The ACTA Guide, Part One: The Talks To-Date

Monday January 25, 2010

The 7th round of Anti-Counterfeiting Trade Agreement negotiations begins tomorrow in
Guadalajara, Mexico. The negotiation round will be the longest to-date, with three and a half days
planned to address civil enforcement, border measures, the Internet provisions, and (one hour for)
transparency. Over the next five days, I plan to post a five-part ACTA Guide that will include
sourcing for much of the discussion on ACTA, links to all the leaked documents, information on the
transparency issue, and a look at who has been speaking out.

I start today with a lengthy backgrounder for those new to ACTA or looking to catch up on recent
developments. There are several ways to get up-to-speed. The recent Google-sponsored debate was
very informative, particularly on the transparency issue. There has been some helpful mainstream
media coverage from the Washington Post (Copyright Overreach Takes a World Tour, Q & A on
ACTA) and the Irish Times (Secret agreement may have poisonous effect on the net). The
Command Line ran a podcast on the topic last week and I've posted interviews on ACTA I did with
Search Engine and CBC's As It Happens. Last last year I also created a timeline that tracks the
evolution of ACTA and I gave a talk on ACTA last November that highlights the major
developments in about 20 minutes (embedded below).

A more detailed description of developments follows below:

October 2006 - Canada receives ACTA proposal from the U.S. Circulated within the departments
for comment.
February 2007 - Meeting in Geneva with the US, EU, Japan, Canada, and Switzerland (on margins
of TRIPS). Some changes to ACTA proposal from the original.

October 2007 - The United States, European Union, Japan, South Korea, Mexico, New Zealand,
Switzerland, and Canada announce plans to negotiate ACTA.

March 2008 - Negotiating countries hold preliminary meeting on ACTA. The outline of ACTA is
confirmed with six main chapters: (1) Initial Provisions and Definitions; (2) Enforcement of
Intellectual Property Rights; (3) International Cooperation; (4) Enforcement Practices; (5)
Institutional Arrangements; and (6) Final Provisions. The Enforcement of Intellectual Property
Rights chapter has four sections: civil enforcement, border measures, criminal enforcement, and the
Internet.

June 2008 - First round of negotiations held in Geneva on June 3rd and 4th. Canadian speaking
notes for the meeting are available here. Participating countries are Australia, Canada, the EC,
European Union Presidency (Slovenia), Japan, South Korea, Mexico, Morocco, New Zealand,
United Arab Emirates, and the U.S. The meeting is chaired by the USTR and hosted at the U.S.
Mission in Geneva.

Canada submits two "non-papers" on Institutional arrangements (Chapter 4 of ACTA) and

procedural matters. The institutional arrangements paper call for the creation of an "ACTA
Oversight Council" that would meet each year to discuss implementations, best practices, and assist
other governments who are considering joining ACTA.

The U.S. and Japan provide draft language for the Border Measures section. The proposals call for
provisions that would order authorities to suspend the release of infringing goods for at least one
year, based only on a prima facie claim by the rights holder. Customs officers would be able to
block shipments on their own initiative, supported by information supplied by rights holders. Those
same officers would have the power to levy penalties if the goods are infringing. Moreover, the
U.S. would like a provision that absolves rights holders of any financial liability for storage or
destruction of the infringing goods. A delegation also raises the prospect of a provision addressing
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.

Many countries suggest amendments including de minimum rules and the removal of certain
clauses. Moreover, the EU has proposed a specific provision to put to rest fears of iPod searching
customs officials by excluding personal baggage that contains goods of a non-commercial nature. It
provides:
“Where a traveler’s personal baggage goods of a non-commercial nature within the limits of the
duty-free allowance and there are no material indication to suggest the goods are part of
commercial traffic, each Party may consider to leave such goods or part of such goods outside the
scope of this section.”

