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The Anti-Counterfeiting Trade Agreement ("ACTA") is a treaty that attempts to define international standards for intellectual property enforcement. ACTA is controversial for both procedural and substantive reasons. The treaty was negotiated in secret, and leaked draft versions contained many controversial terms. ACTA was signed through executive agreement, without ex post or ex ante approval from Congress. The final version of ACTA contains substantive problems, but it is unclear how these will be implemented in U.S. law.
ACTA is complicated, and it is unclear what its consequences will be in the U.S. and other countries. It is even more difficult to analyze because various drafts have different sections. Some analysis of ACTA is no longer relevant because it refers to sections that are not in the final text.
ACTA takes effect after six countries have ratified the agreement. As of December 2011, eight of the eleven countries have signed. The Council of the European Union, representing 22 member states, signed ACTA on December 16, 2011. Signatory countries may withdraw, however. Art. 41. In February 2012, Commissioner Karel De Gucht referred ACTA to the European Court of Justice to determine whether ACTA was compatible with EU treaties. David Martin, responsible for ACTA in the European Parliament, said the European Parliament will wait for the Court of Justice's ruling on ACTA before moving forward. The European Court of Justice may take 12-18 months to issue a decision, and its final decision may not fully settle questions of compatibility with EU law.
The Trans-Pacific Partnership ("TPP") is another treaty currently under negotiation that will likely include terms on IP and copyright. The TPP had a round of negotiation in December 2011, and the next round will begin in March 2012. The text of the TPP is not public, but the USTR released a "fact sheet" with portions on copyright, and public notice and comment on the TPP is available on Regulations.gov.
Negotiations began in 2008, but the draft versions of the treaty were not public. Public interest organizations, including the EFF, demanded that the government release a copy of ACTA so that experts could provide input. Numerous FOIA requests were submitted to the USTR, but the government withheld documents on national security grounds.
As a result of the confusing and secret drafting process, the general public has had to rely on generalized guesswork and a shifting understanding of the treaty based on unofficial leaked versions of the text. This makes accurate analysis of the law difficult. It also demonstrates severe problems with both IP policy and access to information:
The result of these activities can be summarized by stating succinctly that intellectual property law agreements have apparently become issues of national security that require the input of commercial interests but not the public at large. As Peter Yu points out, this “national security” concern is “more correctly identified with the maintenance of good foreign or diplomatic relations with ACTA negotiating partners.” Even if this concern has some merit, as negotiating partners may want to be free of public relations concerns as they negotiate, FOIA has allowed that concern to trump those of a public that has legitimate concerns about the impact of ACTA on domestic law.
Even after releasing the text, the President's executive agreement may not be constitutional. Under Article II of the U.S. Constitution, the President only has the power to "make" a treaty--the treaty must be either entered through the President's own authority, congressionally delegated authority, or confirmation of a two-thirds vote in the Senate. ACTA went through none of the proper procedures, which leaves a lot of uncertainty with regards to its impact on Federal Law in the U.S. It is possible that the U.S. is now bound by a treaty that is invalid and unconstitutional under U.S. law.
ACTA specifically allows member countries to "determine the appropriate method of implementing the provisions of [ACTA] within its own legal system and practice." ACTA § 1, Art. 2.1. In past copyright treaties, the U.S. has opted for a narrow implementation with regards to certain provisions. Signatories may implement the treaty broadly or narrowly.
Problems in the final text
- ACTA requires third-party criminal liability for "aiding and abetting" piracy of copyright or related rights. Art. 23.4. U.S. copyright law does not have secondary criminal liability for aiding or abetting copyright infringement. Common law has criminal liability for aiding or abetting criminal actions, which would include criminal copyright infringement, but there is traditionally a "tight nexus between the mental state of the indirect actor and the ultimate criminal act committed by somebody else."
- ACTA includes anti-circumvention provisions similar to the DMCA, but it does not include the exemption provisions that the DMCA has for non-profit libraries, archives, and educational institutions. Cf. Art. 27.6 and 17 U.S.C. § 1201(d). The DMCA also allows the Librarian of Congress to issue rules exempting certain DRM circumvention, such as phone "rooting."
- ACTA requires liability for infringement if the party had "reasonable grounds" to know he or she was engaging in infringing activity. Art. 9.1. TRIPS Article 44.1 had more flexible grounds for issuing an injunction if there was innocent infringement.
