The Trans-Pacific Partnership (“TPP”) is a massive new trade agreement recently negotiated between the US and a host of countries including Australia, Japan, Canada, Mexico, Singapore, and Chile. The TPP’s IP Chapter (PDF) includes a series of provisions that address rightsholder abuse. While the agreement’s acknowledgment of abuse is salutary, and the protections it affords to users are real, these provisions rely largely on the discretion of judicial or administrative authorities, making the agreement’s protections for users less certain than protection for rightsholders.
Intellectual property rightsholders sometimes abuse their rights. Some use copyright, for example, to censor critics, frustrate political rivals, silence journalists, and target others whose speech they dislike. They claim rights far in excess of what they actually own, sometimes claiming rights that don’t exist at all.
Other rightsholders (often known as copyright or patent “trolls”) acquire rights for the sole purpose of ensnaring unwary infringers, whom they then threaten with draconian damages or crippling injunctions to extract settlements that far exceed the market value of the infringing use, or of the underlying work or invention.
These first three modes of abuse – censorship, copyfraud, and trolling – may be the most well-known kinds of abuse, but many other practices also arguably push the boundaries of how IP rights should be (or were meant to be) used. Copyright holders, for example, have used IP rights to control customer behavior, to block the sale of used copies, to block competition for complementary products, and to control circulation of merchandise in the global economy. Still others blanket online platforms with robot-penned takedown notices without regard to fair use or other exceptions that might render the uses lawful. Powerful trademark “bullies” assert their rights against small companies whose products or services may bear little resemblance to their own.
One person’s abuse may be another’s reasonable exercise of rights, but whatever “abuse” of intellectual property rights might mean, it’s notable that the TPP mentions it five times. The TPP acknowledges the problem of abuse of IP rights (Art. 18.3.2), requires parties to safeguard against abuse in providing for enforcement of IP rights (Art. 18.71.1), requires courts be empowered to prevent or remedy harm to defendants from abusive preliminary injunctions (Art. 18.74.15, 18.75.2), and, similarly, requires rights holders seeking seizure of goods at the border to provide “reasonable security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse” (Art. 18.76.3).
These nods toward the dark side of IP enforcement may surprise some. The TPP, after all, is in many other respects a very favorable document for rights holders, ensuring generous minimum terms of protection, separate protections for technological protection measures and rights management information, pre-established damages, and more. The TPP’s acknowledgement of the problem of abusive enforcement, and its requirement that signatories take steps to combat abuse, provides at least a partial counterweight in favor of the public interest.
The TPP’s acknowledgement of the existence of abusive enforcement is not entirely new. Each of the relevant TPP provisions has an analog in the TRIPS agreement, for example (thanks Jonathan Band for spotting these correlations):
- TRIPS 8.2 contains language similar to TPP 18.3.2
- TRIPS 41.1 contains language similar to TPP 18.71.1
- TRIPS 48.1 contains language similar to TPP 18.74.15
- TRIPS 50.3 and 53.1 contains language similar to TPP 18.75.2
Despite TRIPS’ acknowledgment of the dangers of abuse, many free trade agreements signed after TRIPS have omitted to mention abuse and anticompetitive behavior by copyright holders. The Korea-US FTA addresses guarding against abuse of provisional measures (such as preliminary injunctions and seizures), and the US-Chile FTA has language on that issue and a general admonition to guard against abuse and anti-competitive behavior. The TPP seems to incorporate more language on guarding against abuse than most trade agreements.
Rightsholder abuse is mentioned for the first time in Section A (General Provisions) of the Intellectual Property chapter, in Article 18.3, titled “Principles.” Article 18.3.2 reads:
Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
This first mention is an example of Michael Geist’s observation that user protections in TPP are mostly optional while rightsholder protections are obligatory. Here, the language is just a weak observation about what may (or, may not) be the case.
Abuse appears again in a somewhat more robust form, but in the passive voice, in Article 18.71.1, the first provision in the enforcement section of the Chapter:
Each Party shall ensure that enforcement procedures as specified in this Section are available under its law so as to permit effective action against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies that constitute a deterrent to future infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. [emphasis added]
“Shall be applied” by whom, one might ask? And what sort of “manner” might provide safeguards against abuse? It’s up to each signatory’s discretion.
Article 18.74.15 is a bit stronger. It requires that injunction-type remedies be implemented in a way that allows judges to punish rightsholder abuse (and offer a remedy to victims, including costs and fees):
Each Party shall ensure that its judicial authorities have the authority to order a party at whose request measures were taken and that has abused enforcement procedures with regard to intellectual property rights, including trademarks, geographical indications, patents, copyright and related rights and industrial designs, to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of that abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant [sic] expenses, which may include appropriate attorney’s fees. [emphasis added]
Again in Article 18.75.2, regarding “provisional measures” (like preliminary injunctions), the TPP provides that:
Each Party shall provide that its judicial authorities have the authority to require the applicant for a provisional measure in respect of an intellectual property right to provide any reasonably available evidence in order to satisfy the judicial authority, with a sufficient degree of certainty, that the applicant’s right is being infringed or that the infringement is imminent, and to order the applicant to provide security or equivalent assurance set at a level sufficient **to protect the defendant and to prevent abuse**. Such security or equivalent assurance shall not unreasonably deter recourse to those procedures. [emphasis added]
A substantially similar provision appears in the agreement’s treatment of border measures at Article 18.76.3:
Each Party shall provide that its competent authorities have the authority to require a right holder initiating procedures to suspend the release of suspected counterfeit or confusingly similar trademark or pirated copyright goods, to provide a reasonable security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. Each Party shall provide that such security or equivalent assurance does not unreasonably deter recourse to these procedures. [emphasis added]
While it is salutary that the TPP includes acknowledgments of, and apparent safeguards against, the abuse of intellectual property rights, a look at these provisions collected together reveals a defect: although the provisions are couched in the language of obligation (i.e., they include “shall,” without a weakening modifier like “shall endeavor” etc.), in practice they give legislatures and enforcement authorities discretion about when and how to protect users. Indeed, the only limits on government discretion in this arena protect rightsholders by forbidding protection of users that would “unreasonably deter” rightsholders from using the relevant enforcement procedures.
Judicial or administrative discretion is not inherently a bad thing. Judges certainly can be more sensitive to user rights than legislatures—compare the salutary development of fair use doctrine in US courts since the 1990s to the drumbeat of maximalist legislation emerging from the US Congress in the same period. Nevertheless, it is a notable disparity that users get protection that depends on the discretion of a particular official in a limited circumstance, while rightsholders get immediate, concrete rights in the form of term extension, digital lock protection, statutory damages, and more. The user-protective provisions of the TPP give judges tools to punish the censors, trolls, and fraudsters described above, but only when the rightsholder goes all the way to court and seeks a specific remedy. (A brave victim might invoke these downstream protections when she gets her first cease-and-desist letter, but abusers may not be deterred by such a distant and uncertain punishment.) When it comes to protecting users from rightsholder abuse, the TPP is more balanced than some of the free trade agreements that preceded it, but not as balanced as it could be.
