Chapter Fifteen Intellectual Property Rights

Chapter Fifteen-- Intellectual Property Rights

Article 15.1:  General Provisions

1. Each Party shall, at a minimum, give effect to this Chapter.  A Party may, but shall not be

obliged to, implement in its domestic law more extensive protection and enforcement of

intellectual property rights than is required under this Chapter, provided that such protection and

enforcement does not contravene this Chapter. 

 

2. Each Party shall ratify or accede to the following agreements by the date of entry into

force of this Agreement:

 

(a) the WIPO Copyright Treaty (1996); and 

 

(b) the WIPO Performances and Phonograms Treaty (1996).

 

3. Each Party shall ratify or accede to the following agreements by January 1, 2006:

 

(a) the Patent Cooperation Treaty, as revised and amended (1970); and

 

(b) the Budapest Treaty on the International Recognition of the Deposit of

Microorganisms for the Purposes of Patent Procedure (1980). 

 

4. Each Party shall ratify or accede to the following agreements by January 1, 2008:

 

(a) the Convention Relating to the Distribution of Programme-Carrying Signals

Transmitted by Satellite (1974); and

 

(b) the Trademark Law Treaty (1994).

 

5. (a) Each Party shall ratify or accede to the International Convention for the

Protection of New Varieties of Plants (1991) (UPOV Convention 1991).1 

Nicaragua shall do so by January 1, 2010.  Costa Rica shall do so by June 1, 2007. 

All other Parties shall do so by January 1, 2006.

 

1

  The Parties recognize that the UPOV Convention 1991 contains exceptions to the breeder’s right, including for

acts done privately and for non-commercial purposes, such as private and non-commercial acts of farmers.  Further,

the Parties recognize that the UPOV Convention 1991 provides for restrictions to the exercise of a breeder’s right

for reasons of public interest, provided that the Parties take all measures necessary to ensure that the breeder

receives equitable remuneration.  The Parties also understand that each Party may avail itself of these exceptions and

restrictions.  Finally, the Parties understand that there is no conflict between the UPOV Convention 1991 and a

Party’s ability to protect and conserve its genetic resources.

 

 

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 (b) Subparagraph (a) shall not apply to any Party that provides effective patent

protection for plants by the date of entry into force of this Agreement.  Such

Parties shall make all reasonable efforts to ratify or accede to the UPOV

Convention 1991.

 

6. Each Party shall make all reasonable efforts to ratify or accede to the following

agreements:

 

(a) the Patent Law Treaty (2000); 

 

(b) the Hague Agreement Concerning the International Registration of Industrial

Designs (1999); and

 

(c) the Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks (1989).  

 

7. Further to Article 1.3 (Relation to Other Agreements), the Parties affirm their existing

rights and obligations under the TRIPS Agreement and intellectual property agreements

concluded or administered under the auspices of the World Intellectual Property Organization

(WIPO) and to which they are party.

 

8. In respect of all categories of intellectual property covered in this Chapter, each Party

shall accord to nationals2 of the other Parties treatment no less favorable than it accords to its

own nationals with regard to the protection3 and enjoyment of such intellectual property rights

and any benefits derived from such rights. 

 

9. A Party may derogate from paragraph 8 in relation to its judicial and administrative

procedures, including any procedure requiring a national of another Party to designate for service

of process an address in its territory or to appoint an agent in its territory, provided that such

derogation: 

 

(a) is necessary to secure compliance with laws and regulations that are not

inconsistent with this Chapter; and

 

 

2

  For purposes of Articles 15.1.8, 15.1.9, 15.4.2, and 15.7.1, a national of a Party shall also mean, in respect of the

relevant right, an entity located in that Party that would meet the criteria for eligibility for protection provided for in

the agreements listed in Article 15.1.2 through 15.1.6 and the TRIPS Agreement.

3

  For purposes of this paragraph, “protection” shall include matters affecting the availability, acquisition, scope,

maintenance, and enforcement of intellectual property rights as well as matters affecting the use of intellectual

property rights specifically covered by this Chapter.  Further, for purposes of this paragraph, “protection” shall also

include the prohibition on circumvention of effective technological measures set out in Article 15.5.7 and the rights

and obligations concerning rights management information set out in Article 15.5.8.

 

 

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(b) is not applied in a manner that would constitute a disguised restriction on trade. 

 

10. Paragraph 8 does not apply to procedures provided in multilateral agreements to which

the Parties are party concluded under the auspices of WIPO in relation to the acquisition or

maintenance of intellectual property rights.   

11. Except as it provides otherwise, this Chapter gives rise to obligations in respect of all

subject matter existing on the date of entry into force of this Agreement that is protected on that

date in the Party where protection is claimed, or that meets or comes subsequently to meet the

criteria for protection under this Chapter.

 

12. Except as otherwise provided in this Chapter, a Party shall not be required to restore

protection to subject matter that on the date of entry into force of this Agreement has fallen into

the public domain in the Party where the protection is claimed. 

 

13.  This Chapter does not give rise to obligations in respect of acts that occurred before the

date of entry into force of this Agreement.

 

14. Each Party shall ensure that all laws, regulations, and procedures concerning the

protection or enforcement of intellectual property rights shall be in writing and shall be

published,4 or where such publication is not practicable, made publicly available, in a national

language in such a manner as to enable governments and right holders to become acquainted

with them, with the object of making the protection and enforcement of intellectual property

rights transparent. 

 

15. Nothing in this Chapter shall be construed to prevent a Party from adopting measures

necessary to prevent anticompetitive practices that may result from the abuse of the intellectual

property rights set out in this Chapter, provided that such measures are consistent with this

Chapter.

 

16. Recognizing the Parties’ commitment to trade capacity building as reflected in the

establishment of the Committee on Trade Capacity Building under Article 19.4 (Committee on

Trade Capacity Building) and the importance of trade capacity building activities, the Parties

shall cooperate through that Committee in the following initial capacity-building priority

activities, on mutually agreed terms and conditions, and subject to the availability of

appropriated funds:

 

(a) educational and dissemination projects on the use of intellectual property as a

research and innovation tool, as well as on the enforcement of intellectual

property rights;

 

 

4

  A Party may satisfy the requirement for publication by making the measure available to the public on the Internet.

 

 

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(b) appropriate coordination, training, specialization courses, and exchange of

information between the intellectual property offices and other institutions of the

Parties; and

 

(c) enhancing the knowledge, development, and implementation of the electronic

systems used for the management of intellectual property. 

Article 15.2:  Trademarks

1. Each Party shall provide that trademarks shall include collective, certification, and sound

marks, and may include geographical indications and scent marks.  A geographical indication is

capable of constituting a mark to the extent that the geographical indication consists of any sign,

or any combination of signs, capable of identifying a good or service as originating5 in the

territory of a Party, or a region or locality in that territory, where a given quality, reputation, or

other characteristic of the good or service is essentially attributable to its geographical origin. 