- ACTA may require increased liability for third-parties to infringement. Art. 12.1(a) requires that judicial authorities have the ability to order "prompt and effective provisional measures" against:
"...a party or, where appropriate, a third party over whom the relevant judicial authority exercises jurisdiction, to prevent an infringement of any intellectual property right from occurring, and in particular, to prevent goods that involve the infringement of an intellectual property right from entering into the channels of commerce;"
- This provision may inspire more legislation like SOPA and PIPA that leverage Internet advertising services and payment service providers to prevent infringement.
- ACTA requires "pre-established damages," which may require the U.S. to expand damages beyond the scope allowed in 17 U.S.C. § 504(c). ACTA Art. 9.3. This may result in damage awards that do not reflect any proven harm or gain.
Improvements in the final text
It's important to note that bad provisions from previous drafts did not make it into the final text of ACTA:
- The final version does not include a mandate for liability for intermediaries or ISPs, although they can be required to disclose subscriber information under Art. 27.4.
- The previous drafts of ACTA included much more aggressive provisions for ISPs and conditioned certain safe harbors on ISPs' proactive policing for infringement.
- The final version also did not include any graduated response or "three-strikes" provision for repeat infringers.
- The European Commission asked the European Court of Justice to determine if ACTA is incompatible with the EU's fundamental rights. Statement by Commissioner Karel De Gucht on ACTA (Anti-Counterfeiting Trade Agreement), February 22, 2012
- Special report: TPP negotiations to heat up in Melbourne over patents, copyright, medicines, February 21, 2012
- Maintaining Confidentiality of Documents, Obtained by the EFF through FOIA Request, available at https://www.eff.org/sites/default/files/filenode/EFF_PK_v_USTR/foia-ustr-acta-response2-doc1_0_0.pdf
- Available from the official repository in Japan at http://www.mofa.go.jp/policy/economy/i_property/pdfs/acta1105_en.pdf
- The EFF provided excellent analysis on an official preliminary draft of ACTA, but unfortunately they did not update the analysis for the final version of the text. See Gwen Hinze, Preliminary Analysis of the Officially Released ACTA Text (April 22, 2010) available at https://www.eff.org/deeplinks/2010/04/eff-analysis-officially-released-acta-text. The Program on Information Justice and Intellectual Property at American University has very comprehensive comparisons of ACTA and TRIPS, but much of their material refers to previous drafts of the text. Seehttps://sites.google.com/site/iipenforcement/acta-section-analysis
- EFF, 2011 in Review: Developments in ACTA (December 27, 2011), available at https://www.eff.org/deeplinks/2011/12/2011-review-developments-acta
- Statement by Commissioner Karel De Gucht on ACTA (Anti-Counterfeiting Trade Agreement), February 22, 2012
- European Parliament rapporteur welcomes referral of ACTA to Court of Justice, February 22, 2012
- See FAQ On Referral Of ACTA To European Court Of Justice, February 23, 2012, for more discussion on the consequence of the referall
- USTR, Enhancing Trade And Investment, Supporting Jobs, Economic Growth And Development:Outlines Of The Trans-Pacific Partnership Agreement (Novcmber 2011), available at http://www.ustr.gov/about-us/press-office/fact-sheets/2011/november/outlines-trans-pacific-partnership-agreement
- See http://www.regulations.gov/ Notices from December 2011 requested input on "Relevant trade-related intellectual property rights issues," and received comments from MPAA and IIPA,
- See https://www.eff.org/deeplinks/2008/09/secret-counterfeiting-treaty-public-must-be-made-p
- January 16, 2009 letter from USTR to the EFF, available at https://www.eff.org/sites/default/files/filenode/EFF_PK_v_USTR/Final%20response%20letter%20from%20USTR%20to%20EFF-PK%20FOIA%20request%2C%20explaining%20basis%20for%20docs%20withheld%2020090116.pdf
- David Levine, Transparency Soup: The ACTA Negotiating Process and "Black Box" Lawmaking (2011), available at http://digitalcommons.wcl.american.edu/
- Sean Flynn, ACTA's Constitutional Problem: The Treaty That Is Not a Treaty (Or An Executive Agreement) (2011) available at http://digitalcommons.wcl.american.edu/
- See, for example, the U.S.'s narrow protection of "moral rights" to comply with the 1996 WIPO Performances and Phonograms Treaty
- Margot Kaminski, Plurilateral Trade Agreements Lack Protections for Users, Intermediaries (2011), available at http://www.ip-watch.org/2011/10/27/plurilateral-trade-agreements-lack-protections-for-users-intermediaries/
- Art. 12.1(a)