Jun 062012
 

This brief article will discuss the March 17, 2008 RIAA Suggestions for the Anti-Counterfeiting Trade Agreement (ACTA)[1] and will pinpoint the Suggestions that did not make it into the final draft of ACTA, but are making a ‘come-back’ through the U.S.-proposed chapter on intellectual property of the Trans-Pacific Partnership Agreement (TPP).  Although ACTA negotiations began in 2008, the first leaked draft was not available until March of 2010 and most of the subsequent drafts were also leaked, and not officially published.[2] For the most part, the negotiating Parties, including the U.S. had “attempted to keep the ACTA negotiations in the proverbial ‘black box’.”[3] Despite this utmost secrecy from the public, it seemed clear that a select batch of industry groups were heavily influencing the U.S.’s negotiation stance.  One such group that seemed to have influenced the USTR is the Recording Industry Association of America (RIAA).  On March 17, 2008, the RIAA submitted to the USTR a ‘wish-list’ of provisions that it wanted to be contained in ACTA.  Shortly thereafter, the text of the RIAA submission was leaked and became available online.[4]

The March 17, 2008 RIAA Suggestions for ACTA proposes what it calls “Enforcement Best Practices”.  Comparative analysis of the RIAA Suggestions text and the final text of ACTA shows that many of the suggestions have been directly adopted or heavily incorporated into the final text of ACTA.[5] Troublingly, as for the RIAA Suggestions that were neither adopted nor incorporated into ACTA, many of them are now showing up in the U.S.’s proposal for the intellectual property chapter of the Trans-Pacific Partnership Agreement (TPP).[6] The following section will analyze the text of the RIAA Suggestions and the corresponding TPP provisions that reflect the RIAA’s “wish-list”, almost three years after the suggestions were made.

The March 17, 2008 RIAA Suggestions for the Anti-Counterfeiting Trade Agreement that are Showing Up in the U.S. Proposal for IP Chapter of the Trans-Pacific Partnership Agreement

Fist, RIAA Suggestion A.2 mandates each Party to “[p]rovide criminal sanctions for any act of copyright infringement that takes place on a commercial scale, including in the online environment, regardless of whether such acts were undertaken with a financial incentive.[7] Therefore, RIAA Suggestion A.2, if adopted, would include criminalization of willful copyright infringement that occurred without any financial incentive.  Although ACTA art. 23.1 mandates criminal procedures and penalties for willful commercial scale trademark counterfeiting or copyright or related rights piracy, the ACTA provision did not include the phrase, “. . . regardless of whether such acts were undertaken with a financial incentive” and therefore did not define ‘commercial scale’ to include acts that have no motivation of financial gain.[8] However, TPP art. 15.1(a) directly reflects the intent of RIAA Suggestion A.2 by defining willful trademark counterfeiting or copyright or related rights piracy on a commercial scale to include “. . . infringements that have no direct or indirect motivation of financial gain.”[9]

Second, RIAA Suggestion B.5 mandates that “orders by judicial authorities need not individually identify the items subject to seizure, so long as they fall within the general categories specified in the order.”[10] This is essentially identical to the bracketed language of the July 2010 draft of ACTA art. 2.16.2, that only the U.S. supported.[11] Although the exact wording of this suggestion has not been adopted in the final draft, ACTA art. 25.2 provides that if a Party requires identification of the items as a prerequisite to trigger seizure, “that Party shall not require the items to be described in greater detail than necessary to identify them for the purpose of seizure.”[12] Although the requirement of ‘describing a good in no greater detail than necessary’ is a narrower standard than the requirement of ‘falling within the general category specified in the order’, the essence of RIAA Suggestion B.5 is preserved in ACTA art. 25.2, as it makes it easier for the right holders to describe the goods to be seized.  Furthermore, RIAA Suggestion B.5 has been directly exported into TPP art. 15.5(b) which mandates each Party to “. . . provide that items that are subject to seizure pursuant to any such judicial order need not be individually identified so long as they fall within the general categories specified in the order.”[13]

Third, RIAA Suggestion D.1 endows the Party’s judicial authority with the power to seize “suspected counterfeit, pirated or other infringing goods, any related materials and implements, . . . any assets traceable to the infringing activity, and any documentary evidence relevant to the offense.”[14] This Suggestion has been largely incorporated into ACTA art. 25.1 with one notable difference:  instead of the broad seizure of “assets traceable to the infringing activity[15], ACTA allows the narrower seizure of “assets derived from, or obtained directly or indirectly through, the alleged infringing activity.”[16] Although the standard of ‘traceable to’ was not incorporated into ACTA, it has recently resurfaced in art. 15.5(b) the TPP which, requires each Party to provide “that its judicial authorities shall have the authority to order the seizure of suspected counterfeit or pirated goods, any related materials and implements used in the commission of the offense, any assets traceable to the infringing activity, and any documentary evidence relevant to the offense. . ..”.[17]