 

2. In view of the obligations of Article 20 of the TRIPS Agreement, each Party shall ensure

that measures mandating the use of the term customary in common language as the common

name for a good or service (“common name”) including, inter alia, requirements concerning the

relative size, placement, or style of use of the trademark in relation to the common name, do not

impair the use or effectiveness of trademarks used in relation to such goods.

 

3. Each Party shall provide that the owner of a registered trademark shall have the exclusive

right to prevent all third parties not having the owner’s consent from using in the course of trade

identical or similar signs, including geographical indications, for goods or services that are

related to those goods or services in respect of which the owner’s trademark is registered, where

such use would result in a likelihood of confusion.  In case of the use of an identical sign,

including a geographical indication, for identical goods or services, a likelihood of confusion

shall be presumed.

 

4. Each Party may provide limited exceptions to the rights conferred by a trademark, such

as fair use of descriptive terms, provided that such exceptions take account of the legitimate

interest of the owner of the trademark and of third parties. 

 

5. Article 6bis of the Paris Convention for the Protection of Industrial Property (1967)

(Paris Convention) shall apply, mutatis mutandis, to goods or services that are not identical or

similar to those identified by a well-known trademark,6 whether registered or not, provided that

use of that trademark in relation to those goods or services would indicate a connection between

 

5

  For purposes of this Chapter, “originating” does not have the meaning ascribed to that term in Article 2.1

(Definitions of General Application).

6

  In determining whether a trademark is well known, the reputation of the trademark need not extend beyond the

sector of the public that normally deals with the relevant goods or services. 

 

 

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those goods or services and the owner of the trademark, and provided that the interests of the

owner of the trademark are likely to be damaged by such use.

 

6. Each Party shall provide a system for the registration of trademarks, which shall include:

 

(a) providing to the applicant a communication in writing, which may be electronic,

of the reasons for any refusal to register a trademark;

 

(b) an opportunity for the applicant to respond to communications from the trademark

authorities, to contest an initial refusal, and to appeal judicially a final refusal to

register;

 

(c) an opportunity for interested parties to petition to oppose a trademark application

or to seek cancellation of a trademark after it has been registered; and

 

(d) a requirement that decisions in opposition or cancellation proceedings be reasoned

and in writing.

 

7. Each Party shall provide, to the maximum degree practical, a system for the electronic

application, processing, registration, and maintenance of trademarks, and work to provide, to the

maximum degree practical, a publicly available electronic database – including an on-line

database – of trademark applications and registrations.   

 

8. (a) Each Party shall provide that each registration or publication that concerns a

trademark application or registration and that indicates goods or services shall

indicate the goods or services by their common names, grouped according to the

classes of the classification established by the Nice Agreement Concerning the

International Classification of Goods and Services for the Purposes of the

Registration of Marks (1979), as revised and amended (Nice Classification).

 

(b) Each Party shall provide that goods or services may not be considered as being

similar to each other solely on the ground that, in any registration or publication,

they appear in the same class of the Nice Classification.  Conversely, each Party

shall provide that goods or services may not be considered as being dissimilar

from each other solely on the ground that, in any registration or publication, they

appear in different classes of the Nice Classification.

 

9. Each Party shall provide that initial registration and each renewal of registration of a

trademark shall be for a term of no less than ten years.

 

 

 

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10. No Party may require recordal of trademark licenses to establish the validity of the

license, to assert any rights in a trademark, or for other purposes.7

Article 15.3:  Geographical Indications

Definition

 

1. For purposes of this Article, geographical indications are indications that identify a good

as originating in the territory of a Party, or a region or locality in that territory, where a given

quality, reputation, or other characteristic of the good is essentially attributable to its

geographical origin.  Any sign or combination of signs, in any form whatsoever, shall be eligible

to be a geographical indication.

 

Procedures with Respect to Geographical Indications

 

2. Each Party shall provide the legal means to identify8 and protect geographical indications

of the other Parties that meet the criteria of paragraph 1.  Each Party shall provide the means for

persons of another Party to apply for protection or petition for recognition of geographical

indications.  Each Party shall accept applications and petitions from persons of another Party

without the requirement for intercession by that Party on behalf of its persons.  

 

3. Each Party shall process applications or petitions, as the case may be, for geographical

indications with a minimum of formalities. 

 

4. Each Party shall make its regulations governing filing of such applications or petitions, as

the case may be, readily available to the public. 

 

5. Each Party shall ensure that applications or petitions, as the case may be, for geographical

indications are published for opposition, and shall provide procedures for opposing geographical

indications that are the subject of applications or petitions.  Each Party shall also provide

procedures to cancel any registration resulting from an application or a petition.

 

6. Each Party shall ensure that measures governing the filing of applications or petitions, as

the case may be, for geographical indications set out clearly the procedures for these actions. 

Each Party shall make available contact information sufficient to allow (a) the general public to

obtain guidance concerning the procedures for filing applications or petitions and the processing

of those applications or petitions in general; and (b) applicants, petitioners, or their

 

7

  A Party may establish a means to allow licensees to record licenses for the purpose of providing notice to the

public as to the existence of the license.  However, no Party may make notice to the public a requirement for

asserting any rights under the license.

8

  For purposes of this paragraph, legal means to identify means a system that permits applicants to provide

information on the quality, reputation, or other characteristics of the asserted geographical indication.

 

 

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representatives to ascertain the status of, and to obtain procedural guidance concerning, specific

applications and petitions.

 

Relationship between Trademarks and Geographical Indications

 

7. Each Party shall ensure that grounds for refusing protection or recognition of a

geographical indication include the following:

 

(a) the geographical indication is likely to be confusingly similar to a trademark that

is the subject of a good-faith pending application or registration; and

 

(b) the geographical indication is likely to be confusingly similar to a pre-existing

trademark, the rights to which have been acquired in accordance with the Party’s

law.9

 

Article 15.4:  Domain Names on the Internet

 

1. In order to address trademark cyber-piracy, each Party shall require that the management

of its country-code top-level domain (ccTLD) provides an appropriate procedure for the

settlement of disputes based on the principles established in the Uniform Domain-Name Dispute-

Resolution Policy.  

 

2. Each Party shall require that the management of its ccTLD provides on-line public access

to a reliable and accurate database of contact information for domain-name registrants.  In

determining the appropriate contact information, the management of a Party’s ccTLD may give

due regard to the Party’s laws protecting the privacy of its nationals.

 

Article 15.5:  Obligations Pertaining to Copyright and Related Rights 

 

1. Each Party shall provide that authors, performers, and producers of phonograms10 have

the right11 to authorize or prohibit all reproductions of their works, performances, or

 

9

  For purposes of this paragraph, the Parties understand that each Party has already established grounds for refusing

protection of a trademark under its law, including that (a) the trademark is likely to be confusingly similar to a

geographical indication that is the subject of a registration; and (b) the trademark is likely to be confusingly similar

to a pre-existing geographical indication, the rights to which have been acquired in accordance with the Party’s law.

