07 June 2010

Anti-Counterfeiting Trade Agreement

Public predecisional/deliberative draft

April 2010

Here's my very preliminary thoughts on the first half of the current draft of ACTA found at http://www.dfat.gov.au/trade/acta/index.html. There's been a lot of concern in many countries about this agreement, and some secrecy continues. 

I remain a bit concerned about some parts.

Participants in the negotiating process are not identified, although their comments are included. Gutless.

1. Members shall give effect to the provisions of this Agreement. A Party may implement in its domestic law more extensive protection and enforcement of intellectual property rights than is required by this Agreement,

We must enact laws in accordance with this agreement.

1. Procedures adopted, maintained, or applied to implement this Chapter shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

The matters referred to in the last sentence are all in favour of the rights holders.

[3. Those measures, procedures and remedies shall also be [effective, proportionate][ fair and equitable] and [deterrent]]6]

Note "deterrent". The philosophy behind deterrence is very different to "proportionate".

[2. At least with respect to works, phonograms, and performances protected by copyright or related rights, and in [cases of trademark counterfeiting], in civil judicial proceedings, [As an alternative to paragraph 1,] each Party [shall][may] establish or maintain a system that provides:
(a) pre-established damages;
(b) presumptions for determining the amount of damages11 sufficient to compensate the right holder for the harm caused by the infringement.12 [; or
(c) additional damages]]

This is "liquidated damages." This means the rights holder does not need to prove the amount of damage - it can rely on a statutory formula. This leads to absurd results such as in the Jammie Thomas case in the USA. Currently a law firm in the USA US Copyright Group is asking bittorrent downloaders to pay $2,500 for downloading the Hurt Locker. Surely the damages should be about USD$25? That might explain why this firm's website DOES A LOT OF TYPING IN ALL CAPITALS.

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

So you can be liable for damages for unitentional acts - this seems squarely aimed at the parent, whose children do the infringing.

1. With respect to goods that have been found to be [pirated or counterfeited] [infringing an intellectual property right], each Party shall provide that in civil judicial proceedings, at the right holder’s request, its judicial authorities shall have the authority to order that such goods be [recalled, definitively removed from the channel of commerce, or] destroyed, except in exceptional circumstances, without compensation of any sort.

This seems fair enough at first blush, but will create great injustice where infringement is "unknowlingly committed" and comprises only part or a small part of the goods to be destroyed.

2. Each Party shall further provide that its judicial authorities shall have the authority to order that materials and implements the predominant use of which has been in the manufacture or creation of [infringing] [pirated or counterfeit] goods be, without undue delay and without compensation of any sort, destroyed or disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements.

The means of production can be destroyed - so long as the "predominant use of which has been" infringing activity. This does NOT provide for destruction of items where there has been no infringing activity. eg: personal mod chips.

[Without prejudice to other statutory provisions which, in particular, govern the protection of confidentiality of information sources or the processing of personal data,]17 Each Party shall provide that in civil judicial proceedings concerning the enforcement of [intellectual property rights][copyright or related rights and trademarks], its judicial authorities shall have the authority upon a justified request of the right holder, to order the [alleged] infringer [including an alleged infringer] to provide, [for the purpose of collecting evidence] any [relevant] information [information on the origin and distribution network of the infringing goods or services][in the form as prescribed in its applicable laws and regulations] that the infringer possesses or controls, [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. [For greater clarity, this provision does not apply to the extent that it would conflict with common law or statutory privileges, such as legal professional privilege.] ]

This probably doesn't change the Australian position much - it could force ISPs to provide consumer data.

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

This allows for injunctions against ISPs if subscribers are found downloading copyright material.The next section allows ex-parte injuctions, which are not uncommon in Australia.

Physical goods

These measures seem substantially similar to the situation in Australia today.

Criminal enforcement

Includes significant infringement even without commercial gain - this catches those who do it for thrills or some misguided opinion about the validity of intellectual property rights.

Penalties can include imprisonment, which seems appropriate, given that theft is theft, regardless of the object stolen.

Protection of ISPs


There are alternative approaches here, which pay lip service to protection of ISPs when a user infringes. 

each Party [shall][ may]:
(a) provide limitations52 on the scope of civil remedies available against an online service provider for infringing activities that occur by
(i) automatic technical processes, and
(ii) the actions of the provider’s users that are not directed or initiated by that provider and when the provider does not select the material, and
(iii) the provider referring or linking users to an online location,
when, in cases of subparagraphs (ii) and (iii)53, the provider does not have actual knowledge of the infringement and is not aware of facts or circumstances from which infringing activity is apparent;

This protection goes away unless the online service providers act [takes appropriate measures] expeditiously, in accordance with applicable law [s], [such as those] to remove or disable access to infringing material or infringing activity upon obtaining actual knowledge of the infringement

So what is "actual knowledge"? Is that because a rights-holder has made an allegation, or a court has declared that infringing conduct has occurred? The latter is indisputably "knowledge" - the former is not.

Another option is that an online service provicer must adopt and reasonably implement a policy to address unauthorised storage or transmission of materials. This will be a minefield for what is reasonable. The Rapidshare case dealt with this, noting that Rapidshare could not determine the contents of encrypted files - so would a service provider have to ban encrypted files?

Another alternative is a doozy...

[ 3 ter. Each Party shall enable right holders, who have given effective notification to an online service provider of materials that they claim with valid reasons to be infringing their copyright or related rights, to expeditiously obtain from that provider information on the identity of the relevant subscriber.

The false positives in USA cases seem to be common - this just drags a lot of people into something where they don't belong. I've got 4 teenagers in my household - we have explicit rules and I run some protective measures, but there's no way I can control what a couple of 18 year old boys can get up to. Why should I suffer?

Getting around stupid copy protection schemes

We have returned two games this year already, where they simply would not run on all of our computers due to copy protection. The govenment must restrict:

(a) the unauthorized circumvention of an effective technological measure64 [that controls access to a protected work, performance, or phonogram]; and
(b) the manufacture, importation, or circulation of a [technology], service, device, product, [component, or part thereof, that is: [marketed] or primarily designed or produced for the purpose of circumventing an effective technological measure; or that has only a limited commercially significant purpose or use other than circumventing an effective technological measure.]]

I have a copy (two in fact) of Empire Earth II. It has securom protection. I cannot back up that software, even though section 47C of the Australian Copyright Act gives me the right to back up computer software.