RIAA Suggestions for ACTA that are Re-Appearing in the TPP

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.