Letter from AmeriKat: ACTA - its baaaa-aaack! (Part II)

Section 4- Criminal Enforcement

The section the AmeriKat highlighted and scribbled on the most was the section on criminal enforcement. Paragraph 1 introduces the concept of willful intellectual property infringement to jurisdictions, unlike the US, that do not already have this concept. It provides:

"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."

Commercial scale includes at least those acts "carried out as commercial activities for direct or indirect economic or commercial advantage." Yes, the good ole "commerical advantage" test. We still do not know what it means under the UK's Copyright Designs and Patents Act 1988 fair dealing provisions and the AmeriKat bets no one will be able to point to exactly what this means. (picture, left - an IP infringer behind bars).

Each Party is required to treat willfull importation or exportation of counterfeit trade mark goods or pirated copyright goods on a commercial scale as unlawful activities subject to criminal penalties. This can include the "distribution, sale or offer for sale of counterfeit trade mark goods or pirated copyright goods on a commercial scale as unlawful activities subject to criminal penalties."

Unlike paragraph 1, paragraph 2 is a provision relating solely to trade mark infringement. It provides that the Parties shall provide for criminal procedures for the willful importation and domestic use, in the course of trade and on a commercial scale, of labels or packaging which is identical or cannot be distinguished from a registered trade mark and which is identical to goods or services for which the trade mark is registered.

Paragraph 3 has another disputed word, this time it is "may". Paragraph 2 reads:

"Each Party may provide criminal procedures and penalties in appropriate cases for the unauthorized copying of cinematographic works from a performance in a motion picture exhibition facility generally open to the public."

The AmeriKat is guessing the Motion Pictures Association of America (MPAA) wanted a "must" not a "may". See earlier Letter regarding MPAA's involvement with ACTA here.

Section 5 - Digital Environment

The section everyone was holding their breath for was the section on the enforcement of intellectual property rights on-line. From previous leaked drafts of the text, the final draft seems far more toned down in the aggressiveness of the earlier versions. In fact there is no longer any definition of "Third-party liability" or notice and takedown and Safe Harbor provisions echoing the US’s Digital Millennium Copyright Act (DMCA) (see this IPKat post that outlines the Safe Harbor provisions in action). The old Section 3 was heavily concerned with the liability of ISPs, which ISPs could avoid if they adopted a three-strike type rule(see previous IPKat post here).

The new Section 5 has generally abandoned these concepts save for the footnote to paragraph 2. This abandonment can only be seen as a failure by the US negotiators during the ACTA rounds. Paragraph 2 provides, with some disputed language, the following:

"Each Party's enforcement procedures shall apply to infringement of at least trademark and copyright or related rights over digital networks, including the unlawful use of means of widespread distribution for infringing purposes. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and consistent with each Party's law, preserves fundamental principles such as freedom of expression, fair process, and privacy."

The footnote to this paragraph suggests that such a procedure could include instances where a Party adopts or maintains a regime providing for limitations of the liability of or the remedies available against ISPs while preserving the legitimate interests of rights holders - i.e., Safe Harbour provisions again, but this time just a suggestion.

Paragraph 4 deals with orders made against ISPs that identify customers who allegedly use their account for infringing "at least trademark and copyrights". The paragraph provides that:

"Each Party may provide, in accordance with its laws and regulations, its competent authorities with the authority to order an on-line service provider to disclose expeditiously to a right holder information sufficient to identify a subscriber whose account was allegedly used for infringement, where that right holder has filed a legally sufficient claim of infringement of at least trademark and copyrights or related rights and where such information is being sought for the purpose of protecting or enforcing at least the right holder's trademark and copyright or related rights. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and, consistent with each Party's law preservers fundamental principles such as freedom of expression, fair process, and privacy."

The AmeriKat is concerned with the use of the words "allegedly used for infringement". The AmeriKat is concerned that the low-threshold of only showing an alleged infringement will allow a procedure open for abuse. Any applicant can allege that any ISP user has infringed an IP right, but absent sufficient evidence supported by concrete technological information that an ISP address did download a music track or offer for sale a counterfeit good this process is open for abuse. There needs to be a requirement for sufficient evidence that satisfies a court about the allegation of infringement, not casual assertions. What does "allegedly' even mean? That the applicant has reason to believe that the user infringed an IP right or that they actually did?

Another curiosity about Section 5 that the AmeriKat knows she and the IPKat both share, is the reference to "at least trademark..." What does this mean? The prior drafts did not include provisions on trademark enforcement,so where did this come from? As the IPKat says "who knows with these non-transparent treaties?" Do any readers have any suggestions?

Conclusion?

The final version of ACTA seems to be a win, albeit an unimpressive win, for critics of the digital section of the Agreement. The most contentious provisions that exported the most-argued aspects of the US's Digital Millennium Copyright Act, those relating to ISP-liability and digital rights management restrictions, have been substantially watered down, but other areas of the Agreement are so vague as to be problematic. The AmeriKat is also concerned to again notice the stark absence of any fair-use or fair-dealing provisions from the Agreement.

Unsurprisingly the Recording Industry Association of America (RIAA) praised the text. RIAA's VP for international affairs, Neil Turkwitz, said in a statement:

"While ACTA does not provide all of the answers about how governments will move forward to tackle online piracy, it is a very important multilateral statement concerning the importance of finding solutions to online theft. It may not be a precise roadmap, but it is a powerful expression of a common vision and unity of purpose."

"It may not be a precise roadmap". No kidding, Neil!

As much as the AmeriKat criticizes the wording, the biggest problem with ACTA is that China has expressed no interest in being a Party to the Agreement. According to the Wall Street Journal almost 80% of all counterfeit goods come from China. So what use is ACTA if the biggest offender is not party to its provisions?

But it is not only China's involvement that is being questioned. Members of the European Parliament have been speaking out against ACTA (see report here) and Mexico's Senate voted last week to withdraw from the negotiations. Although discord is being vocalized, the AmeriKat does not believe that such disquiet will rail-road the Agreement.

The JIPLP's weblog is inviting readers to write to Jeremy about their concerns under ACTA. For more details click here.