July 2008 - Second round of negotiations held in Washington, DC on July 29 - 31st. Participating
countries are Australia, Canada, the EC, European Union Presidency (France), Japan, South Korea,
Mexico, Morocco, New Zealand, Switzerland, Singapore, and the U.S. (official press release here).
Discussions focus on border measures (second time), civil enforcement (first time), as well as non-
papers on institutional issues and international cooperation.

The U.S. and Japan supply draft text of the civil enforcement provisions. They call for the
availability of civil judicial procedures for the enforcement of any intellectual property right, though
some countries would like this limited to copyright and trademark. Parties to the treaty would be
required to implement procedures that include the availability of statutory damages for copyright
and trademark infringement (some countries would like this to be optional, while the U.S. would
like the damages provisions expanded to patent infringement) as well as court costs. The statutory
damages provisions include:

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 damages,

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

Additional required remedies include orders to destroy the infringing goods without
compensation. The proposals also call for significant mandated information disclosure, including
ordering alleged infringers to disclose information regarding any person or third parties involved in
any aspect of the infringement (some countries want this deleted and others are seeking to preserve
privacy protections). That provision states:

Each Party shall provide that in civil judicial proceedings concerning the enforcement of
intellectual property rights, its judicial authorities shall have the authority to order the infringer to
provide, for the purpose of collecting evidence, any information [Option J: in the form as prescribed
in its applicable laws and regulations] that the infringer possesses or controls, [Option J: ,where
appropriate,] to the right holder or to the judicial authorities. Such information may include
information regarding any person or persons involved in any aspect of the infringement and
regarding the means of production or distribution channel of such goods or services, including the
identification of third persons involved in the production and distribution of the infringing goods or
services or in their channels of distribution.

October 2008 - Third round of negotiations held in Tokyo, Japan on October 8th and 9th (the
meeting was scheduled to last 2 1/2 days but wrapped up early)(official press release
here). Participating countries are Australia, EU, South Korea, Mexico, Morocco, New Zealand,
Singapore, Switzerland, the U.S., Japan, and Canada. Countries agree that it is too ambitious to
have two more meetings in 2008 and settle for a single, longer meeting later in the year.

Day one focuses on criminal enforcement. The U.S. and Japan supply draft text of the criminal
enforcement provisions. The proposal would extend criminal enforcement to both (1) cases of a
commercial nature; and (2) cases involving significant willful copyright and trademark infringement
even where there is no direct or indirect motivation of financial gain. The treaty would require each
country to establish a laundry list of penalties - including imprisonment - sufficient to deter future
acts of infringement (specific language is "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.")

Moreover, trafficking in fake packaging for movies or music would become a criminal act as would
unauthorized camcording. The fake packaging provision provides:

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

The anti-camcording language says:

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.
Day two focuses on the civil enforcement provisions (for the second time).

November 2008 - Canadian government re-launches ACTA consultation, treating it as

ongoing. Marie-Lucie Morin, then the Deputy Minister of International Trade (and now National
Security Advisor to Prime Minister Stephen Harper), warns Minister Stockwell Day that "should
there be no consensus among the ACTA partners to make the ACTA text public, the Department
will need to develop options to address Canadian stakeholders concerns about the lack of
transparency in the ACTA process."

December 2008 - Fourth round of negotiations held in Paris, France on December 15 - 18th (official
press release here). Participating countries are Australia, Canada, the EC, the EU Presidency
(France), Japan, South Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland, and the
U.S. Canada supplies the draft text for the Institutional Arrangements chapter, which is the lead
issue for discussion on day one. Later in day one, parties continue negotiation on criminal
enforcement (first raised in Tokyo in October). Day two includes further discussion on criminal
enforcement in the morning and institutional cooperation and enforcement practices in the
afternoon.

Day three focuses on Internet issues. The U.S. provides a "non-paper" on the Internet issues section
with each delegation to answer questions on the state of their domestic law. The paper discusses
Internet copyright provisions, liability for Internet service providers, and legal protection for digital
locks and raises questions about damage awards, liability for hosting or storing content, and the
extent to which the anti-circumvention provisions mirror the U.S. approach.

