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Treaty Acta -

There has been an ever-growing perceived need to fight counterfeiting in a coordinated fashion and to elaborate effective and appropriate tools to enforce intellectual property rights (IPR). Over the past years, a group of some 40 countries have therefore set out a new legal framework aimed at fighting more efficiently IPR infringements, specifically, counterfeiting and digital piracy. To that end, they promote international cooperation and monitoring. The agreement they have reached is called ACTA, or Anti-Counterfeiting Trade Agreement (2).

Articles 7-12 protect right holders and force infringers to pay right holders damages in proportion to the infringement.

5.1 The treaty was negotiated behind closed doors

Those who oppose ACTA deplore that the treaty was negotiated with a total lack of transparency and that there was no debate within the World Trade Organization (WTO). This lack of consultation was even justified by the European Commission’s main ACTA negotiator (Pedro Velasco Martins, Intellectual property and public procurement deputy head of unit, Directorate-general for trade, European Commission). That being said, such agreements are not normally negotiated publicly and the text under negotiation was made pubic as early as April 2010. Also, many countries oppose a debate within the WTO, or even the WIPO (World Intellectual Property Organization).

ACTA, A CONTREVERSIAL ANTI COUNTERFEITING TREATY

Negotiations on ACTA – Anti-Counterfeiting Trade Agreement – were launched in 2007 and were initiated by Japan and the United States. ACTA sets out an international legal framework to fight counterfeiting in the broadest sense, from drugs and other goods to illegal downloading from the Internet.

However, it is highly controversial and was finally rejected by the European Parliament on July 4, 2012. It does remain valid outside of the European Union and will apply once six signatory states have ratified it. Nevertheless, even outside the European Union, it is doubtful whether ACTA will ever come into force.

1. Background

Counterfeiting poses a growing threat to the sustainable development of the global economy. According to some estimates, it may amount to 5 to 10% of world trade (1). Because of it, legitimate companies lose billions of euros and thousands of jobs each year.

In 1994 in Marrakesh (Morocco), the Agreement on Trade Related Aspects of International Property Rights (TRIPS) was included in the final act establishing the World Trade Organization (WTO). It set out minimal provisions regarding the acquisition and the enforcement of intellectual property rights. However, this agreement has been made obsolete by later developments in world trade and counterfeiting. Among other things, it ignores the Internet, it only allows for limited border controls on imports and exports regarding brands and copyrights, and it only mentions the most rudimentary form of international and cross-border cooperation.

ACTA, which is based on TRIPS, calls for binding and voluntary measures, to be adopted by signatory states. From the European Union’s point of view, ACTA is a mixed agreement. Some of its provisions fall under the exclusive purview of the EU, while others are considered a shared competence between the EU and the member states.

2. Inception of ACTA

Official negotiations on ACTA were launched in June 2008, based on a concept introduced by Japan during the preparation of the 2006 G8 and subsequently endorsed by the United States.

There were 11 negotiation rounds. 39 countries (3), representing over 50% of global trade, worked on that project for 5 years. However, China and India, which are the main source of counterfeited goods, did not take part in the talks. On May 27, 2011, the European Commission published the final version of the treaty.

ACTA was signed on October 1, 2011 by 8 countries: Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea, and the United States. On January 26, 2012 in Tokyo, the European Commission and 22 of the European Union’s 27 member states also signed the agreement.

3. Main provisions

The Anti-Counterfeiting Trade Agreement comprises 6 chapters and 45 articles, setting out a new legal framework for the enforcement of intellectual property rights:

  • Chapter I: Initial provisions and general definitions, articles 1-5
  • Chapter II: Legal framework for the enforcement of intellectual property rights, articles 6-27
  • Chapter III: Enforcement practices, chapters 28-32
  • Chapter IV: International cooperation, articles 33-35
  • Chapter V: Institutional arrangements, articles 36-38
  • Chapter VI: Final provisions, articles 39-45

3.2 Criminal enforcement
Articles 23-26 provide for penalties that are sufficiently severe to act as a deterrent. These penalties can vary from fines to prison sentences. They can strike infringers, but also accomplices and legal entities.