10

  References in this Chapter to “authors, performers, and producers of phonograms” include any successors in

interest. 

11

  With respect to copyrights and related rights in this Chapter, a right to authorize or prohibit or a right to authorize

means an exclusive right.

 

 

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phonograms, in any manner or form, permanent or temporary (including temporary storage in

electronic form).12 

 

2. Each Party shall provide to authors, performers, and producers of phonograms the right to

authorize the making available to the public of the original and copies of their works,

performances, and phonograms13 through sale or other transfer of ownership.

 

3. In order to ensure that no hierarchy is established between rights of authors, on the one

hand, and rights of performers and producers of phonograms, on the other hand, each Party shall

establish that in cases where authorization is needed from both the author of a work embodied in

a phonogram and a performer or producer owning rights in the phonogram, the need for the

authorization of the author does not cease to exist because the authorization of the performer or

producer is also required.  Likewise, each Party shall establish that in cases where authorization

is needed from both the author of a work embodied in a phonogram and of a performer or

producer owning rights in the phonogram, the need for the authorization of the performer or

producer does not cease to exist because the authorization of the author is also required.   

 

4. Each Party shall provide that, where the term of protection of a work (including a

photographic work), performance, or phonogram is to be calculated:

 

(a) on the basis of the life of a natural person, the term shall be not less than the life

of the author and 70 years after the author’s death; and

 

(b) on a basis other than the life of a natural person, the term shall be:  

 

(i) not less than 70 years from the end of the calendar year of the first

authorized publication of the work, performance, or phonogram, or 

 

(ii)  failing such authorized publication within 50 years from the creation of

the work, performance, or phonogram, not less than 70 years from the end

of the calendar year of the creation of the work, performance, or

phonogram.

 

5. Each Party shall apply the provisions of Article 18 of the Berne Convention and Article

14.6 of the TRIPS Agreement, mutatis mutandis, to the subject matter, rights, and obligations

provided for in this Article and Articles 15.6 and 15.7. 

 

 

12

  The Parties understand that the reproduction right as set out in this paragraph and in Article 9 of the Berne

Convention for the Protection of Literary and Artistic Works (1971) (Berne Convention) and the exceptions

permitted under the Berne Convention and Article 15.5.10(a) fully apply in the digital environment, in particular to

the use of works in digital form.

13

  With respect to copyright and related rights in this Chapter, a “performance” refers to a performance fixed in a

phonogram, unless otherwise specified.

 

 

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6. Each Party shall provide that for copyright and related rights:

 

(a) any person acquiring or holding any economic right in a work, performance, or

phonogram may freely and separately transfer such right by contract; and

 

(b) any person acquiring or holding any such economic right by virtue of a contract,

including contracts of employment underlying the creation of works and

performances, and production of phonograms, shall be able to exercise such right

in that person’s own name and enjoy fully the benefits derived from such right.

 

7. (a) In order to provide adequate legal protection and effective legal remedies against

the circumvention of effective technological measures that authors, performers,

and producers of phonograms use in connection with the exercise of their rights

and that restrict unauthorized acts in respect of their works, performances, and

phonograms, each Party shall provide that any person who:

 

(i) circumvents without authority any effective technological measure that

controls access to a protected work, performance, phonogram, or other

subject matter; or   

 

(ii) manufactures, imports, distributes, offers to the public, provides, or

otherwise traffics in devices, products, or components, or offers to the

public or provides services, that:

 

(A) are promoted, advertised, or marketed for the purpose of

circumvention of any effective technological measure; or

 

(B) have only a limited commercially significant purpose or use other

than to circumvent any effective technological measure; or

 

(C) are primarily designed, produced, or performed for the purpose of

enabling or facilitating the circumvention of any effective

technological measure,

 

shall be liable and subject to the remedies provided for in Article 15.11.14.  Each

Party shall provide for criminal procedures and penalties to be applied when any

person, other than a nonprofit library, archive, educational institution, or public

non-commercial broadcasting entity, is found to have engaged willfully and for

purposes of commercial advantage or private financial gain in any of the

foregoing activities.

 

(b) In implementing subparagraph (a), no Party shall be obligated to require that the

design of, or the design and selection of parts and components for, a consumer

electronics, telecommunications, or computing product provide for a response to

 

 

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any particular technological measure, so long as the product does not otherwise

violate any measures implementing subparagraph (a).

 

(c) Each Party shall provide that a violation of a measure implementing this

paragraph is a separate civil cause of action or criminal offense, independent of

any infringement that might occur under the Party’s law on copyright and related

rights.   

 

(d) Each Party shall confine exceptions to any measures implementing the prohibition

in subparagraph (a)(ii) on technology, products, services, or devices that

circumvent effective technological measures that control access to, and, in the

case of clause (i), that protect any of the exclusive rights of copyright or related

rights in, a protected work, performance, or phonogram referred to in

subparagraph (a)(ii), to the following activities, provided that they do not impair

the adequacy of legal protection or the effectiveness of legal remedies against the

circumvention of effective technological measures:

 

(i) noninfringing reverse engineering activities with regard to a lawfully

obtained copy of a computer program, carried out in good faith with

respect to particular elements of that computer program that have not been

readily available to the person engaged in those activities, for the sole

purpose of achieving interoperability of an independently created

computer program with other programs;

 

(ii) noninfringing good faith activities, carried out by an appropriately

qualified researcher who has lawfully obtained a copy, unfixed

performance or display of a work, performance, or phonogram, and who

has made a good faith effort to obtain authorization for such activities, to

the extent necessary for the sole purpose of identifying and analyzing

flaws and vulnerabilities of technologies for scrambling and descrambling

of information;

(iii) the inclusion of a component or part for the sole purpose of preventing the

access of minors to inappropriate on-line content in a technology, product,

service, or device that itself is not prohibited under the measures

implementing subparagraph (a)(ii); and

(iv) noninfringing good faith activities that are authorized by the owner of a

computer, computer system, or computer network for the sole purpose of

testing, investigating, or correcting the security of that computer, computer

system, or computer network.

 

(e) Each Party shall confine exceptions to any measures implementing the prohibition

referred to in subparagraph (a)(i) to the activities listed in subparagraph (d) and

the following activities, provided that they do not impair the adequacy of legal

 

 

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protection or the effectiveness of legal remedies against the circumvention of

effective technological measures:

 

(i) access by a nonprofit library, archive, or educational institution to a work,

performance, or phonogram, not otherwise available to it, for the sole

purpose of making acquisition decisions;

 

(ii) noninfringing activities for the sole purpose of identifying and disabling a

capability to carry out undisclosed collection or dissemination of

personally identifying information reflecting the on-line activities of a

natural person in a way that has no other effect on the ability of any person

to gain access to any work; and

 

(iii) noninfringing uses of a work, performance, or phonogram, in a particular

class of works, performances, or phonograms, when an actual or likely

adverse impact on those noninfringing uses is demonstrated in a legislative

or administrative proceeding by substantial evidence; provided that in

order for any such exception to remain in effect for more than four years, a

Party must conduct a review before the expiration of the four-year period

and at intervals of at least every four years thereafter, pursuant to which it

is demonstrated in such a proceeding by substantial evidence that there is a

continuing actual or likely adverse impact on the particular noninfringing

use.  

