By Jason Rantanen
Yesterday, the negotiating parties (which include the United States) released the final draft of the Anti-Counterfeiting Trade Agreement (ACTA), a document that purports to combat the proliferation of pirated and counterfeit goods. The development of this Agreement has been subject to considerable controversy, in large part due to the secretive nature of its negotiation, which took place outside conventional International IP bodies such as TRIPS and WIPO. The Electronic Frontier Foundation, for example, has written extensively about the subject, as has Michael Geist.
In its final state, ACTA relates primarily to copyright and trademark infringement, and expressly disclaims application to patent law in several sections. Nevertheless, everyone interested in intellectual property law issues should give it a read (and at only 24 pages long it's a surprisingly concise document), as within the area of trademark and copyright infringement the scope of ACTA is very broad: despite its characterization as a "Trade Agreement," it covers the enforcement of IP rights in the domestic civil, criminal, and digital spheres in addition to providing for border control measures,
Although ACTA generally tracks existing U.S. law on copyright and trademark infringement, the Agreement has a clear pro-rights holder slant. For instance, provisions on discovery discuss only the rights of the party asserting the infringement claim, and do not require similar rights on the part of the alleged infringer. Readers may also want to pay particular attention to the criminal provisions - which seem on their surface to make any commercial willful trademark or copyright infringement subject to criminal penalties.
Given that this document likely will be scrutinized by scholars and practitioners concerned about the implications of strong copyright and digital property rights, I'll identify just a few specific drafting issues that leaped out at me.
- "Trademark counterfeiting" and "copyright piracy" are broadly defined, and seem to include any form of trademark or copyright infringement. In other words, these terms could be readily replaced with "trademark infringement" and "copyright infringement" wherever they appear in the document. That said, the trademark counterfeiting language is somewhat ambiguous, and could plausibly be read to only apply to instances where the mark "cannot be distinguished in its essential aspects" from the registered trademark.
- Another issue is the sudden appearance of "copyright or related right," which is first used in Chapter Two, Article 2.2(1). Perhaps this is an artifact from earlier drafts, but I didn't see any definition of these "related rights."
- The procedures for civil enforcement of IP rights largely appear to parallel U.S. law. However, the damages provisions strongly favor rights holders, perhaps more so than current domestic copyright and trademark law.
- Similarly, to the extent the sections on litigation discovery procedures expand parties' rights and obligations, they may create a disjunction with current law.
- In the context of border measures, the terms "goods of a commercial nature" and "goods of a non-commercial nature" are left undefined. On the surface, it seems like nearly every good hs a commercial nature, but perhaps I'm just picking at nits with this one.
- Likewise, the term "acts carried out on a commercial scale," used in the context of the section on criminal penalties, seems equally broad, especially given that it includes "at least those carried out as commercial activities for direct or indirect economic or commercial advantage."
- The pro-rights holder forum and education campaign requirements seem quite one-sided, especially for such a sensitive subject. Chapter Three, Articles 3.1(4) and 3.4 are particularly strong in their requirement that governments present a pro-IP rights holder message.
The full text of the proposed version of ACTA is available here: Download Finalized ACTA text. In addition to substantive issues, some organizations have raised concerns about the potential approval of ACTA via Executive Agreement, as opposed to ratification by the Senate. If the former approach is indeed used, it will likely have profound legal implications that courts, practitioners and scholars will need to address.
Update: As one commenter pointed out, Terry Hart's blog Copyhype has a detailed point-by-point comparison of many ACTA provisions to the relevant U.S. law. Mr. Hart also responds to some of the negotiation transparency criticisms that various organizations have raised.