3.3 Border measures
Articles 13-22 confirm border controls. They state the prerogatives of customs administrations but do not reinforce them.

3.4 Enforcement of intellectual property rights on the Internet
Article 27 provides for ways to enforce IPR in the digital environment. In particular, it indicates that access providers can be held liable.

3.5 Strong cooperation mechanisms between the parties to ACTA to help them enforce the treaty’s provisions
Articles 33-35 provide for cooperation through exchange of intelligence, capacity building and technical assistance. Articles 36-38 provide for the establishment of the ACTA committee to facilitate the implementation and the functioning of the agreement.

3.6 The establishment of “best practices” to ensure the efficient enforcement of IPR.

4. An intense mobilization against ACTA

Rarely had a trade agreement caused such a strong mobilization among opponents. General discontent has been fueled both by the method for elaborating the treaty and by its content, which many consider too « vague » and « a danger » for digital freedoms, access to drugs, and the neutrality of the Internet. Since early 2012, discontent has been on the increase, both in the civil society and within major European bodies.

  • On the very day that the European Commission officially signed the agreement in Tokyo, the European Parliament rapporteur on ACTA resigned, calling the whole process a « masquerade. »
  • In late January 2012, more than 1.25 million people signed a petition against ACTA, and on February 11, millions of opponents to ACTA took part in an international protest day.
  • In February 2012, the European Commission asked the European Court of Justice to check whether the agreement violates fundamental rights.
  • In May and June, 5 standing committees of the European Parliament (Civil Liberties, Justice and Home Affairs, Industry, Legal Affairs, Development, and International Trade) came out against the treaty.

After months of intense debate and protests, and after a series of negative votes in committees, the European Union finally voted down the treaty with a clear majority on July 4, 2012. However, the European Parliament’s veto does not officially bury ACTA, since signatory countries – the United Stats, Japan, Canada, Australia, New Zealand, Singapore, South Korea, Switzerland, Morocco, and Mexico – still have the possibility to ratify it.

5. Causes of the controversy, in the view of opponents to ACTA

As early as May 2008, when Wikileaks divulged a draft version of the treaty, ACTA sparked massive protests, both from civil society and within EU bodies. There are many sticking points regarding the treaty and the way i twas established :

5.2 The treaty is vague
Many also object to the content of the agreement. They allege that ACTA is too « vague », and, therefore, presents a danger to individual freedoms. ACTA critics say the agreement is not precise enough. They add that its basic principles are not detailed enough and that there are uncertainties regarding the way they will be interpreted. All that, in their view, can potentially lead to right holders committing abuses.

5.3 The treaty violates fundamental rights
This is one of the more controversial points. Critics say the treaty poses a threat to individual freedoms, particularly those of Internet-users. The agreement stipulates that a country may provide its relevant authorities with the authority to « order an online service provider to disclose expeditiously to a right holder information sufficient to identify a subscriber whose account was allegedly used for infringement, where that right holder has filed a legally sufficient claim. » Online service providers, search engines, access providers and social networks may therefore disclose user data when asked to do so. On a broader level, the treaty increases the responsibility of Internet access providers.

5.4 Independent ACTA committee
The ACTA committee is an oversight committee which was established to review the implementation of the agreement by the signatories and its operation. It can also set up committees and ad hoc working groups to assist it in carrying out its responsibilities. It can even seek the involvement of private interest groups. ACTA critics say this plays in the hands of intellectual property protection lobbies.

5.5 Limited access to generic drugs
ACTA includes provisions stepping up the fight against the entry of counterfeit drugs into signatory countries. Yet ACTA critics allege that the agreement will restrain sales of legal generic drugs because it does not differentiate between copycat drugs and generic drugs. Some say this new legal framework could lead to illegitimate seizures at the borders. However, it should be noted that ACTA explicitly mentions the Doha Declaration on Trade Related Aspects of International Property Rights (TRIPS) Agreements and Public Health. Furthermore, patents were explicitly excluded from the agreement’s customs measures.

ACTA, hailed by some and criticized by others, has been causing intense controversy for several years. Its rejection by the European Parliament on July 4, 2012, means it will not come into force in Europe, and its implementation in the rest of the world is also very much in doubt.