 

(f) Each Party may provide exceptions to any measures implementing the

prohibitions referred to in subparagraph (a) for lawfully authorized activities

carried out by government employees, agents, or contractors for law enforcement,

intelligence, essential security, or similar governmental purposes. 

 

(g) Effective technological measure means any technology, device, or component

that, in the normal course of its operation, controls access to a protected work,

performance, phonogram, or other protected subject matter, or protects any

copyright or any rights related to copyright.

 

8. In order to provide adequate legal protection and effective legal remedies to protect rights

management information:

 

(a) Each Party shall provide that any person who, without authority, and knowing, or,

with respect to civil remedies, having reasonable grounds to know, that it would

induce, enable, facilitate, or conceal an infringement of any copyright or related

right, 

 

(i) knowingly removes or alters any rights management information;   

 

 

 

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(ii) distributes or imports for distribution rights management information

knowing that the rights management information has been removed or

altered without authority; or

 

(iii) distributes, imports for distribution, broadcasts, communicates or makes

available to the public copies of works, performances, or phonograms,

knowing that rights management information has been removed or altered

without authority,

 

shall be liable and subject to the remedies provided for in Article 15.11.14. Each

Party shall provide for criminal procedures and penalties to be applied when any

person, other than a nonprofit library, archive, educational institution, or public

non-commercial broadcasting entity, is found to have engaged willfully and for

purposes of commercial advantage or private financial gain in any of the

foregoing activities.  

 

(b) Each Party shall confine exceptions to measures implementing subparagraph (a)

to lawfully authorized activities carried out by government employees, agents, or

contractors for law enforcement, intelligence, national defense, essential security,

or similar governmental purposes. 

 

(c) Rights management information means:

 

(i) information that identifies a work, performance, or phonogram, the author

of the work, the performer of the performance, or the producer of the

phonogram, or the owner of any right in the work, performance, or

phonogram; or 

 

(ii) information about the terms and conditions of the use of the work,

performance, or phonogram; or

 

(iii) any numbers or codes that represent such information, 

 

when any of these items is attached to a copy of the work, performance, or

phonogram or appears in connection with the communication or making available

of a work, performance, or phonogram to the public.  Nothing in this paragraph

shall obligate a Party to require the owner of any right in the work, performance,

or phonogram to attach rights management information to copies of the work,

performance, or phonogram, or to cause rights management information to appear

in connection with a communication of the work, performance, or phonogram to

the public.

 

9. In order to confirm that all agencies at the central level of government use computer

software only as authorized, each Party shall issue appropriate laws, orders, regulations, or

 

 

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decrees to actively regulate the acquisition and management of software for such use.  These

measures may take the form of procedures such as preparing and maintaining inventories of

software on agency computers and inventories of software licenses.

 

10. (a) With respect to Articles 15.5, 15.6, and 15.7, each Party shall confine limitations

or exceptions to exclusive rights to certain special cases that do not conflict with a

normal exploitation of the work, performance, or phonogram, and do not

unreasonably prejudice the legitimate interests of the right holder.

 

(b) Notwithstanding subparagraph (a) and Article 15.7.3(b), no Party may permit the

retransmission of television signals (whether terrestrial, cable, or satellite) on the

Internet without the authorization of the right holder or right holders of the

content of the signal and, if any, of the signal. 

Article 15.6:  Obligations Pertaining Specifically to Copyright

Without prejudice to Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii), and

14bis(1) of the Berne Convention, each Party shall provide to authors the exclusive right to

authorize or prohibit the communication to the public of their works, directly or indirectly, by

wire or wireless means, including the making available to the public of their works in such a way

that members of the public may access these works from a place and at a time individually

chosen by them.

Article 15.7:  Obligations Pertaining Specifically to Related Rights 

1. Each Party shall accord the rights provided for in this Chapter with respect to performers

and producers of phonograms to the performers and producers of phonograms who are nationals

of another Party and to performances or phonograms first published or fixed in the territory of a

Party.  A performance or phonogram shall be considered first published in the territory of a Party

in which it is published within 30 days of its original publication.14

 

2. Each Party shall provide to performers the right to authorize or prohibit:

 

(a) the broadcasting and communication to the public of their unfixed performances

except where the performance is already a broadcast performance; and 

 

(b) the fixation of their unfixed performances.

 

3. (a) Each Party shall provide to performers and producers of phonograms the right to

authorize or prohibit the broadcasting or any communication to the public of their

performances or phonograms, by wire or wireless means,  including the making

available to the public of those performances and phonograms in such a way that

 

14

  For purposes of this Article, fixation includes the finalization of the master tape or its equivalent.

 

 

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members of the public may access them from a place and at a time individually

chosen by them.  

 

(b) Notwithstanding subparagraph (a) and Article 15.5.10, the application of this right

to traditional free over-the-air noninteractive broadcasting, and exceptions or

limitations to this right for such broadcasting, shall be a matter of domestic law.  

 

(c) Each Party may adopt limitations to this right in respect of other noninteractive

transmissions in accordance with Article 15.5.10, provided that the limitations do

not prejudice the right of the performer or producer of phonograms to obtain

equitable remuneration.

 

4. No Party may subject the enjoyment and exercise of the rights of performers and

producers of phonograms provided for in this Chapter to any formality.

 

5. For purposes of this Article and Article 15.5, the following definitions apply with respect

to performers and producers of phonograms:

 

(a) performers means actors, singers, musicians, dancers, and other persons who act,

sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic

works or expressions of folklore; 

 

(b) phonogram means the fixation of the sounds of a performance or of other sounds,

or of a representation of sounds, other than in the form of a fixation incorporated

in a cinematographic or other audiovisual work;

 

(c) fixation means the embodiment of sounds, or of the representations thereof, from

which they can be perceived, reproduced, or communicated through a device; 

 

(d) producer of a phonogram means the person, or the legal entity, who or which

takes the initiative and has the responsibility for the first fixation of the sounds of

a performance or other sounds, or the representations of sounds; 

 

(e) publication of a performance or a phonogram means the offering of copies of the

fixed performance or the phonogram to the public, with the consent of the right

holder, and provided that copies are offered to the public in reasonable quantity;

 

(f) broadcasting means the transmission by wireless means or satellite to the public

of sounds or sounds and images, or of the representations thereof, including

wireless transmission of encrypted signals where the means for decrypting are

provided to the public by the broadcasting organization or with its consent; and

 

(g) communication to the public of a performance or a phonogram means the

transmission to the public by any medium, otherwise than by broadcasting, of

 

 

15-15

sounds of a performance or the sounds or the representations of sounds fixed in a

phonogram.  For purposes of paragraph 3, “communication to the public”

includes making the sounds or representations of sounds fixed in a phonogram

audible to the public.

