Obsession With IP Enforcement?

As reported earlier, the public debate on the Anti-Counterfeiting Trade Agreement between the European Union and its Member States, Australia, Canada, Japan, the Republic of Korea, the United Mexican States, the Kingdom of Morocco, New Zealand, the Republic of Singapore, the Swiss Confederation and the United States of America (ACTA) is currently gaining momentum. One of the many problems with ACTA is that it appears not to be clear as to whether or not the Treaty will actually change the law of at least some of its Member states.

In this context it appears to be worthwhile to bring back into memory that – unlike the SOPA and PIPA Bills recently stalled in the U.S. – ACTA is a Treaty of public international law, not civil law or public national law. The Articles thereof clearly address not individuals or corporations but its Member States (‘Parties’) and imposes on them an obligation to uphold certain minimum standards with regard to enforcement of intellectual property law. Article 2 Para. 1 of ACTA reads [emphasis added]:

Each Party shall give effect to the provisions of this Agreement. A Party may implement in its law more extensive enforcement of intellectual property rights than is required by this Agreement, provided that such enforcement does not contravene the provisions of this Agreement. Each Party shall be free to determine the appropriate method of implementing the provisions of this Agreement within its own legal system and practice.

In this context it does not come as a surprise that in some of the ACTA signatory states some (if not many) of the provisions provided by ACTA are already in force. For example, in Germany the first Act on Product Piracy (“Produktpirateriegesetz”) dates back to March 07, 1990. It introduced, inter alia, a right to information addressing the infringer to disclose otherwise confidential information concerning the act of infringement as well as provisions to seize and destroy counterfeit goods. Today, in the EU the laws governing the enforcement of intellectual property right in general and especially the fight against piracy are widely harmonised by secondary EU law.

• One of the cornerstones is Council Regulation (EC) No 1383/2003 (“COUNCIL REGULATION (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights) with the attached draft new Regulation. It is due to be replaced by a new Regulation within next future.
• Another important piece of secondary EU legislation is the Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (IPRED1).even going as far as, for example, allowing surveillance of telecommunications in certain cases in order to gain confidential information in the context of alleged infringement of intellectual property rights.

Many of these existing provisions have worked for many years now without causing much trouble.

Therefore, it appears to be quite safe to say that under a first aspect the desired effect of ACTA is primarily to forge something like a ‘coalition of the willing’ , the Member States of which desiring to close the Agreement in order to create some sort of institutionalised lock-in setting which in future prevents that certain standards agreed upon are ever undercut by reforms of national law weakening the system of IP protection. So far, the kind of political effect of ACTA might not be that much different from that of the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights).

When asked if ACTA would change national law if ratified and implemented, a correct answer must refer not only to possible necessary amendments of civil law or public national law but also to this lock-in effect on the level of public international law, creating another layer of bondage – besides e.g. TRIPS – preventing any future national or regional legislation weakening IP enforcement below ACTA standards.

A second aspect of ACTA is related to the global institutional landscape of IP-related bodies. One option for the proponents of ACTA was to start negotiations on that Agreement under the umbrella either of the World Intellectual Property Organisation WIPO, a sub-branch of the United Nations (UN), already administering a great many of most important IP Treaties, or of the World Trade Organisation WTO, host of the TRIPS Protocol defining general minimum standards. However, the initiators of the ACTA negotiations obviously were afraid of getting entangled into controversial debates on intellectual property with sceptics from nations like Brazil and Argentina pushing a Development Agenda on the WIPO theatre instead of looking for ever tighter IP laws in the first place. But not only that ACTA was not negotiated under such umbrella of one of the existing organisations, it also creates a new one, the ACTA Committe stipulated with Article 36:

1. The Parties hereby establish the ACTA Committee. Each Party shall be represented on the Committee.
2. The Committee shall:
(a) review the implementation and operation of this Agreement;
(b) consider matters concerning the development of this Agreement;
(c) consider any proposed amendments to this Agreement in accordance with Article 42 (Amendments);
(d) decide, in accordance with paragraph 2 of Article 43 (Accession), upon the terms of accession to this Agreement of any Member of the WTO; and
(e) consider any other matter that may affect the implementation and operation of this Agreement.
3. The Committee may decide to:
(a) establish ad hoc committees or working groups to assist the Committee in carrying out its responsibilities under paragraph 2, or to assist a prospective Party upon its request in acceding to this Agreement in accordance with Article 43 (Accession);
(b) seek the advice of non-governmental persons or groups;
(c) make recommendations regarding the implementation and operation of this Agreement, including by endorsing best practice guidelines related thereto;
(d) share information and best practices with third parties on reducing intellectual property rights infringements, including techniques for identifying and monitoring piracy and counterfeiting; and
(e) take other actions in the exercise of its functions.

