July 20th, 2010 by Barry Sookman Leave a reply »

The latest draft of the ACTA is publically available. It has undergone significant development since the last publically available version including to one of its most important chapters, the chapter on Special Measures Related to Technological Enforcement of Intellectual Property in the Digital Environment. This is the chapter that includes the obligation of the contracting parties to provide legal protection for TPMs. Despite the changes made to these provisions, it is clear that the countries negotiating the treaty still intend that the contracting parties provide adequate legal protection and effective legal remedies against circumvention related activities that could undermine new and exciting business models that rely on TPMs.

Paragraph 4 of the draft treaty states:

Each Party shall provide adequate legal protection and effective legal remedies [US: at least] against the circumvention of effective technological measures that [US: are used by, or at the direction of, ] authors, and [NZ: performers] performers and producers of phonograms [US: use] use in connection with the exercise of their rights that restrict acts in respect of their works, [NZ: performances] performances, and phonograms, which are not authorized by the authors, the [NZ: performers] performers or the producers of phonograms concerned or permitted by law. [US: In order to provide such adequate legal protection and effective legal remedies, each Party shall provide protection at least against:] Adequate legal protection shall be provided, in appropriate cases, at least against:

(a)    …the unauthorized circumvention of an effective technological measure [US: that restricts acts not authorized by the right holder and is] carried out knowingly or with reasonable grounds to know; and

(b)   the manufacture, importation, or distribution [US: of, or offer to distribute, a device or product, that circumvents an effective technological measure and is either:]  of a device that has predominant function of circumventing an effective technological measure and that is any of the following:

i. … marketed for the purpose of circumventing an effective technological measure;

ii. primarily designed or produced for the purpose of circumventing an effective technological measure; or

iii. has only a limited commercially significant purpose other than  circumventing an effective technological measure.

These provisions reflect the internationally accepted interpretation of the Internet Treaties, which requires protection against acts of circumvention as well as trafficking in circumvention devices.[1] A footnote to the above paragraph clarifies that the contracting parties are not obligated to prohibit acts of circumvention of copy control TPMs. Accordingly, the draft treaty would require protection against circumventing access control TPMs and against trafficking in access and copy control TPMs.

The internationally accepted interpretation of the Internet Treaties also does not tie any requirement for liability for circumvention activities or trafficking in circumvention devices to any infringing purpose.[2] The Internet Treaties could not be implemented properly by limiting the prohibited acts to be for an infringing purpose.[3] The draft treaty makes clear that the remedies or prohibitions against circumvention are independent from acts of infringement in Paragraph 5. The two options under consideration are the following:

Option 1

5.         Each Party shall provide that effective legal remedies [EU: adequate legal protection] against a violation of a measure implementing paragraph (4) is independent of any [J: other unlawful activities] infringement of copyright or related rights.

Option 2

5.         [US/sing/NZ/Aus?: each party shall provide that a violation of a measure implementing paragraph (4) is independent of any [J: other unlawful activities] infringement of copyright or related rights.

The draft treaty would also enable contracting parties to adopt and maintain exceptions or limitations to measures “so long as they do not significantly impair the adequacy of legal protection of those [Can: technological] measures or the effectiveness of legal remedies for violation of those measures.”

It is clear from the forgoing that the draft treaty provides some limited flexibility in how the ACTA can be implemented. However, just like the Internet Treaties, there are minimum standards. These minimum standards require:

  • Protection against acts of circumventing access control TPMs;
  • Protection against trafficking in copy control and access control circumvention tools;
  • Protection cannot be restricted to acts that have an infringing purpose nor can acts carried out for a fair dealing purpose be excluded from protection; and
  • Limitations and exceptions to the prohibitions are permitted; however, they cannot significantly impair the adequacy or effectiveness of the legal protection or legal remedies e.g., they cannot be tied to circumvention for an infringing purpose, or to a fair dealing purpose; such exceptions would not only conflict with Paragraph 5, but would also significantly affect their adequacy and effectiveness.

It has been suggested that Bill C-32’s TPM provisions go beyond ACTA’s draft provisions and can be watered down to permit an exception to cover circumvention for the purposes of fair dealing. However, neither the Internet Treaties nor ACTA would permit any such exception or limitation.

[1] See, Dr. Ficsor is right; Prof. Geist is wrong about the WIPO Internet Treaties, Only once more – and then Marry Christmas and Happy New Year to everybody, including Professor Geist and his devoted followers: the 1996 WIPO Diplomatic Conference, the WIPO Treaties and the balance of interests, Legends and reality about the 1996 WIPO Treaties in the light of certain comments on Bill C-32 (“Legends and reality about the 1996 WIPO Treaties”)

[2] ibid

[3] See, Legends and reality about the 1996 WIPO Treaties where Dr. Ficsor, the former Assistant Director General of WIPO, disagreed with the assertion by Prof. Geist that Bill C-32 could be amended to limit protection for circumvention to an infringing purpose, or alternatively “for any unlawful purpose” and still comply with the WIPO Treaties: “It should be clear from my commentary that these proposals would not provide adequate legal protection for TPMs and would not result in a Bill that would comply with the Internet Treaties.”

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