Article 15.8:  Protection of Encrypted Program-Carrying Satellite Signals 

1. Each Party shall make it a criminal offense:

 

(a) to manufacture, assemble, modify, import, export, sell, lease, or otherwise

distribute a tangible or intangible device or system, knowing or having reason to

know that the device or system is primarily of assistance in decoding an encrypted

program-carrying satellite signal without the authorization of the lawful

distributor of such signal; and

 

(b) willfully to receive and further distribute a program-carrying signal that originated

as an encrypted satellite signal knowing that it has been decoded without the

authorization of the lawful distributor of the signal. 

 

2. Each Party shall provide for civil remedies, including compensatory damages, for any

person injured by any activity described in paragraph 1, including any person that holds an

interest in the encrypted programming signal or its content.

Article 15.9:  Patents

1. Each Party shall make patents available for any invention, whether a product or a process,

in all fields of technology, provided that the invention is new, involves an inventive step, and is

capable of industrial application.  For purposes of this Article, a Party may treat the terms

“inventive step” and “capable of industrial application” as being synonymous with the terms

“non-obvious” and “useful,” respectively. 

 

2. Nothing in this Chapter shall be construed to prevent a Party from excluding inventions

from patentability as set out in Articles 27.2 and 27.3 of the TRIPS Agreement.  Notwithstanding

the foregoing, any Party that does not provide patent protection for plants by the date of entry

into force of this Agreement shall undertake all reasonable efforts to make such patent protection

available.  Any Party that provides patent protection for plants or animals on or after the date of

entry into force of this Agreement shall maintain such protection.

 

3. A Party may provide limited exceptions to the exclusive rights conferred by a patent,

provided that such exceptions do not unreasonably conflict with a normal exploitation of the

patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking

account of the legitimate interests of third parties. 

 

4. Without prejudice to Article 5.A(3) of the Paris Convention, each Party shall provide that

a patent may be revoked or cancelled only on grounds that would have justified a refusal to grant

 

 

15-16

the patent.  However, a Party may also provide that fraud, misrepresentation, or inequitable

conduct may be the basis for revoking, canceling, or holding a patent unenforceable.  

 

5. Consistent with paragraph 3, if a Party permits a third person to use the subject matter of

a subsisting patent to generate information necessary to support an application for marketing

approval of a pharmaceutical or agricultural chemical product, that Party shall provide that any

product produced under such authority shall not be made, used, or sold in the territory of that

Party other than for purposes related to generating information to meet requirements for approval

to market the product once the patent expires, and if the Party permits exportation, the product

shall only be exported outside the territory of that Party for purposes of meeting marketing

approval requirements of that Party.

 

6. (a) Each Party, at the request of the patent owner, shall adjust the term of a patent to

compensate for unreasonable delays that occur in granting the patent.  For

purposes of this paragraph, an unreasonable delay shall at least include a delay in

the issuance of the patent of more than five years from the date of filing of the

application in the territory of the Party, or three years after a request for

examination of the application has been made, whichever is later, provided that

periods attributable to actions of the patent applicant need not be included in the

determination of such delays.

 

(b) With respect to any pharmaceutical product that is covered by a patent, each Party

shall make available a restoration of the patent term to compensate the patent

owner for unreasonable curtailment of the effective patent term resulting from the

marketing approval process related to the first commercial marketing of the

product in that Party.

 

7. Each Party shall disregard information contained in public disclosures used to determine

if an invention is novel or has an inventive step if the public disclosure (a) was made or

authorized by, or derived from, the patent applicant, and (b) occurred within 12 months prior to

the date of filing of the application in the territory of the Party. 

 

8. Each Party shall provide patent applicants with at least one opportunity to submit

amendments, corrections, and observations in connection with their applications.

 

9. Each Party shall provide that a disclosure of a claimed invention shall be considered to be

sufficiently clear and complete if it provides information that allows the invention to be made

and used by a person skilled in the art, without undue experimentation, as of the filing date.

 

10. Each Party shall provide that a claimed invention is sufficiently supported by its

disclosure if the disclosure reasonably conveys to a person skilled in the art that the applicant

was in possession of the claimed invention as of the filing date.

 

 

 

15-17

                                               

11. Each Party shall provide that a claimed invention is industrially applicable if it has a

specific, substantial, and credible utility. 

Article 15.10:  Measures Related to Certain Regulated Products

1. (a) If a Party requires, as a condition of approving the marketing of a new

pharmaceutical or agricultural chemical product, the submission of undisclosed

data concerning safety or efficacy, the Party shall not permit third persons,

without the consent of the person who provided the information, to market a

product on the basis of (1) the information, or (2) the approval granted to the

person who submitted the information for at least five years for pharmaceutical

products and ten years for agricultural chemical products from the date of

approval in the Party.15 

 

(b) If a Party permits, as a condition of approving the marketing of a new

pharmaceutical or agricultural chemical product, third persons to submit evidence

concerning the safety or efficacy of a product that was previously approved in

another territory, such as evidence of prior marketing approval, the Party shall not

permit third persons, without the consent of the person who previously obtained

such approval in the other territory, to obtain authorization or to market a product

on the basis of (1) evidence of prior marketing approval in the other territory, or

(2) information concerning safety or efficacy that was previously submitted to

obtain marketing approval in the other territory, for at least five years for

pharmaceutical products and ten years for agricultural chemical products from the

date approval was granted in the Party’s territory to the person who received

approval in the other territory.  In order to receive protection under this

subparagraph, a Party may require that the person providing the information in the

other territory seek approval in the territory of the Party within five years after

obtaining marketing approval in the other territory. 

(c) For purposes of this paragraph, a new product is one that does not contain a

chemical entity that has been previously approved in the territory of the Party.

 

(d) For purposes of this paragraph, each Party shall protect such undisclosed

information against disclosure except where necessary to protect the public, and

no Party may consider information accessible within the public domain as

undisclosed data.  Notwithstanding the foregoing, if any undisclosed information

concerning safety and efficacy submitted to a Party, or an entity acting on behalf

of a Party, for purposes of obtaining marketing approval is disclosed by such

 

15

  Where a Party, on the date it implemented the TRIPS Agreement, had in place a system for protecting

pharmaceutical or agricultural chemical products not involving new chemical entities from unfair commercial use

that conferred a period of protection shorter than that specified in paragraph 1, that Party may retain such system

notwithstanding the obligations of paragraph 1.

 

 

15-18

entity, the Party is still required to protect such information from unfair

commercial use in the manner set forth in this Article.

 

2. Where a Party permits, as a condition of approving the marketing of a pharmaceutical

product, persons, other than the person originally submitting safety or efficacy information, to

rely on evidence or information concerning the safety and efficacy of a product that was

previously approved, such as evidence of prior marketing approval in the territory of a Party or

in another country, that Party:

 

(a) shall implement measures in its marketing approval process to prevent such other

persons from marketing a product covered by a patent claiming the previously

approved product or its approved use during the term of that patent, unless by

consent or acquiescence of the patent owner; and

 

(b) shall provide that the patent owner shall be informed of the request and the

identity of any such other person who requests approval to enter the market during

the term of a patent identified as claiming the approved product or its approved

use.

