International Law

Anti-Counterfeit Trade Agreement

By Karl-Friedrich Lenz

The text of an “Anti-Counterfeit Trade Agreement” has been published, see the EU press release here and in-depth commentary by Sean Flynn at the “Program on Information Justice and Intellectual Property” of American University Washington College of Law.

1. Secret Legislation with no Relation to Trade

Looking at the text, it is clear that this is not about trade. Just as the TRIPS agreement, the “trade” label is a cheap trick designed  to bypass normal legislation procedure in favor of secret negotiations.

We already have too much of that. The ACTA text says in its Article 3.4:

“Each Party shall, as appropriate, promote the adoption of measures to enhance public awareness of the importance of respecting intellectual property rights and the detrimental effects of intellectual property rights infringement.”

The first step to this goal would be to show some respect for the public first. If you give the average citizen the impression that legislation on the question is enacted in an undemocratic and secret process, why would anyone want to respect the result of that?

2. Meaningless Internet Regulation

a) IP Number Disclosure

Next, a look at Section 5 on “Enforcement of Digital Rights in the Digital Environment”. One of the important questions in that context is whether copyright holders can map IP numbers to individual Internet users. Article 2.18, Paragraph 4 has this contribution to that discussion:

“4. Each Party may provide, in accordance with its laws and regulations, its competent authorities with the authority to order an online 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, preserves fundamental principles such as freedom of expression, fair process, and privacy.”

That whole paragraph could and should be deleted, since each Party obviously may do this sort of  legislation without the kind permission of the ACTA negotiators. Who do they think they are, giving permission slips of this kind to Parliament. If it is not deleted, its only meaning will be to suggest legislation, as opposed to require it.

As to the substance of the proposal, it does not address the vital question in this regard. That is mandatory data retention. Giving copyright holders the right to ask for disclosure of log file information does not help if there are no log files to disclose in the first place. That question has been discussed by the German Constitutional Court in the decision on telecommunications data retention of March this year. The above Paragraph of the ACTA agreement fails to address the relevant questions here in any meaningful way.

b) General Rule

In contrast, the first Paragraph of Article 2.18 seems to impose an obligation on a Party to this Treaty. It reads:

Each Party shall ensure that enforcement procedures, to the extent set forth in the civil and criminal enforcement sections of this Agreement, are available under its law so as to permit effective action against an act of intellectual property rights infringement which takes place in the digital environment, including expeditious remedies to prevent infringement and remedies which constitute a deterrent to further infringement.

Then again, an obligation to “permit effective action against an act of intellectual property rights infringement” on the Internet does not really tell anyone how that should be done. Enforcement of copyright on the Internet is a problem not solved easily. That paragraph tells us that this problem needs to be addressed, something everyone knew already anyway. It does not tell us what exactly to do about it.

Another paragraph without any useful information.

c) Conlict of Laws

I could not find any useful clarification on the question which copyright law is applicable in Internet cases in the ACTA text. The closest might be the definition of “pirated copyright goods” in Article 1.X. That reads:

“pirated copyright goods means any goods that are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and that are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country in which the procedures set out in Sections 2, 3, 4 and 5 of Chapter2 are invoked;”

Any country where a copyright holder sues someone would apply their own copyright law, without regard for any other consideration. If a website can bee seen in all Member Countries, the website owner would need to check the copyright laws of all Member Countries, not only his own. Then again, it might be open to debate if a download over the Internet qualifies under “goods that are copies”.

Anyway, if the ACTA text intends to say anything about that matter, it certainly does not do so in a clear and understandable way.

3. Litigation Cost

In the next point I actually agree with the agreement text. Article 2.2, Paragraph 5 reads:

Each Party shall provide that its judicial authorities, where appropriate, shall have the authority to order, at the conclusion of civil judicial proceedings concerning infringement of at least copyright or related rights, or trademarks, that the prevailing party be awarded payment by the losing party of court costs or fees and appropriate attorney’s fees or any other expenses as provided for under that Party’s domestic law.

That is the way German civil procedure law handles the question, as opposed to Japanese law, where each party pays their own attorney, even if they win.

While I approve of that principle, I think it does not make any sense to introduce it in Japan only for copyright and trademark claims. There is no meaningful difference to a patent claim or a claim outside of intellectual property. This kind of question should be addressed like all other legislation on civil procedure in the normal Japanese legislation procedure, not by the secret ACTA negotiations.

Full post as published by Lenz Blog on October 07, 2010 (boomark / email).