Still A Long Way To Go For Anti-Counterfeiting Trade Agreement

The Anti-Counterfeiting Trade Agreement negotiated last year will be open for signature for two years, until the first of May 2013. But while this looks like a long time, it may be needed by the 37 negotiating governments (including the United States, Japan, South Korea and the 27 European Union members) to iron out problems on their way to implementing what some rights owners welcomed as a possible new “gold standard” for the enforcement of intellectual property rights.

EU Parliament: Questions Abound on ACTA

In the European Parliament, the Committee on International Trade (INTA) has filed a request to its Legal Services regarding potential discrepancies between the much-debated agreement and existing EU legislation (the so-called EU acquis). INTA raised questions about the European Commission’s choice of the legal basis for the agreement and also potential violations of existing international obligations. A second request for a legal check now is being prepared by the Legal Affairs Committee with questions to be finalised this week, according to the office of Klaus-Heiner Lehne, chair of the Legal Affairs Committee.

On top of the fact that the Parliament’s Legal Service will have to answer two sets of legal questions on ACTA and the ACTA negotiation process, skirmishes between the different EP party groups in both committees about what should be asked are showing the sensitivity of the ACTA dossier.

Conservative INTA member Daniel Caspary (EPP) said broad and open questions would allow for a thorough check. Green Party members and advisers propose to ask more detailed questions and include a check on the compatibility of ACTA with European fundamental rights and the EU’s obligation to promote the rule of law in developing countries. ACTA favours the promotion of private IPR enforcement, according to Green Party members, something that they think of as creating a risk of overzealous enforcement without due legal process.

Flurry of Studies on ACTA Compatibility with EU Law

The Greens/EFA Internet Core Group in the European Parliament, and a collection of its individual members have brought out heavy artillery against ACTA by presenting a new analysis on “ACTA and access to medicines” by Sean Flynn of American University Washington College of Law, and a detailed legal opinion on the “compatibility of ACTA with the European Convention on Human Rights & the EU Charter of Fundamental Rights” from international law professor Douwe Korff (London Metropolitan University) and Oxford Internet Institute researcher Ian Brown. Both documents, which are open for comment, argue that ACTA falls short of European standards, materially and with regard to its negotiating process.

Flynn concludes in his analysis that “ACTA’s process did not comply with Parliament mandates on transparency and stakeholder participation,” and that “ACTA does not comply with Parliament orders to exclude TRIPS-plus provisions for medicines.” ACTA in Flynn’s view will bring a shift in “’hard law’ rules and ‘soft law’ encouragements toward the interests of intellectual property rights holders” and increase the risk of “wrongful searches, seizures, lawsuits and other enforcement actions against legitimate suppliers of generic medicines.”

Major issues, according to Flynn, are what he calls a “dramatic expansion of border measure requirements, including where border agents ‘suspect’ a label of being confusingly similar”, an imminent expansion of criminal seizures, even for suspected IPR violations, and also “third party enforcement requiring only a minimal level of suspicion at the provisional measures stage.” The latter “might deter multiple actors involved in the supply, manufacture, and global distribution of generic medicines.”

Korff and Brown’s paper strongly criticizes the lack of clear safeguards in ACTA as a balance to TRIPS-plus measures, which, for example, make the wider scope of criminal offenses mandatory. Without a “de minimis rule” – protecting “innocent” and “trivial” IPR violations – a ban of private-sector three-strikes-regimes, limits to the disclosures and trans-border transfers of personal data and several procedural guarantees, ACTA’s compatibility with human rights provisions is questionable, the authors said. “The entire Agreement, in our opinion, (is) incompatible with fundamental European human rights instruments and standards,” they said.

Despite this rather bleak conclusion, Korff and Brown make no recommendation as to whether ACTA should be brought before the European Court of Justice right away, something that civil rights organisations like the Foundation for a Free Internet Infrastructure have called for in a letter to Parliament. “This would have been the atomic bomb approach,” warned Caspary. “I think we should wait for the check from the Parliament’s Legal Services.” But what if Legal Services concludes that ACTA is not in line with the acquis?

