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as a quantification factor will be the multiplicity of offences by a defendant and
the recurrence of similar offences. Article 61 also refers to the deterrent effect of
penalties. This will involve a consideration of the capacity of the defendant to
pay, the incentives for wrongdoing and the likelihood of recurrence.
7.07
Article 61 was analysed in the WTO's Dispute Panel determination in relation
to the US complaint about copyright enforcement in China.
8
The US argued
that China's copyright laws did not apply to copyright piracy on a commercial
scale and therefore were also inconsistent with China's obligations under the
second sentence of that Article to make the necessary remedies 'available' or
sufficient to deter piracy and counterfeiting. The Panel considered it
unnecessary to rule on the question of deterrence as the US had made this claim
contingent upon the outcome of its claims under the first sentence of Art 61 of
the TRIPS Agreement and the Panel ruled that the US had been unable to
establish that China did not impose criminal liability in relation to infringe-
ments on a commercial scale.
9
7.08
The issue of deterrence is also mentioned in Art 41.1 of TRIPS, which requires
that enforcement procedures specified in the Agreement are 'available' so as to
permit 'effective action' against any act of infringement of the IPRs covered by
the Agreement, including 'remedies which constitute a deterrent to further
infringements'. The WTO's Dispute Panel determination in relation to the US
complaint about copyright enforcement in China suggested that enforcement
procedures under Art 41 permitted effective action if they were 'available'.
10
Article 46 of TRIPS, which refers to 'other remedies', provides that in order to
'create an effective deterrent to infringement', the judicial authorities 'shall have
the authority to order that goods that they have found to be infringing be,
without compensation of any sort, disposed of outside the channels of com-
merce in such a manner as to avoid any harm caused to the right holder'. Thus
confiscation of infringing goods seems to be a category of deterrent remedy,
although it is a remedy other than a criminal remedy.
7.09
Footnote 12 to Art 24 provides that 'it is understood that there is no obligation
for a Party to provide for the possibility of imprisonment and monetary fines to
be imposed in parallel'.
8
China -Measures Affecting the Protection and Enforcement of Intellectual Property Rights
, WT/DS362, 26 January
2009, paras 7.670ff.
9
Interestingly, ACTA was characterised as the 'Anti-China Trade Alliance' (Yu, 2011 at 128) (citing Remarks of
Howard P. Knopf, at the 18th Fordham Annual International Intellectual Property and Policy Conference,
Fordham University School of Law, in New York (9 April 2010).
10
China -Measures Affecting the Protection and Enforcement of Intellectual Property Rights
, WT/DS362, 26 January
2009, paras 7.177-7.181.
