or providing connections for material
without modification of its content, or the intermediate and transient
storage of such material in the course thereof;
(B) caching carried out through an automatic process;
(C) storage at the direction of a user of material residing on a
system or network controlled or operated by or for the service
provider; and
(D) referring or linking users to an online location by using
information location tools, including hyperlinks and directories.
(ii) These limitations shall apply only where the service provider
does not initiate the chain of transmission of the material, and does
not select the material or its recipients (except to the extent that a
function described in clause (i)(D) in itself entails some form of
selection).
(iii) Qualification by a service provider for the limitations as to
each function in clauses (i)(A) through (D) shall be considered
separately from qualification for the limitations as to each other
function, in accordance with the conditions for qualification set
forth in clauses (iv) through (vii).
(iv) With respect to functions referred to in clause (i)(B), the
limitations shall be conditioned on the service provider:
(A) permitting access to cached material in significant part only to
users of its system or network who have met conditions on user access
to that material;
(B) complying with rules concerning the refreshing, reloading, or
other updating of the cached material when specified by the person
making the material available online in accordance with a generally
accepted industry standard data communications protocol for the system
or network through which that person makes the material available;
(C) not interfering with technology consistent with industry standards
accepted in the Party=92s territory used at the originating site to
obtain information about the use of the material, and not modifying
its content in transmission to subsequent users; and
(D) expeditiously removing or disabling access, on receipt of an
effective notification of claimed infringement, to cached material
that has been removed or access to which has been disabled at the
originating site.
(v) With respect to functions referred to in clauses (i)(C) and (D),
the limitations shall be conditioned on the service provider:
(A) not receiving a financial benefit directly attributable to the
infringing activity, in circumstances where it has the right and
ability to control such activity;
(B) expeditiously removing or disabling access to the material
residing on its system or network on obtaining actual knowledge of the
infringement or becoming aware of facts or circumstances from which
the infringement was apparent, such as through effective notifications
of claimed infringement in accordance with clause (ix); and
(C) publicly designating a representative to receive such notifications.
(vi) Eligibility for the limitations in this subparagraph shall be
conditioned on the service provider:
(A) adopting and reasonably implementing a policy that provides for
termination in appropriate circumstances of the accounts of repeat
infringers; and
(B) accommodating and not interfering with standard technical measures
accepted in the Party=92s territory that protect and identify
copyrighted material, that are developed through an open, voluntary
process by a broad consensus of copyright owners and service
providers, that are available on reasonable and nondiscriminatory
terms, and that do not impose substantial costs on service providers
or substantial burdens on their systems or networks.
(vii) Eligibility for the limitations in this subparagraph may not be
conditioned on the service provider monitoring its service, or
affirmatively seeking facts indicating infringing activity, except to
the extent consistent with such technical measures.
(viii) If the service provider qualifies for the limitations with
respect to the function referred to in clause (i)(A), court-ordered
relief to compel or restrain certain actions shall be limited to
terminating specified accounts, or to taking reasonable steps to block
access to a specific, non-domestic online location. If the service
provider qualifies for the limitations with respect to any other
function in clause (i), court-ordered relief to compel or restrain
certain actions shall be limited to removing or disabling access to
the infringing material, terminating specified accounts, and other
remedies that a court may find necessary, provided that such other
remedies are the least burdensome to the service provider among
comparably effective forms of relief. Each Party shall provide that
any such relief shall be issued with due regard for the relative
burden to the service provider and harm to the copyright owner, the
technical feasibility and effectiveness of the remedy and whether less
burdensome, comparably effective enforcement methods are available.
Except for orders ensuring the preservation of evidence, or other
orders having no material adverse effect on the operation of the
service provider=92s communications network, each Party shall provide
that such relief shall be available only where the service provider
has received notice of the court order proceedings referred to in this
subparagraph and an opportunity to appear before the judicial authority.
(ix) For purposes of the notice and take down process for the
functions referred to in clauses (i)(C) and (D), each Party shall
establish appropriate procedures in its law or in regulations for
effective notifications of claimed infringement, and effective counter-
notifications by those whose material is removed or disabled through
mistake or misidentification. Each Party shall also provide for
monetary remedies against any person who makes a knowing material
misrepresentation in a notification or counter-notification that
causes injury to any interested party as a result of a service
provider relying on the misrepresentation.
x) If the service provider removes or disables access to material in
good faith based on claimed or apparent infringement, each Party shall
provide that the service provider shall be exempted from liability for
any resulting claims, provided that, in the case of material residing
on its system or network, it takes reasonable steps promptly to notify
the person making the material available on its system or network that
it has done so and, if such person makes an effective counter-
notification and is subject to jurisdiction in an infringement suit,
to restore the material online unless the person giving the original
effective notification seeks judicial relief within a reasonable time.
(xi) Each Party shall establish an administrative or judicial
procedure enabling copyright owners who have given effective
notification of claimed infringement to obtain expeditiously from a
service provider information in its possession identifying the alleged
infringer.
(xii) For purposes of the function referred to in clause (i)(A),
service provider means a provider of transmission, routing, or
connections for digital online communications without modification of
their content between or among points specified by the user of
material of the user=92s choosing, and for purposes of the functions
referred to in clauses (i)(B) through (D) service provider means a
provider or operator of facilities for online services or network
access.





On Jul 15, 2008, at 2:49 PM, Mike Palmedo wrote:

> From today's hearing at the Seante Finance Committee. The full text of
> Pfizer CEO Jeffrey Kindler (and others) is available here:
> http://finance.senate.gov/sitepages/hearing071508.htm
>
> ----------------------------------
> Testimony of Jeff Kindler
> Chairman and CEO, Pfizer, Inc.,
> Before the Senate Finance Committee on International Enforcement of
> Intellectual Property Rights And American Competitiveness
> July 15, 2008
>
> [snip]
>
> So, in working to defend IP protection around the world, what
> specifically can Congress do? Let me offer a few suggestions:
>
> STRONGER ENFORCEMENT TOOLS: U.S. officials need to hold the worst
> counterfeit offenders accountable, and the government needs more
> resources to do that. The global IP problem is growing faster than the
> capacity of our agencies that fight it.
>
> STRONG, ENFORCABLE IP PROVISIONS IN OUR TRADE AGREEMENTS: This means
> for
> all forms of IP. The global landscape for IP is evolving. Our trade
> agreements need to reflect those changes. Acquiescing to a weakening
> of
> IP in these agreements will mortgage our economic future and global
> competitiveness. Congress should act on strong trade agreements that
> include important improvements in IP =96 like the FTA with Korea =96 as
> soon
> as possible.
>
> A NEW ANTI-COUNTERFEITING TRADE AGREEMENT: Such an agreement with our
> most advanced trading partners will set a global benchmark. Critical
> as
> well: stronger border measures to combat counterfeiting, as proposed
> in
> pending legislation.
>
> EXPANDED DATA EXCLUSIVITY:. Right now our major trading partners have
> longer periods of exclusivity than we do. There are those who would
> shrink ours. I believe we must expand those protections in order to
> stay
> competitive with countries that, in this respect, have stronger IP
> protections than the U.S.
>
> [snip]
>
>
>
> --
> Mike Palmedo
> Research Coordinator
> Program on Information Justice and Intellectual Property
> American University, Washington College of Law
> 4910 Massachutsetts Ave., NW Washington, DC 20016
> T - 202-274-4442 | F 202-274-0659
> mpalmedo@wcl.american.edu
>
>
> _______________________________________________
> Ip-health mailing list
> Ip-health@lists.essential.org
> http://lists.essential.org/mailman/listinfo/ip-health
>

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