“The Commission would have lied,” Caspary said, and Parliament would have to decide what to do: go to the European courts, just change EU law to make it ACTA-compatible, or set conditions for the Parliament’s approval to specify how ACTA has to be implemented. These options were proposed recently in a study commissioned by INTA and recently leaked, according to which the Commission’s assurance that ACTA would leave the acquis untouched was not accurate.

This study also refers to concerns that ACTA disregards conditions set by the Parliament in the discussions about a new directive on criminal enforcement against IPR violations, known as IPRED2. ACTA would “extend criminal measures of indirect commercial benefit, which may contradict the Parliament’s position that acts ‘carried out by private users for personal and not-for-profit purposes’ were to be excluded from the scope of the IPRED2,” the study said. A question targeting this very debate somehow got dropped from the list of INTA questions to the Legal Service, which some observers think could be intentional.

ACTA as Executive Agreement?

The European Union has no monopoly on a potentially protracted fight over ACTA. In the United States, experts are divided over the question if the US government can enact ACTA as a sole executive agreement without involving Congress. A paper by Oona A. Hathaway and Bernice Latrobe Smith, professors at Yale Law School, and Amy Kapczynski, a professor at University of California Berkeley Law School, warns against the potential reduction of democratic control over international lawmaking – and at the same time an expansion of the use of sole executive power. While some of ACTA’s provision would clearly fall within that scope, the authors write, others go beyond the traditional bounds of a sole executive agreement.

The Office of the United States Trade Representative (USTR) passed on and did not answer any press questions, including about a timeline or if it will consider involving Congress in the approval process.

It is what Flynn describes as “ACTA’s constitutional problem.” “Like other agreements that regulate foreign commerce and govern US congressional powers (including to make intellectual property rules), ACTA cannot bind the US without congressional approval,” Flynn said. “The USTR is saying that it will not seek congressional approval. So it cannot bind the US under US law. So ACTA will be a binding treaty under international law that the US has no authority to enter under US law.”

This problem has also made MEPs on the other side of the Atlantic suspicious. How could they pass an agreement that might in the end not be binding for some of the negotiating partners? “A legal opinion must advise on whether the Parliament’s prerogatives are violated if it is asked for consent without certainty whether or not ACTA is binding on all its parties, in particular the United States and Mexico,” Green Party member Eva Lichtenberger added to the questions she wants to see answered by the Legal Services.

Slow Implementation among Other Partners

In Mexico, the Senate has rejected becoming an ACTA partner. But it is still open if the President chooses to overrule the criticism. For ACTA partner New Zealand, an announcement about next steps is expected in the next few weeks, according to a spokesperson from the Ministry of Economic Development. New Zealand’s Cabinet has set rules allowing that “certain international treaties (essentially multilateral treaties and major bilateral treaties of particular significance) will be presented to the House of Representatives for select committee consideration, before the Executive takes binding treaty action.”

Not even Switzerland, one of the countries that seemed more at ease with ACTA and the whole negotiating process, has finalised the procedure for signing ACTA. “In Switzerland, the internal process preparing the decision for signature is ongoing,“ Juerg Herren, one of the Swiss ACTA negotiators from the Federal Office of Intellectual Property, told Intellectual Property Watch. There is no timeline, he said.

For Japan, Tsuyoshi Kashimoto, director for intellectual property at the Ministry of Economy, Trade and Industry, explained that following the “Intellectual Property Strategic Program 2011,” the Japanese government is “now arranging for the signature. Then the government is moving on to the ratification procedure phase.”

Academic Appeal to Rethink IP Strategies

Meanwhile, as administrations and politicians try to move ACTA down the road to ratification – or not – academics and others in the United States this week published the “Washington Declaration on Intellectual Property and the Public Interest.” The declaration challenges the dominant direction of the negotiations on IP in the US, Flynn wrote to Intellectual Property Watch.

“Most relevant to ACTA, the declaration calls for all international intellectual property agreements to be ‘subject to democratic checks and balances, including domestic legislative approval,” he said. The appeal goes far beyond this, though, recommending to put IPR in its place (and not above fundamental rights), to value openness and the public domain, to strengthen limitations and exceptions, to set public interest priorities for patent reform, to support cultural creativity, to check enforcement processes and require evidence-based policy making. The full declaration, which is open for signatures, is available here.