Details Emerge of Secret ACTA Negotiation

James Love, Guest Blogger
Knowledge Ecology International
February 4, 2009 

There are plans for the next ACTA negotiation to take place in Rabat, Morocco.  However, since none of the Obama trade people have been placed at USTR, this might be delayed.

The USTR is still maintaining secrecy over details of the negotiation, including the names of participants and all of the proposed texts for negotiations.  Despite this, KEI has obtained some documents related to the negotiations.  We can report the following:

The U.S. and Japan have proposed that willful trademark and copyright infringement on a commercial scale be subject to criminal sanctions, including infringement that has “no direct or indirect motivation of financial gain.” This will further:

include sentences of imprisonment as well as monetary fines sufficiently high to provide a deterrent to future acts of infringement, consistent with a policy of removing the monetary incentive of the infringer

There is a section on “Unauthorized Camcording.” This provides that

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

In the area of Border measures, there is a proposal to delete all references to “in-transit” goods. Another proposal deals with “disclosure of information.”

Article 2.10: Disclosure of Information

With a view to establishing whether an intellectual property right has been infringed under national law and in accordance with national provisions on the protection of personal data, commercial and industrial secrecy and professional and administrative confidentiality, the competent authorities have detained infringing goods, shall inform the right holder of the names and addresses of the consignor, importer, exporter, or consignee, and provide to the right holder a description of the goods, the quantity of the goods, and, if known, the country of origin and name and addresses of producers of the goods.

In another section of the proposed text, a proposal on damages reads as follows:

Article 2.2: Damages

1. Each Party shall provide that in civil judicial proceedings, its judicial authorities on application of the injured party shall have the authority to order the infringer who knowingly or with reasonable grounds to know, engaged in infringing activity of intellectual property rights to pay the right holder damages adequate to compensate for the actual prejudice the right holder has suffered as a result of the infringement, taking into account all appropriate aspects, inter alia, the lost profits, the value of the infringed good or service, measured by the market price, the suggested retail price, unfair profits and elements other than economic factors or other legitimate measure of value submitted by the right holder.

2. As an alternative to paragraph 1, each Party may establish or maintain a system that provides:
(a) pre-established damages, or
(b) presumptions for determining the amount of damages1,

sufficient to compensate [Option US: fully] the right holder for the harm caused by the infringement.2

3. Where the infringer did not knowingly, or with reasonable grounds knows, engage in infringing activity, each Party may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.

4. Each Party shall provide that its judicial authorities shall have the authority to order, at the conclusion of civil judicial proceedings, reasonable and proportionate legal costs and other expenses incurred by the successful party shall be borne by the losing party, unless equity does not allow this..
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fn1 Such measures [Option J: shall][Option US: may] include the presumption that the amount of damages is (i) the quantity of the goods infringing the right holder’s intellectual property right and actually assigned to third persons, multiplied by the amount of profit per unit of goods which would have been sold by the right holder if there had not been the act of infringement or (ii) a reasonable royalty or (iii) a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorization to use the intellectual property right in question.

In terms of injunctions, the ACTA text now includes the following proposal for provisional measures:

Article 2.6: Provisional Measures

1.Each Party shall provide that its judicial authorities shall have the authority, at the request of the applicant issue an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right. An interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right.

The proposed text on injunctions overturns Article 44.2 of the TRIPS and 28 USC 1498 of US Law, as well as several other national laws limiting the use of injunctions (such as the Canada and India limitations on the use of injunctions for architectural plans).

Article 2.7: Injunctions
Each Party shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by domestic law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. The Parties shall also ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right.

U.S. negotiators know, but apparently don’t care, that 28 USC 1498 eliminates the possibility of injunctions for cases where the U.S. government or its contractors infringe patents, copyrights or plant breeder rights.   Canadian negotiators are apparently clueless regarding the Canada copyright law limits to the ability to obtain injunctive relief for architectural works:

“40. (1) Where the construction of a building or other structure that infringes or that infringes or that, if completed, would infringe the copyright in some other work has been commenced, the owner of the copyright is not entitled to obtain an injunction in respect of the construction of that building or structure or to order its demolitions. (2) Sections 38 and 42 do not apply in any case in respect of which subsection (1) applies.  R.S., 1985, c. C-42, s. 40; 1997, c.24, s.21”

U.S. negotiators are also clueless that the U.S. Congress is considering legislation that would eliminate injunctions for certain uses of orphaned copyright works.  (One of the pitfalls of secret negotiations is that the negotiators don’t know enough and lack understanding of the broader ramifications of the texts they are negotiating).

In terms of institutional details, they are proposing a permanent structure, that will include an ACTA Oversight Council, to supervise ACTA implementation, consider amendments, interpretations, and modifications to the agreement, and establish and delegate responsibilities to ad hoc working groups, as well as:

  • assisting with resolving any disputes that may arise regarding the interpretation of application of ACTA;
  • ensuring that ACTA avoids duplication of other international efforts regarding IP enforcement;
  • seeking input from non-governmental persons or groups, particularly with respect to best practices in the field of intellectual property enforcement;
  • endorsing best practice guidelines for implementing ACTA;
  • supporting the efforts of international organizations active in the field of intellectual property enforcement;
  • assisting non-Party governments with developing assessments of the benefits of accession to ACTA; and
  • adopting its own rules of procedure.

These are only a few elements of the negotiation, and the outline suggests a much larger agreement. These proposals are formally available to cleared corporate lobbyists and informally distributed to corporate lawyers and lobbyists in Europe, Japan and the U.S. They are inexcusably secret from the U.S. Public.

If you don’t think this negotiation should take place in secret, contact Senator Leahy, Representative Conyers, Obama IP advisors such as Professor Arti Rai, members of the European Parliament, or people who write editorials.  You could contact the European Commission, I suppose, but do they really want transparency?

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Michael Geist has more here.  Putting Together the ACTA Puzzle: Privacy, P2P Major Targets

 

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