Article 15.11:  Enforcement of Intellectual Property Rights

General Obligations

 

1. Each Party understands that procedures and remedies required under this Article for

enforcement of intellectual property rights are established in accordance with: 

 

(a) the principles of due process that each Party recognizes; and 

 

(b) the foundations of its own legal system.

 

2. This Article does not create any obligation:

 

(a) to put in place a judicial system for the enforcement of intellectual property rights

distinct from that for the enforcement of law in general; or 

 

(b) with respect to the distribution of resources for the enforcement of intellectual

property rights and the enforcement of law in general.

 

The Parties understand that the decisions that a Party makes on the distribution of enforcement

resources shall not excuse that Party from complying with this Chapter.

 

3. Each Party shall provide that final judicial decisions or administrative rulings of general

applicability pertaining to the enforcement of intellectual property rights shall be in writing and

shall state any relevant findings of fact and the reasoning or the legal basis on which the

decisions and rulings are based.  Each Party shall provide that such decisions or rulings shall be

 

 

15-19

                                               

published,16 or where such publication is not practicable, otherwise made publicly available, in a

national language in such a manner as to enable governments and right holders to become

acquainted with them. 

 

4. Each Party shall publicize information that it may collect on its efforts to provide

effective enforcement of intellectual property rights in its civil, administrative, and criminal

system, including any statistical information. 

 

5. In civil, administrative, and criminal proceedings involving copyright or related rights,

each Party shall provide that:

 

(a) the person whose name is indicated as the author, producer, performer, or

publisher of the work, performance, or phonogram in the usual manner, shall, in

the absence of proof to the contrary, be presumed to be the designated right holder

in such work, performance, or phonogram; and

 

(b) it shall be presumed, in the absence of proof to the contrary, that the copyright or

related right subsists in such subject matter. 

 

Civil and Administrative Procedures and Remedies

 

6. Each Party shall make available to right holders17 civil judicial procedures concerning the

enforcement of any intellectual property right.

 

7. Each Party shall provide that:

 

(a) in civil judicial proceedings concerning the enforcement of intellectual property

rights, 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; and 

 

(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 and are not taken into account in computing the amount

of the damages referred to in clause (i); and 

 

16

  A Party may satisfy the requirement for publication by making the document available to the public on the

Internet. 

17

  For the purpose of this Article, the term “right holder” shall include federations and associations as well as

exclusive licensees and other duly authorized licensees, as appropriate, having the legal standing and authority to

assert such rights.  The term “licensee” shall include the licensee of any one or more of the exclusive intellectual

property rights encompassed in a given intellectual property.

 

 

15-20

 

(b) in determining damages for infringement of intellectual property rights, its judicial

authorities shall consider, inter alia, the value of the infringed-upon good or

service based on the suggested retail price or other legitimate measure of value

that the right holder presents. 

 

8. In civil judicial proceedings, each Party shall, at least with respect to civil judicial

proceedings concerning copyright or related rights infringement and trademark counterfeiting,

establish or maintain pre-established damages as an alternative to actual damages.  Such pre-

established damages shall be set out in domestic law and determined by the judicial authorities in

an amount sufficient to compensate the right holder for the harm caused by the infringement and

constitute a deterrent to future infringements.

 

9. 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 and trademark counterfeiting, that the prevailing party

shall be awarded payment of court costs or fees and reasonable attorney’s fees by the losing

party.  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 be awarded payment of reasonable

attorney’s fees by the losing party.

 

10. In civil judicial proceedings concerning copyright or related right infringement and

trademark counterfeiting, each Party shall provide that its judicial authorities shall have the

authority to order the seizure of suspected infringing goods, any related materials and

implements, and, at least for trademark counterfeiting, documentary evidence relevant to the

infringement.

 

 

 

15-21

11. Each Party shall provide that:

 

(a) its judicial authorities shall have the authority to order, at their discretion, the

destruction of the goods that have been found to be pirated or counterfeit;

 

(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.  In considering requests for such destruction, the Party’s judicial

authorities may take into account, inter alia, the gravity of the infringement, as

well as the interests of third parties holding ownership, possessory, contractual, or

secured interests;

 

(c) the charitable donation of counterfeit trademark goods and goods that infringe

copyright and related rights shall not be ordered by the judicial authorities without

the authorization of the right holder, except that counterfeit trademark goods may

in appropriate cases be donated to charity for use outside the channels of

commerce when the removal of the trademark eliminates the infringing

characteristic of the good and the good is no longer identifiable with the removed

trademark.  In no case shall the simple removal of the trademark unlawfully

affixed be sufficient to permit the release of goods into the channels of commerce.

 

12. 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 any information that the infringer possesses regarding any person involved in any

aspect of the infringement and regarding the means of production or distribution channel for the

infringing goods or services, including the identification of third persons that are involved in

their production and distribution and their distribution channels, and to provide this information

to the right holder.  Each Party shall provide that its judicial authorities shall have the authority

to impose sanctions, in appropriate cases, on a party to a proceeding that fails to abide by valid

orders issued by such authorities. 

 

13. 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 provided for in this Chapter.

 

14. Each Party shall provide for civil remedies against the acts described in Article 15.5.7

and 15.5.8.  Available civil remedies shall include at least:

 

(a) provisional measures, including seizure of devices and products suspected of

being involved in the prohibited activity;  

 

 

 

15-22

(b) actual damages (plus any profits attributable to the prohibited activity not taken

into account in computing the actual damages) or pre-established damages as

provided in paragraph 8;

 

(c) payment to the prevailing right holder, at the conclusion of civil judicial

proceedings, of court costs and fees and reasonable attorney’s fees by the party

engaged in the prohibited conduct; and

 

(d) destruction of devices and products found to be involved in the prohibited

activity, at the discretion of the judicial authorities, as provided in subparagraphs

(a) and (b) of paragraph 11.   

 

No Party may make damages available against a nonprofit library, archives, educational

institution, or public 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. 

 

15. 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, inter alia, to prevent the entry into the channels of commerce in

their jurisdiction of imported goods that involve the infringement of an intellectual property

right, immediately after customs clearance of such goods or to prevent their exportation.

 

16. In the event that a Party’s judicial or other authorities appoint technical or other experts

in civil proceedings concerning the enforcement of intellectual property rights and require that

the parties 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.

 

Provisional Measures

 

17. Each Party shall act on requests for relief inaudita altera parte and execute such requests

expeditiously, in accordance with its rules of judicial procedure. 

 

18. Each Party shall provide that its judicial authorities shall have the authority to require the

plaintiff to provide any reasonably available evidence in order to satisfy themselves with a

sufficient degree of certainty that the plaintiff’s 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. 