Fourth, RIAA Suggestion H.7 require that in criminal matters where destruction is involved as a form of remedy, that the “. . . competent authorities keep an inventory of goods and other materials proposed to be destroyed, and have the authority temporarily to exempt such materials from the destruction order to facilitate the preservation of evidence upon notice by the right holder that it wishes to bring a civil or administrative case for damages.”.[18] Although Suggestion H.7 was not adopted in ACTA, it has been directly exported into TPP art. 15.5(f) which requires each Party to provide “that, in criminal cases, its judicial or other competent authorities shall keep an inventory of goods and other material proposed to be destroyed, and shall have the authority temporarily to exempt such materials from the destruction order to facilitate the preservation of evidence upon notice by the right holder that it wishes to bring a civil or administrative case for damages.”[19]

Finally, RIAA Suggestions F.1 and F.3 mandate the presumption that “the person whose name is on the protected material[20] is the right holder which, “may be rebutted only if the defendant is able to provide concrete evidence to the contrary.”[21] Although these Suggestions were never adopted in ACTA, it has been directly exported into TPP art. 10.2 which mandates that, “[i]n civil, administrative, and criminal proceedings involving copyright or related rights, each Party shall provide for a presumption that, in the absence of proof to the contrary, the person whose name is indicated in the usual manner as the author, producer, performer, or publisher of the work, performance, or phonogram is the designated right holder in such work, performance, or phonogram.”[22]

Concluding Remarks

Akin to the negotiation processes for ACTA, the TPP has been negotiated in the utmost secrecy, albeit with limited public consultation and input, such as during the Dallas Stakeholder engagement in May 2012.  However, it seems highly likely, if not obvious, that only a select few industry groups such as the RIAA have maintained fruitful influence over determining the USTR’s stance on IP-related agreements, as evident from the TPP provisions that directly reflect the ‘wish-list’ of the RIAA from the ACTA negotiations.

Evident from the analysis above, many RIAA Suggestions that never made it into the final draft of ACTA have been directly exported into the text of the U.S. proposal for an IP chapter of the TPP.  Furthermore, most of these RIAA Suggestions that have made it into the TPP text contain measures that focus solely on expanding the scope and the ease of IP rights enforcement, regardless of the great potential for abuse and collateral damage to other public interests.  There’s no doubt that a certain level of rights enforcement is not only necessary, but fundamental to the basic principles of intellectual property.  The ability to exercise and benefit from the exclusive rights associated with the ownership of intellectual property lies at the very core of the capacity of intellectual property to “promote innovation, creativity and cultural development.”[23] However, “an old proverb teaches that ‘it is possible to have too much of a good thing,’ and that adage certainly applies here” since too much focus on protection and enforcement of intellectual property rights may result in unintended harm against a wide range of closely-integrated public interests.[24] As an agreement that has the potential to affect the general public and not only the intellectual property rights holders, the TPP should be negotiated in a more transparent manner with more public input and participation, also taking into account the public interest ramifications of the negotiation texts.


[1] Anti-Counterfeiting Trade Agreement, Oct. 1, 2011 [hereinafter ACTA] available at http://www.mofa.go.jp/policy/economy/i_property/pdfs/acta1105_en.pdf.

[2] ACTA August 2010 draft, available at http://publicintelligence.net/anti-counterfeiting-trade-agreement-acta-august-2010-draft/; ACTA January 2010 draft, available at euwiki.org/ACTA/Informal_Predecisional_Deliberative_Draft_18_January_2010; ACTA – December 3, 2010, available at http://www.ustr.gov/webfm_send/2417; ACTA July 2010 draft, available at http://publicintelligence.net/anti-counterfeiting-trade-agreement-acta-july-2010-draft/; Informal Predecisional/Deliberative Draft of October 2, 2010, available at http://www.ustr.gov/webfm_send/2338; Official Consolidated Text – April 21, 2010, available at http://trade.ec.europa.eu/doclib/docs/2010/april/tradoc_146029.pdf;;  see Kaminski 2011, supra note 32 at 5 (time-lining the releases of ACTA negotiating drafts).

[3] David S. Levine, Transparency Soup:  The ACTA Negotiating Process and “Black Box” Lawmaking, PIJIP Research Paper no. 18 (2011) at 2, available at http://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?article=1020&context=research.

[4] RIAA Suggestions for Content of ACTA, KEI Online (June 26, 2008) [hereinafter RIAA Suggestions], available at http://keionline.org/print/545.