March 2009 - The Department of Foreign Affairs conducts its first major open meeting on
ACTA. There is a clear acknowledgement that ACTA is an effort to avoid the international
community through WIPO by crafting a side deal that excludes major countries from around the
world. The first official summary document negotiated by all countries is posted.

June 2009 - ACTA countries announce plans to continue negotiations. There had been a brief delay
following the change in administration in the United States.

July 2009 - Fifth round of negotiations held in Rabat, Morocco on July 16 - 17th (official press
release here). Discussions focus on International Cooperation, Enforcement Practices and
Institutional Issues. Internet provisions to follow at next meeting.

November 2009 - Sixth round of negotiations held in Seoul, South Korea on November 4 - 6th
(official press release here). Discussions focus on criminal provisions and Internet
enforcement. The Internet proposal leaks one day before the meeting begins. The U.S. proposal
contains seven sections:

Paragraph 1 - General obligations. These focus on "effective enforcement procedures" with

expeditious remedies that deter further infringement. The wording is similar to TRIPs Article 41,
however, unlike the international treaty provisions, there is no statement that procedures shall be
fair, equitable, and/or proportionate. In other words, it seeks to remove some of the balance in the
earlier treaties.
Paragraph 2 - Third party liability. The third party liability provisions focus on copyright, though
an EU document notes that it could (should) be extended to trademark and perhaps other IP
infringement. The goal of this section is to create an international minimum harmonization
regarding the issue of what is called in some Member States "contributory copyright
infringement". The U.S. proposal would include "inducement" into the standard, something
established in the U.S. Grokster case, but not found in many other countries. This would result in a
huge change in domestic law in many countries (including Canada).

Paragraph 3 - Limitations on 3rd Party Liability. This section spells out how an ISP may qualify
for a safe harbour from the liability established in the earlier section. These include an exemption
for technical processes such as caching. ACTA would establish a required notice-and-takedown
system, which goes beyond Canadian law (and beyond current EU law). Moreover, ACTA clearly
envisions opening the door to a three-strikes and you're out model, as a leaked EU document states:

EU understands that footnote 6 provides for an example of a reasonable policy to address the
unauthorized storage or transmission of protected materials. However, the issue of termination of
subscriptions and accounts has been subject to much debate in several Member States.
Furthermore, the issue of whether a subscription or an account may be terminated without prior
court decision is still subject to negotiations between the European Parliament and the Council of
Telecoms Ministers regarding the Telecoms Package.

Paragraph 4 - Anti-circumvention Provisions. ACTA would require civil and criminal penalties
associated with anti-circumvention provisions (legal protection for digital locks). This goes beyond
the requirements of the WIPO Internet treaties and beyond current EU law which "leaves a
reasonable margin of discretion to Member States." There is no link between the anti-circumvention
provisions and copyright exceptions. The U.S. proposal also requires the anti-circumvention
provisions to apply to TPMs that merely protect access to a work (rather than reproduction or
making available). This would again go beyond current EU law to include protection against
circumventing technologies like region coding. From a Canadian perspective, none of this is
currently domestic law. As previously speculated, the clear intent is to establish a Global DMCA.

Paragraph 5 - Civil and Criminal Enforcement of Anti-Circumvention. As noted above, this section
requires both civil and criminal provisions for the anti-circumvention rules, something not found in
the WIPO Internet treaties. The anti-circumvention provisions are also designed to stop countries
from establishing interoperability requirements (ie. the ability for consumers to play purchased
music on different devices). The EU notes that this not consistent with its law, which states
"Compatibility and interoperability of the different systems should be encouraged." Of course,
might reasonable ask why such a provision is even in ACTA.

Paragraph 6 - Rights Management Information protection. This section includes similar criminal
and civil requirements for rights management information.

Paragraph 7 - Limitations to Rights Management Information protection.

January 2010 - Seventh round of negotiations scheduled for January 26 - 29th in Guadalaja,
Mexico.