[...]

So far it becomes clear that upon entry into force, ACTA will create a third pillar of internatioal institutions beside WIPO and WTO in the field of IP law. It is very difficult to assess the impact such new institution will politically gain on the long term. But the ACTA Committee is a nucleus organisation with own funding and bureaucratic structures, and it will depend on the political aspirations of the ACTA Member States whether the ACTA Committee will ever stay as a political dwarf between WIPO and WTO or gow up to a powerful body.

A third aspect of ACTA is related to the Digital Realm. In alignment with avoiding well-established organisations like WIPO and WTO exhibiting some (albeit often limited) level of openness and transparency towards the general public and the civil society, ACTA proponents chose to conduct the initial rounds of negotiations in secrecy without even disclosing some if the initial text drafts on which the talks were based. Anyone following politics concerning the regulation of the Internet almost immediately understood the rationale of this, namely the fear or almost panic that interventions from the civil society might disturb the intention to set up Section 5 of the Agreement dealing with Enforcement of Intellectual Property Rights in the Digital Environment. As far as conclusions can be made from leaked documents under discussion during the various rounds of the negotiations, the political objective of this Section was to set up once and for all in all ACTA Member States a legal environment where businesses relying on the Internet, in particular intermediaries, are subjected to a draconian regime of forced co-operation with a broad spectrum of enforcement efforts. As far as it is known, representatives of established businesses, in particular those relying on traditional Copyright, were cleared and given access to early ACTA documents, but never individuals related to NGOs seen as sceptics of the present system of intellectual property law.

Despite serious efforts to keep the negotiations hermetically closed and effectively shielded from civil society, over the years several leaks of confidential ACTA Documents stirred a public debate, and it looks as if, last not least bowing to the pressure of a political rejection of the first principles underlying this very Section in various quarters of party politics, the final wording of Section 5 is merely a heavily watered down shadow of the original intentions of the initial ACTA proponents. Moreover, the wording of this part of ACTA appears to be somewhat wooly, maybe a result of numerous formulaic compromises. However, the gist of Section 5 is a conservative one, apparently  intending to making it as difficult as possible to create any sort of new or amended Copyright law suited to more closely nestle to the needs of a society accepting to share contents over the Internet. It is difficult to predict how ACTA Member States, after entry into force of the Agreement, would implement the measures imposed on them by Section 5 in detail. Some of the stuff in this Section is already known from the WIPO Copyright Treaty concluded in 1996.

In order to understand the hot spots of the very details of any potential national or regional implementation of provisions provided by ACTA it might be helpful to look at ongoing political negotiations in the EU concerning Document 10880/11 conveying a Proposal for a regulation of the European Parliament and of the Council concerning customs enforcement of intellectual property rights. Just these days I got a letter from the General Secretariat - Directorate-General F (Press, Communication,  Transparency) of the EU Council in response to my earlier request to have access to Council Document 5436/12 titled Proposal for a Regulation of the European Parliament and of the Council concerning customs enforcement of intellectual property rights. The statement goes as follows:

Document 5436/12 is a Note from General Secretariat to the Working Party on Customs Union on a Proposal for a Regulation of the European Parliament and of the Council concerning customs enforcement of intellectual property rights.

This proposal was submitted by the Commission to the European Parliament and the Council on 26 May 2011. Since then, it has been examined by the Working Party on Customs Union and by other Council bodies several times.

The proposal is still under discussion within the preparatory bodies of the Council.

The General Secretariat has weighed your interest in being informed of progress in this area against the general interest that progress be made in an area that is still the subject of negotiations.

It considers that, at this stage, full disclosure of this document which contains opinions for internal use as part of deliberations and preliminary consultations within the Council would be premature in that it could impede the proper conduct of the negotiations and compromise the conclusion of an agreement on this subject. As there is no evidence suggesting an overriding public interest to warrant disclosure of the document in question, the General Secretariat has concluded that protection of the decision-making process outweighs the public interest in disclosure. Accordingly, pursuant to Article 4(3), first subparagraph, of the Regulation (protection of the Council’s decision-making process), the General Secretariat is unable to accede to your request for full access at this stage.

However, pursuant to Article 4(6) of the Regulation, you may have access to those parts of the document which are not covered by this exception.