[5] Compare RIAA Suggestions, supra note 4, at A.1 (mandating making deterrence against piracy and counterfeiting a priority legal matter), with ACTA, supra note 1, arts. 6.1, 24, 27.1 (mandating and prioritizing remedies constituting a deterrent to further infringements for general enforcement, criminal enforcement, and enforcement in the digital environment); compare RIAA Suggestions, supra note 4, at A.3 (criminalizing the knowing import, export, manufacture, sale or distribution of a device or system or a component that is primarily used or designed to circumvent TMPs), with ACTA, supra note 1, art. 27.6(b)(i) (providing protection against the “manufacture importation or distribution of a device or product . . . that is primarily designed or produced for the purpose of circumventing an effective technological measure.”); compare RIAA Suggestions, supra note 4, at A4 (mandating both “monetary fines and sentences of imprisonment . . . to deter future infringements, consistent with a policy of removing the infringer’s monetary incentive.”), with ACTA, supra note 1, art. 24 (requiring “imprisonment as well as monetary fines sufficiently high to provide a deterrent to future acts of infringement.”); compare RIAA Suggestions, supra note 4, at B.1 (mandating each Party to provide its law enforcement authorities with ex officio authority to investigate and initiate criminal actions concerning criminal infringements), with ACTA, supra note 1, art. 26 (requiring each Party to provide its competent authorities with ex officio authority to “act upon their own initiative to initiate investigation or legal action” regarding criminal infringements); compare RIAA Suggestions, supra note 4, at C.1 (requiring destruction of goods that have been determined to be pirated or counterfeited), with ACTA, supra note 1, art. 20.1 (standardizing destruction of infringing goods as a standard remedy); compare RIAA Suggestions, supra note 4, at C.3 (endowing competent authorities with ex officio authority to initiate border measures over imported, exported, or in-transit merchandise), with ACTA, supra note 1, arts. 16.1, 16.2 (mandating the grant of ex officio authority over import and export shipments and allowing such grant over in-transit shipments); compare RIAA Suggestions, supra note 4, at C4 (giving judicial authorities the power to grant injunctive relief), with ACTA, supra note 1, art. 8 (granting judicial authorities the power to issue injunctive relief, even against ‘third parties’), compare RIAA Suggestions, at G.1, G.2, G.3, G.4 (requiring Parties to provide clear, transparent, and predictable judicial proceedings, policies, and guidelines related to IP enforcement and to publish relevant statistical information as well as final judicial decisions and administrative rulings with relevant facts and reasoning, as well as to publicize information on the efforts and actions to provide effective enforcement of IP rights), with ACTA, supra note 1, arts. 30(a)-(c) (requiring Parties to publish or make available to the public “information on procedures available . . . for enforcing IP rights” and to publish information related to IP enforcement, including relevant statistical information, and to publish “its efforts to ensure an effective system of enforcement and protection of IP rights”), compare RIAA Suggestions, supra note 4, at J.1 (mandating “exclusive rights under copyright to unambiguously cover Internet use”), with ACTA, supra note 1, at Section 5 (covering copyright infringements in the internet).

[6] Trans-Pacific Partnership, Intellectual Property Rights Chapter February Draft [hereinafter TPP], available at http://keionline.org/sites/default/files/tpp-10feb2011-us-text-ipr-chapter.pdf.

[7] RIAA Suggestions, supra note 4, at A.2.

[8] See ACTA, supra note 1, art. 23.1.

[9] TPP, supra note 6, art. 15.1(a).

[10] RIAA Suggestions, supra note 4, at B.5.

[11] ACTA July 2010 draft, supra note 2, art. 2.16.2 (proposing that “such orders need not individually identify the items that are subject to seizure, so long as they fall within specified categories in the relevant order.”).

[12] See ACTA, supra note 1, art. 25.2.

[13] See TPP, supra note 6, art. 15.5(b).

[14] RIAA Suggestions, supra note 4, at D.1.

[15] Id. (emphasis added)

[16] ACTA, supra note 1, art. 25.1 (emphasis added).

[17] TPP, supra note 6, art. 15.5(b) (emphasis added).

[18] RIAA Suggestions, supra note 4, at H.7.

[19] See TPP, supra note 6, art. 15.5(f).

[20] RIAA Suggestions, supra note 4, at F.1.

[21] Id. at F.3.

[22] TPP, supra note 6, art. 10.2.

[23] The Global Cong. On Intellectual Propr. And the Pub. Interest, Washington Declaration on Intellectual Property and the Public Interest [hereinafter Washington Declaration], available at http://infojustice.org/washington-declaration.

[24] Id.(asserting that new international IP standards “must be subject to democratic checks and balances” and that the intellectual property rights should be enforced while also keeping mind the need to “respect the rights to due process and a fair trial in the face of rapidly escalating intellectual property enforcement measures.”).

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