acta- guide part 1- the talks to date

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

Monday January 25, 2010

The 7th round of Anti-Counterfeiting Trade Agreement negotiations begins tomorrow inGuadalajara, 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 includesourcing 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 onACTA) 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 talkon ACTA last November that highlights the majordevelopments 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.
http://www.mfat.govt.nz/Trade-and-Economic-Relations/Trade-Agreements/Anti-Counterfeiting/0-ACTAagendaroundseven.phphttp://www.youtube.com/watch?v=Y3lzd9yJP9Qhttp://www.washingtonpost.com/wp-dyn/content/article/2009/11/13/AR2009111300852.html?wprss=rss_technologyhttp://voices.washingtonpost.com/posttech/2009/11/chat_with_law_prof_michael_gei.htmlhttp://voices.washingtonpost.com/posttech/2009/11/chat_with_law_prof_michael_gei.htmlhttp://www.irishtimes.com/newspaper/finance/2009/1113/1224258721485.htmlhttp://thecommandline.net/2010/01/20/danny_obrien_acta/http://thecommandline.net/2010/01/20/danny_obrien_acta/http://www.tvo.org/cfmx/tvoorg/searchengine/index.cfm?page_id=613&action=blog&subaction=viewpost&blog_id=485&post_id=11564&CFID=2572755&CFTOKEN=25491442http://bit.ly/1mpSRqhttp://www.dipity.com/michaelgeist/personalhttp://blip.tv/file/2837223http://blip.tv/file/2837223http://www.dipity.com/michaelgeist/personalhttp://bit.ly/1mpSRqhttp://www.tvo.org/cfmx/tvoorg/searchengine/index.cfm?page_id=613&action=blog&subaction=viewpost&blog_id=485&post_id=11564&CFID=2572755&CFTOKEN=25491442http://thecommandline.net/2010/01/20/danny_obrien_acta/http://thecommandline.net/2010/01/20/danny_obrien_acta/http://www.irishtimes.com/newspaper/finance/2009/1113/1224258721485.htmlhttp://voices.washingtonpost.com/posttech/2009/11/chat_with_law_prof_michael_gei.htmlhttp://voices.washingtonpost.com/posttech/2009/11/chat_with_law_prof_michael_gei.htmlhttp://www.washingtonpost.com/wp-dyn/content/article/2009/11/13/AR2009111300852.html?wprss=rss_technologyhttp://www.youtube.com/watch?v=Y3lzd9yJP9Qhttp://www.mfat.govt.nz/Trade-and-Economic-Relations/Trade-Agreements/Anti-Counterfeiting/0-ACTAagendaroundseven.php


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February 2007 - Meeting in Geneva with the US, EU, Japan, Canada, and Switzerland (on marginsof 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 ofIntellectual 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 theInternet.

June 2008 - First round of negotiations held in Geneva on June 3rd and 4th. Canadian speakingnotes 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 "ACTAOversight 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 oneyear, 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. Thosesame officers would have the power to levy penalties if the goods are infringing. Moreover, theU.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 ofproducers of the goods.

Many countries suggest amendments including de minimum rules and the removal of certainclauses. 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:
http://www.michaelgeist.ca/content/view/2318/125/http://w01.international.gc.ca/minpub/Publication.aspx?isRedirect=True&publication_id=385528&language=E&docnumber=146http://www.scribd.com/doc/11496515/actacanadagenevamtghttp://www.keionline.org/blogs/2009/02/03/details-emerge-of-secret-acta/http://www.keionline.org/blogs/2009/02/03/details-emerge-of-secret-acta/http://www.scribd.com/doc/11496515/actacanadagenevamtghttp://w01.international.gc.ca/minpub/Publication.aspx?isRedirect=True&publication_id=385528&language=E&docnumber=146http://www.michaelgeist.ca/content/view/2318/125/


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Where a travelers 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. Participatingcountries 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 berequired 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 statutorydamages 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 withoutcompensation. 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 preserveprivacy 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
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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 (themeeting 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 infringementeven 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 monetaryfines sufficiently high to provide a deterrent to future acts of infringement, consistent with a policyof removing the monetary incentive of the infringer.")

Moreover, trafficking in fake packaging for movies or music would become a criminal act as wouldunauthorized 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.
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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 NationalSecurity 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 Departmentwill 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 criminalenforcement (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 digitallocks 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 internationalcommunity 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. proposalcontains seven sections:

Paragraph 1 - General obligations. These focus on "effective enforcement procedures" withexpeditious 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.
http://www.michaelgeist.ca/content/view/3513/125/http://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/paris.aspx?lang=enhttp://www.ustr.gov/Document_Library/Press_Releases/2009/April/The_Office_of_US_Trade_Representative_Releases_Summary_of_Anti-Counterfeiting_Trade_Agreement_%28ACTA%29_Negotiations.htmlhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/press-release-communique.aspxhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/5-negotiation-5-negociation.aspxhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/6-negotiation-6-negociation.aspxhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/6-negotiation-6-negociation.aspxhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/5-negotiation-5-negociation.aspxhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/press-release-communique.aspxhttp://www.ustr.gov/Document_Library/Press_Releases/2009/April/The_Office_of_US_Trade_Representative_Releases_Summary_of_Anti-Counterfeiting_Trade_Agreement_%28ACTA%29_Negotiations.htmlhttp://www.international.gc.ca/trade-agreements-accords-commerciaux/fo/paris.aspx?lang=enhttp://www.michaelgeist.ca/content/view/3513/125/


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Mexico.

acta- guide part 1- the talks to date

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