The Truth About ACTA

Professor Michael Geist

Canada Research Chair in Internet and E-commerce Law

University of Ottawa, Faculty of Law

Why The Concern?

Why The Concern?• Mounting concern with ACTA is not “anti-

copyright” or “pro-counterfeiting”

• Shift in onus - why ACTA needed?

Why The Concern?• Transparency

• Substantive Concerns

• Long-term Implications

Transparency• ACTA is not the norm

– Trade agreement vs. IP agreement– WIPO, UNESCO, UNCTAD all more

transparent– Implications extend beyond enforcement with

key substantive provisions

Transparency• Majority of countries support transparency

– 2005 - 2007 - total secrecy– October 2007 - near total secrecy– 2008 - location disclosures, statements– 2009 - brief summaries, meeting agenda, NDA for

insiders in U.S.– 2010

• Virtually all countries support transparency• U.S., South Korea, Singapore now outliers• Full text should be formally disclosed (leaks not good enough)

Transparency• Public Statements and Transparency

– Statements at hearings/consultations may mislead• Presence of three strikes• “Mandatory” vs. Model Approach

– Statements in public documents may mislead• Enforcement only, no substance

– Circumvention– RMI– Labels

• Commercial only– Statutory damages– De Minimis provision

Substantive Concerns• Anti-circumvention provisions

– Renegotiation of WIPO Internet treaties

• Notice-and-Takedown– Established standard when some countries reject

• Anti-camcording provisions– Opposed in NZ, Australia, Switzerland

• Scope of the treaty– Possible inclusion of patents

Substantive Concerns• Statutory Damages

– Opens door to huge liability– Extends to commercial and non-commercial

• Criminal Provisions– Extend liability to non-commercial infringement– “inciting, aiding and abetting” certain offenses, including

"at least in cases of willful trademark counterfeiting and copyright or related rights piracy on a commercial scale."

• De Minimis Provision– Computer searches as commercial or non-commercial

Substantive Concerns• Missing Flexibility

• Article 6 of the TRIPS (the first sale doctrine)• Article 40 of the TRIPS (Control of anticompetitive

practices)• the Appendix to the Berne Convention• Articles 10, 10bis, 11bis, and 13 of the Berne

Convention• Article 15 of the Rome Convention• Fair Use/Fair Dealing

Substantive Concerns• Injunction Powers

– “Each Party shall ensure . . . judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement.”

– Missing many exceptions to this general rule for patents, copyright, trademark

• Institutional structure– ACTA Oversight Council– Secretariat– Observers/new entrants– Dispute resolution– Technical assistance

Substantive Concerns• Three Strikes/Graduated Response

– Current U.S. proposal conditions safe harbour on:“condition the application of the provision adopting and reasonably implementing a policy* to address the unauthorized storage or transmission of materials protected by copyright or related rights”* "an example of such a policy [ISP policy] is providing for the termination in appropriate circumstances of subscriptions and/or accounts on the service provider's system or network of repeat infringers.”

– Not mandatory, but clearly encourages– 3 strikes is the only model raised in the text

Long-Term Implications• Shift away from multilateral, open negotiations

– “plurilateral”, closed approach raises real concerns in other areas

• Constitutional issues– U.S. - executive agreement– Europe - Lisbon Treaty– Other countries - within the boundaries of current law?

• Ignoring other copyright issues– Limitations and Exceptions work– Treaty for the Blind

• Privacy– Three strikes information sharing requirements– Investigative cross-border information sharing

Long-Term Implications• Undermining WIPO

– ACTA as a replacement for WIPO?– Technical assistance, standard setting encroach on WIPO mandate

• Undermining WIPO Development Agenda– Developing country goals ignored or stymied– Developing countries face future pressure to conform

• Future ACTA Standard pressure– Trade agreements– Special 301/Watch lists

• Ineffective Approach to Counterfeiting– Key countries excluded from ACTA process– Real harms not addressed– Reluctance to limit to counterfeiting

mgeist@uottawa.ca