6. Further information

  • October 2007: Beginning of negotiations, initiated by Japan and the United State
  • June 3-4 2008: First round of official negotiations in Geneva, Switzerland, out of a total of 11 rounds held until October 1, 2010, involving 39 countries, including the 27 member-states of the European Union.
  • July 29-31, 2008: Second round of negotiations in Washington, DC, United States.
  • October 8-9, 2008: Third round of negotiations in Tokyo, Japan.
  • December 15-18, 2008: Fourth round of negotiations in Paris, France.
  • July 16-17, 2009: Fifth round of negotiations in Rabat, Morocco.
  • November 4-6, 2009: Sixth round of negotiations in Seoul, South Korea.
  • January 26-29, 2010: Seventh round of negotiations in Mexico City, Mexico.
  • April 12-16, 2010: Eighth round of negotiations in Wellington, New Zealand.
  • April 21, 2010: FIRST OFFICIAL DRAFT : Negotiating countries publish documents from the eighth round of negotiations in Wellington, New Zealand.
  • June 28 – July 1, 2010: Ninth round of negotiations in Lucerne, Switzerland.
  • August 16-20, 2010: Tenth round of negotiations in Washington, DC, United States.
  • November 24, 2010: The European Parliament passes a resolution on ACTA.
  • October 11, 2011: 8 COUNTRIES SIGN THE TREATY : the United States, Australia, Canada, Japan, Morocco, New Zealand, Singapore and South Korea.
  • May 27, 2011: The European Commission publishes the final version of the treaty.
  • January 16, 2012: THE EUROPEAN COMMISSION AND 22 OUT OF 27 EU MEMBER STATES SIGN THE TREATY IN TOKYO, JAPAN (minus Cyprus, Estonia, Slovakia, Germany and the Netherlands).
  • February 11, 2012: International protest day against ACTA.
  • February 22, 2012: The European Commission asks the Court of Justice of the European Union to check whether the agreement violates fundamental rights, including freedom of speech, freedom of information, data protection, and intellectual property rights.
  • April 10, 2012: Over 2.5 million Internet-users sign a petition against ACTA.
  • June 19, 2012: The Committee on International Trade (INTA) advises the European Parliament to reject the agreement (19 in favor, 12 against, no abstentions).
  • July 4, 2012: THE EUROPEAN PARLIAMENT IN PLENARY SESSION REJECTS THE TREATY (478 against, 39 in favor, 165 abstentions).

6.2 Other bills with similar aspects to ACTA

Some bills currently being negotiated (CETA) or temporarily deferred (PIPA and SOPA) intend to establish new legislative frameworks regarding intellectual property and show some similarities with ACTA:

  • PIPA (Protect Intellectual Property Act, or Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 211) – United States (deferred until further notice). PIPA was put to the US Senate on May 12, 2011. IT is a new version of the COICA bill (Combating Online Infringement and Counterfeit Acts) that was rejected in 2010.
  • It is also the Senate equivalent of the SOPA bill. Its goal is to give US authorities and right holders tools to limit access to websites dedicated to piracy and counterfeiting.

SOPA (Stop Online Piracy Act) – United States (deferred until further notice)

SOPA was put to the US House of Representatives on October 26, 2011. Its aim is to widen the enforcement scope of copyrights and right holder protection to limit online infringements and counterfeiting. Following the US Senate’s decision to put the PIPA bill on hold, committee work on SOPA was stopped on January 20, 2012, until an agreement can be found.

CETA (Comprehensive Economic and Trade Agreement) – Canada and European Union (currently being negotiated)

Negotiations on a free-trade agreement between Canada and the European Union were officially announced at a Canada-EU summit in Prague, on May 6, 2009. They have recently raised deep concern, since it is alleged that several provisions on copyrights are identical to provisions in the controversial ACTA treaty, which the European Parliament rejected on July 4, 2012.

(1) More information in French

(2) Read the full text of ACTA

(3) 39 countries took part in the establishment of ACTA: Australia, Canada, South Korea, the United States, Japan, Morocco, Mexico, New Zealand, Singapore, Switzerland, Jordan, the United Arab Emirates and the EU’s 27 member states.