[Infowarrior] - Details emerge of secret ACTA negotiation

[Richard Forno]

http://www.keionline.org/blogs/2009/02/03/details-emerge-of-secret-acta/

Details emerge of secret ACTA negotiation

There are plans for the next ACTA negotiation to take place in Rabat,  
Morocco.  However, since none of the Obama trade people have been  
placed at USTR, this might be delayed.

The USTR is still maintaining secrecy over details of the negotiation,  
including the names of participants and all of the proposed texts for  
negotiations.  Despite this, KEI has obtained some documents related  
to the negotiations.  We can report the following:

The U.S. and Japan have proposed that willful trademark and copyright  
infringement on a commercial scale be subject to criminal sanctions,  
including infringement that has “no direct or indirect motivation of  
financial gain.” This will further:

     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

There is a section on “Unauthorized Camcording.” This provides that

     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.

In the area of Border measures, there is a proposal to delete all  
references to “in-transit” goods. Another proposal deals with  
“disclosure of information.”

     Article 2.10: 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.

In another section of the proposed text, a proposal on damages reads  
as follows:

     Article 2.2: Damages

     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 damages1,

     sufficient to compensate [Option US: fully] the right holder for  
the harm caused by the infringement.2

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

     4. Each Party shall provide that its judicial authorities shall  
have the authority to order, at the conclusion of civil judicial  
proceedings, reasonable and proportionate legal costs and other  
expenses incurred by the successful party shall be borne by the losing  
party, unless equity does not allow this..
     ————–
     fn1 Such measures [Option J: shall][Option US: may] include the  
presumption that the amount of damages is (i) the quantity of the  
goods infringing the right holder’s intellectual property right and  
actually assigned to third persons, multiplied by the amount of profit  
per unit of goods which would have been sold by the right holder if  
there had not been the act of infringement or (ii) a reasonable  
royalty or (iii) a lump sum on the basis of elements such as at least  
the amount of royalties or fees which would have been due if the  
infringer had requested authorization to use the intellectual property  
right in question.

In terms of injunctions, the ACTA text now includes the following  
proposal for provisional measures:

     Article 2.6: Provisional Measures

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

The proposed text on injunctions overturns Article 44.2 of the TRIPS  
and 28 USC 1498 of US Law, as well as several other national laws  
limiting the use of injunctions (such as the Canada and India  
limitations on the use of injunctions for architectural plans).

     Article 2.7: Injunctions
     Each Party shall ensure that, where a judicial decision is taken  
finding an infringement of an intellectual property right, the  
judicial authorities may issue against the infringer an injunction  
aimed at prohibiting the continuation of the infringement. Where  
provided for by domestic law, non-compliance with an injunction shall,  
where appropriate, be subject to a recurring penalty payment, with a  
view to ensuring compliance. The Parties shall also ensure that right  
holders are in a position to apply for an injunction against  
intermediaries whose services are used by a third party to infringe an  
intellectual property right.

U.S. negotiators know, but apparently don’t care, that 28 USC 1498  
eliminates the possibility of injunctions for cases where the U.S.  
government or its contractors infringe patents, copyrights or plant  
breeder rights.   Canadian negotiators are apparently clueless  
regarding the Canada copyright law limits to the ability to obtain  
injunctive relief for architectural works:

     “40. (1) Where the construction of a building or other structure  
that infringes or that infringes or that, if completed, would infringe  
the copyright in some other work has been commenced, the owner of the  
copyright is not entitled to obtain an injunction in respect of the  
construction of that building or structure or to order its  
demolitions. (2) Sections 38 and 42 do not apply in any case in  
respect of which subsection (1) applies.  R.S., 1985, c. C-42, s. 40;  
1997, c.24, s.21”

U.S. negotiators are also clueless that the U.S. Congress is  
considering legislation that would eliminate injunctions for certain  
uses of orphaned copyright works.  (One of the pitfalls of secret  
negotiations is that the negotiators don’t know enough and lack  
understanding of the broader ramifications of the texts they are  
negotiating).

In terms of institutional details, they are proposing a permanent  
structure, that will include an ACTA Oversight Council, to supervise  
ACTA implementation, consider amendments, interpretations, and  
modifications to the agreement, and establish and delegate  
responsibilities to ad hoc working groups, as well as:

     * assisting with resolving any disputes that may arise regarding  
the interpretation of application of ACTA;
     * ensuring that ACTA avoids duplication of other international  
efforts regarding IP enforcement;
     * seeking input from non-governmental persons or groups,  
particularly with respect to best practices in the field of  
intellectual property enforcement;
     * endorsing best practice guidelines for implementing ACTA;
     * supporting the efforts of international organizations active in  
the field of intellectual property enforcement;
     * assisting non-Party governments with developing assessments of  
the benefits of accession to ACTA; and
     * adopting its own rules of procedure.

These are only a few elements of the negotiation, and the outline  
suggests a much larger agreement. These proposals are formally  
available to cleared corporate lobbyists and informally distributed to  
corporate lawyers and lobbyists in Europe, Japan and the U.S. They are  
inexcusably secret from the U.S. Public.

If you don’t think this negotiation should take place in secret,  
contact Senator Leahy, Representative Conyers, Obama IP advisors such  
as Professor Arti Rai, members of the European Parliament, or people  
who write editorials.  You could contact the European Commission, I  
suppose, but do they really want transparency?