Moreover, pursuant to Article 11(6) of Annex II to the Council’s Rules of Procedure, this document and any other legislative document relating to this Regulation shall be made available to the public in full after the final adoption of the act, unless their content is covered by Article 4(1), (2) or (3), second subparagraph, of Regulation (EC) No 1049/2001.

So, what sort of important stuff is in this particular Document potent to impede the proper conduct of the negotiations and compromise the conclusion of an agreement on this subject? Well, in the non-redacted portion of Document 5436/12 we can read:

The Presidency would like to inform the delegations that they intend to continue to hold discussions on this dossier on the basis of the thematic topics as listed in Annex I.

In view of a discussion on 18 January 2012, the delegations will find in Annex II the discussion paper on the next three topics plus 2 possible topics:

• “Traveller’s derogation”,
• “Parallel Trade”,
• “Any other right that is established as an exclusive intellectual property right by EU legislation”,
• possibly “Delegated and implementing acts” and
• possibly “Special procedure for small consignments”.

Well, of course, the notes to these points are redacted and not released in their entirety. And, I had no difficulties to obtain a non-redacted copy of some related Document  Document 5145/12 originally classified as LIMITE under a request based on Regulation (EC) No 1049/2001. The essential difference between Documents 5436/12 and 5145/12 appears to be that the first one might well discuss most controversial topics like searching traveller’s digital luggage (computers, smartphones and the like) for digital counterfeits as well as suppressing popular parallel imports even in small consignments while the latter merely discusses slightly boring issues like the role of customs and transit. Anyway, I suspect that in particular any broader public discussion on Traveller’s derogation might explicitly be most unwanted by Diplomats negotiating this on EU Council level.

Another point of interest in this context is the position of the EU Commission on IP enforcement. I have seen a Document not properly labelled but obviously authentic laying out a Roadmap Proposal for a revision of the Directive on the enforcement of intellectual property rights (Directive 2004/48/EC). The text says [emphasis added]:

[Some] initial assessment as well as a public consultation early in 2011 have revealed that certain provisions in the Directive may not be sufficiently clear and that this has lead to diverging interpretations in national courts. In addition, the Directive seems not to be sufficient to effectively tackle IPR infringements on the Internet. A number of other issues have been raised, that could be hampering a proper enforcement of intellectual property rights in particular for SMEs, such as the use of provisional and precautionary measures, procedures to gather and preserve evidence (problem of relation between the right of information and protection of privacy), the meaning of various corrective measures, including the costs of destruction, the calculation of damages.

Furthermore, the roadmap document argues:

The Directive has not been designed to deal with the challenges posed by the internet. The internet and digital technologies have added a new dimension to enforcement of intellectual property rights. On the one hand, the internet has allowed creators, inventors and their commercial partners to find new ways to market their products, but on the other hand it has also opened the door to new forms of infringements, some of which have proved difficult to combat. The relative anonymity of the internet, its cross-border nature and its consumer- and userfriendly services accessible from all around the globe have created an online environment where the infringers cannot be easily identified, digital evidence is hard to preserve, damages from internet sales are difficult to quantify and, after having been discovered, infringers quickly “re-appear” under a different name. Furthermore, the online services will continue to develop and to diversify, adding to the challenge facing any enforcement policy. As a result, there is a need to modernize the Directive to make it a suitable legal tool for the infringements committed on the internet.

Also recent measures to augment the Office for Harmonisation in the Internal Market (OHIM) to some sort of IP enforcement think-tank and exchange forum clearly appear to be politically related to an expectation that sooner or later ACTA will enter into force with the EU on board; compare also Articles 28,31, 33 to 35 of ACTA with the provisions of the planned Regulation on entrusting the Office for Harmonisation in the Internal Market (Trade Marks and Designs) with certain tasks related to the protection of intellectual property rights, including the assembling of public and private sector representatives as a European Observatory on Counterfeiting and Piracy (COM(2011) 288 final).

Hence, it appears to be most likely that later this year upcoming broad and fierce political debates on ACTA and other enforcement-related initiatives will, in view of the Internet, reveal a fight between those who insist on some sort of effective subjugation of the Digital Realm under the regime of traditional IP law, in particular, but not limited to, Copyright, whereas groups prioritising freedom of speech, indemnity of intermediaries and net neutrality on the Internet will try to turn the table by motivating Governments and Parliaments not to ratify ACTA and, in addition, to mitigate or reject certain EU proposals aiming at the strengthening of IP enforcement.

(Pictogram: This image is from the AIGA symbol signs collection via Wikimedia Commons.)