 

19. In proceedings concerning the grant of provisional measures in relation to enforcement of

a patent, each Party shall provide for a rebuttable presumption that the patent is valid.

 

Special Requirements Related to Border Measures

 

 

15-23

                                               

 

20. Each Party shall provide that any right holder initiating procedures for its competent

authorities to suspend the release of suspected counterfeit or confusingly similar trademark

goods, or pirated copyright goods18 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’s knowledge

to make the suspected goods reasonably recognizable by the competent authorities.  The

requirement to provide sufficient information shall not unreasonably deter recourse to these

procedures.  

 

21. Each Party shall provide that its competent authorities shall have the authority to require

a right holder initiating procedures for suspension to provide a reasonable security or equivalent

assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. 

Such security or equivalent assurance shall not unreasonably deter recourse to these procedures. 

Each Party shall provide that such security may take a form of an instrument issued by a

financial services provider 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.

 

22. Where its competent authorities have made a determination that goods are counterfeit or

pirated, a Party shall grant its competent authorities the authority to inform the right holder of the

names and addresses of the consignor, the importer, and the consignee, and of the quantity of the

goods in question.

 

23. Each Party shall provide that its competent authorities may initiate border measures ex

officio, with respect to imported, exported, or in-transit merchandise suspected of infringing an

intellectual property right, without the need for a formal complaint from a private party or right

holder.   

 

24. Each Party shall provide that goods that have been determined to be pirated or counterfeit

by its competent authorities shall be destroyed, pursuant as appropriate to judicial order, unless

the right holder consents to an alternate disposition, except that counterfeit trademark goods may

 

18

  For purposes of paragraphs 20 through 25:

counterfeit trademark goods means any goods, including packaging, bearing without authorization a trademark

which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in

its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in

question under the law of the country of importation; and

pirated copyright goods means any goods which are copies made without the consent of the right holder or person

duly authorized by the right holder in the country of production and which are made directly or indirectly from an

article where the making of that copy would have constituted an infringement of a copyright or a related right under

the law of the country of importation. 

 

 

15-24

                                               

in appropriate cases be donated to charity for use outside the channels of commerce, when the

removal of the trademark eliminates the infringing characteristic of the good and the good is no

longer identifiable with the removed trademark.  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 to permit the exportation of counterfeit or pirated goods or to permit such goods to be

subject to other customs procedures, except in exceptional circumstances.

 

25. Each Party shall provide that where an application fee or merchandise storage fee is

assessed in connection with border measures to enforce an intellectual property right, the fee

shall not be set at an amount that unreasonably deters recourse to such measures.

 

Criminal Procedures and Remedies

 

26. (a) 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 significant willful infringements of copyright or related

rights, for purposes of commercial advantage or private financial gain, as well as

willful infringements that have no direct or indirect motivation of financial gain,

provided that there is more than a de minimis financial harm.  Each Party shall

treat willful importation or exportation of counterfeit or pirated goods as unlawful

activities and provide for criminal penalties to the same extent as the trafficking

or distribution of such goods in domestic commerce.19 

 

 (b) Specifically, each Party shall provide:

 

(i) remedies that include sentences of imprisonment or monetary fines, or

both, sufficient to provide a deterrent to future acts of infringement.  Each

Party shall establish policies or guidelines that encourage penalties to be

imposed by judicial authorities at levels sufficient to provide a deterrent to

future infringements;

 

(ii) that its judicial authorities shall have the authority to order the seizure of

suspected counterfeit or pirated goods, any related materials and

implements that have been used in the commission of the offense, any

assets traceable to the infringing activity, and any documentary evidence

relevant to the offense.  Each Party shall provide that items that are subject

to seizure pursuant to any such judicial order need not be individually

identified so long as they fall within general categories specified in the

order;

 

19

  A Party may comply with this subparagraph in relation to exportation through its measures concerning

distribution or trafficking.

 

 

15-25

                                               

 

(iii) that its judicial authorities shall have the authority to order, among other

measures, (1) the forfeiture of any assets traceable to the infringing

activity, (2) the forfeiture and destruction of all counterfeit or pirated

goods, without compensation of any kind to the defendant, in order to

prevent the re-entry of counterfeit and pirated goods into channels of

commerce, and (3) with respect to willful copyright or related rights

piracy, the forfeiture and destruction of materials and implements that

have been used in the creation of the infringing goods; and

 

(iv) that its authorities may, at least in cases of suspected trademark

counterfeiting or copyright piracy, conduct investigations or exercise other

enforcement measures ex officio, without the need for a formal complaint

by a private party or right holder, at least for the purpose of preserving

evidence or preventing the continuation of the infringing activity. 

 

Limitations on Liability for Service Providers  

 

27. For the purpose of providing enforcement procedures that permit effective action against

any act of infringement of copyright20 covered under 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 copyright 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 out in this subparagraph.21

 

(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: 

 

(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;

 

20

  For purposes of this paragraph, “copyright” shall also include related rights.

21

  The Parties understand that this subparagraph is without prejudice to the availability of defenses to copyright

infringement that are of general applicability.  

 

 

15-26

 

(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 on-line 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 the function 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 on-line 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’s 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.  

 

 

 

15-27

(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’s 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

on-line 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

 

 

15-28

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’s communications network, each

Party shall provide that such relief shall be available only where the

service provider has received notice and an opportunity to appear before

the Party’s 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 for effective notifications of claimed infringement, and

effective counter-notifications by those whose material is removed or

disabled through mistake or misidentification.  At a minimum, each Party

shall require that an effective notification of claimed infringement be a

written communication, physically or electronically signed by a person

who represents, under penalty of perjury or other criminal penalty, that he

is an authorized representative of a right holder in the material that is

claimed to have been infringed, and containing information that is

reasonably sufficient to enable the service provider to identify and locate

material that the complaining party claims in good faith to be infringing

and to contact that complaining party.  At a minimum, each Party shall

require that an effective counter-notification contain the same information,

mutatis mutandis, as a notification of claimed infringement, and contain a

statement that the subscriber making the counter-notification consents to

the jurisdiction of the courts of the Party.  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 on-line unless

 

 

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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) Service provider means:

 

(A) for purposes of the function referred to in clause (i)(A), a provider

of transmission, routing, or connections for digital on-line

communications without modification of their content between or

among points specified by the user of material of the user’s

choosing; and

 

(B) for purposes of the functions referred to in clause (i)(B) through

(D), a provider or operator of facilities for on-line services or

network access. 

 

Additional Procedures and Remedies 

 

28.  Annex 15.11 applies between the Dominican Republic and the United States.

Article 15.12:  Final Provisions

1. Except as otherwise provided in paragraph 2 and Article 15.1, each Party shall give effect

to this Chapter on the date of entry into force of this Agreement.  

