Michael Blakeney
April 1, 2011
Original: http://goo.gl/tZhwt

The annual $US 60 billion trade in counterfeit and pirate products was the principal catalyst of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement and its IP rights enforcement regime. However, 10 years later, this trade had grown tenfold, despite TRIPS.

A select group of mainly industrialised countries, convened by the US, Japan and the EU, perceived that the panacea for dealing with this burgeoning illegal trade was to supplement TRIPS with even more IP rights enforcement and they agreed the Anti-Counterfeiting Trade Agreement (ACTA), the final text of which was released on 10 December 2010.

The idea is that all countries, including those not even invited to participate in the drafting of the agreement, will adopt it in their domestic IP rights legislation. However, this blog suggests that the lack of transparency and the selectivity in establishing the negotiating group may well undermine the inclusion of ACTA in the international IP rights regime.

For more than two years after the commencement of negotiations, no official drafts of the agreement were released for public scrutiny and the specific terms under discussion in the negotiations were not identified as the negotiating parties informed questioners that they were obliged to observe confidentiality conditions. The first intimation of the content of ACTA was a Discussion Paper on a Possible Anti-Counterfeiting Trade Agreement which was posted to the Wikileaks website.

National insecurity?

In September 2008, US civil-society groups Public Knowledge and the Electronic Frontier Foundation (EFF) filed a lawsuit under the Freedom of Information Act requesting release of records concerning ACTA ‘as a matter of public interest’.  However, the two organisations dropped the lawsuit in June 2009 after the Obama administration classified the ACTA negotiations a matter of national security. In November 2008, the Foundation for a Free Information Infrastructure applied to the Council of the European Union for access to documents concerning ACTA. This request was refused by the Council on the ground that ‘unauthorised disclosure … could be disadvantageous to the interests of the European Union or of one or more of its Member States’, as the negotiations were still in progress and their disclosure ‘could impede the proper conduct of the negotiations’.

In January 2010, UK Junior Business Minister David Lammy was quoted as saying that he could not put documents about ACTA in the House of Commons Library because other countries wanted to maintain secrecy.  However, in March 2010, he was reported as being in favour of placing the draft text in the public domain. This change of heart was no doubt attributed to a resolution of the European Parliament that the EC should immediately make all documents related to the ongoing international negotiations on ACTA publicly available.

In response for demands that the terms of ACTA be publicised, a joint statement issued by the negotiating partners stated that it was accepted practice during trade negotiations among sovereign states not to share negotiating texts with the public at large, particularly at earlier stages of the negotiation. However, this lack of transparency does not appear to have been the practice during the negotiation of the TRIPS Agreement or any of the other WIPO IP treaties.

Room to manoeuvre

The consolidated text of ACTA was published for the first time in April 2010, although the fact of publication did not mean that any other interested countries were allowed to participate in its negotiation. An explanation for the ‘invited countries only’ approach to the negotiations is provided in the European Commission’s keynote ACTA announcement of 25 October 2007. It stated that the activity envisaged by the negotiating plan is more usually undertaken by trade bodies such as the WTO, the G8 group of industrialised nations and WIPO, but that ‘it needed more room to manoeuvre than those bodies provided’. In other words, the principal international or intergovernmental bodies concerned with IP rights could not be trusted to do their job properly.

Since the finalisation of the ACTA text, it has been subject to a good deal of criticism. Opinions issued by leading IP academics in the EU and the US have criticised the agreement for going beyond European and US law. The EU opinion has been cited in March 2011 by MEPs seeking to refer it to the European Court of Justice as being beyond the power of the European Parliament.

A way in which ACTA might be implemented, however, is through its incorporation into the IP chapters of various bilateral or multilateral trade agreements. For example the Trans-Pacific Partnership currently being negotiated between Australia, Brunei, Chile, Malaysia, Singapore, and Vietnam is described as the ‘son of ACTA’ as it imports core features of the Agreement, with some additional digital provisions that the US had suggested during the ACTA negotiations, but which had not been included.

Michael Blakeney is professor of Law at the University of Western Australia. For previous articles by him, please click here and here