 

2. As specified below, a Party may delay giving effect to certain provisions of this Chapter

for no longer than the periods in this paragraph, beginning on the date of entry into force of the

Agreement: 

 

(a) in the case of Costa Rica:

 

 (i)  with respect to Articles 15.4.1 and 15.9.6, one year;  

 

 (ii) with respect to Article 15.8.1(b), 18 months;

 

 (iii) with respect to Articles 15.3.7 and 15.5.8(a)(ii), two years; 

 

 (iv) with respect to Article 15.11.27, 30 months; 

  and

 

 

 

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(v) with respect to Articles 15.5.7(a)(ii), 15.5.7(e), 15.5.7(f), 15.11.8, and

15.11.14, three years;  

 

(b) in the case of the Dominican Republic:

 

(i)  with respect to Article 15.5.4, six months;

 

 (ii)  with respect to Articles 15.5.9 and 15.9.6, one year; 

 

 (iii) with respect to Article 15.2.1, 18 months;

 

 (iv) with respect to Articles 15.3.7, and 15.11.27, two years; and

 

(v) with respect to Article 15.5.7(a)(ii), 15.5.7(e), and 15.5.7(f), three years.

 

(c) in the case of El Salvador:

 

 (i) with respect to Article 15.11.27, one year; 

 

 (ii) with respect to Article 15.8.1(b), 18 months;

 

 (iii) with respect to Article 15.11.23, two years;

 

 (iv) with respect to Article 15.5.8(a)(ii), 30 months; and 

 

  (v) with respect to Articles 15.5.7(a)(ii), 15.5.7(e), 15.5.7(f), 15.11.8, and

15.11.14, three years;  

 

(d) in the case of Guatemala:

 

(i) with respect to Article 15.5.4, six months;

 

 (ii) with respect to Articles 15.5.9 and 15.9.6, one year; 

 

 (iii) with respect to Article 15.8, 18 months;

 

 (iv) with respect to Articles 15.2.1, 15.3.7, 15.4, 15.5.8(a)(ii), 15.11.20,

15.11.21, 15.11.22, and 15.11.25, two years;

 

 (v) with respect to Article 15.11.27, 30 months; 

 

  (vi) with respect to Articles 15.5.7(a)(ii), 15.5.7(e), 15.5.7(f), 15.11.8,

15.11.14, and 15.11.24, three years; and

 

 

 

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  (vii) with respect to Article 15.11.23, four years;

 

(e) in the case of Honduras:

 

 (i) with respect to Articles 15.5.9 and 15.9.6, one year; 

 

 (ii) with respect to Article 15.8, 18 months;

 

 (iii) with respect to Articles 15.2.1, 15.3.7, 15.4, 15.5.8(a)(ii), 15.11.20,

15.11.21, 15.11.22, and 15.11.25, two years;

 

 (iv) with respect to Article 15.11.27, 30 months; 

 

  (v) with respect to Articles 15.5.7(a)(ii), 15.5.7(e), 15.5.7(f), 15.11.8,

15.11.14, and 15.11.24, three years; and

 

  (vi) with respect to Article 15.11.23, four years; and

 

(f) in the case of Nicaragua:

 

 (i) with respect to Articles 15.5.9 and 15.9.6, one year; 

 

 (ii) with respect to Article 15.8.1(b), 18 months;

 

 (iii) with respect to Articles 15.3.7, 15.4, 15.5.8(a)(ii), 15.11.20, 15.11.21,

15.11.22, and 15.11.25, two years;

 

  (iv) with respect to Articles 15.5.7(a)(ii), 15.5.7(e), 15.5.7(f), 15.11.8,

15.11.14, 15.11.24, and 15.11.27, three years; and

 

  (v) with respect to Article 15.11.23, four years.

 

 

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Annex 15.11

 

Procedures and Remedies Concerning

Broadcast or Cable Transmissions or Retransmissions

in the Dominican Republic

 

 

1. The Dominican Republic reaffirms its commitments under Chapter 15 to the application

of administrative, civil, and criminal procedures and remedies in the case of broadcast or cable

transmissions or retransmissions that are made without the authorization of the right holder or

right holders of the content of the signal and, if any, of the signal.

 

2. The Dominican Republic shall provide that procedures and remedies are set out in its law

for the temporary suspension of concessions or operating licenses, or both, for broadcast or cable

transmissions or retransmissions in cases where the Oficina Nacional de Derecho de Autor

(ONDA) or its other competent authorities determine that transmissions or retransmissions that

are the subject of the concession or operating license have been made without the permission of

the right holder or right holders of the content of the signal and, if any, of the signal.  Such

procedures shall conform to the requirements of Article 15.11 applicable to administrative

enforcement, and shall include:

 

(a) an opportunity for right holders to make written requests to ONDA or other

competent authorities for the temporary or permanent closure of establishments

transmitting the unauthorized broadcast or cable transmissions (pursuant to

Article 187 of the Ley sobre Derecho de Autor, No. 65-00, August 21, 2000,as

implemented by Articles 116.4 and 116.5 of the Reglamento de Aplicación, No.

362-01, March 14, 2001), and for other sanctions available under its law, and to

submit evidence in support of such requests;

 

(b) a requirement that holders of such concessions or operating licenses cooperate

with ONDA or other competent authorities so that investigations and inspections

concerning such a request can take place without delay, including by providing

access to all documents relating to the transmissions or retransmissions; and

 

(c) a requirement that an administrative decision concerning such a request be

rendered expeditiously and not later than 60 days after the date of the request. 

Such decisions shall be in writing and shall state the reasons on which they are

based.  Any closure shall become effective immediately following a decision

requiring such closure.  Temporary closure shall continue in effect for up to 30

days.  Failure to cease transmission or retransmission following closure shall be

considered a violation classified under Article 105(d) of the Ley General de

Telecomunicaciones, No. 153-98, May 27, 1998, and shall be subject to all

available sanctions authorized by that law.

 

 

 

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The Dominican Republic shall further provide that ONDA or other competent authorities may

initiate procedures for the temporary or permanent closure of establishments transmitting the

unauthorized broadcast or cable transmissions and other sanctions available under national law

ex officio, without the need for a written request from a private party or right holder.

 

3. The Dominican Republic shall provide that ONDA and its other competent authorities

shall have sufficient resources to carry out the actions described in paragraph 2, and hereby

reaffirms its obligations under Article 15.11.2(b).

 

4. INDOTEL shall exercise the powers conferred on it by the Ley General de

Telecomunicaciones No. 153-98 to address copyright infringement in appropriate cases,

consistent with the INDOTEL Resolution of January 30, 2004, sanctioning holders of cable

transmission service authorizations who transmitted signals containing protected works or

retransmitted signals issued by the entity originating the transmission without authorization.  If

the level of sanctions imposed in the INDOTEL Resolution of January 30, 2004 is not effective

in eliminating the problem, then INDOTEL shall increase sanctions to an effective level.

 

5. The Dominican Republic shall provide quarterly reporting of progress made in all judicial

actions concerning television broadcasting piracy consistent with the understanding set out in an

exchange of letters between the Dominican Republic and the United States on the date of

signature of this Agreement.