The Perennial Issue of Parallel Imports and Border Enforcement: Canada's Version of ACTA - Bill C-8

On April 24, 2014 I was a speaker and presented a talk entitled "The Perennial Issue of Parallel Imports and Border Enforcement: Canada's Version of ACTA - Bill C-8" at the 22nd annual Fordham IP conference.

Here's a summary of my talk:

Bill C-8 is now pending before Canada’s Parliament. According to the Legislative Summary:

Canada has not explicitly indicated its intention to ratify ACTA by introducing Bill C-8... However, when questioned on this issue by the Committee, the Honourable James Moore, Minister of Industry, and his deputy minister stated that although the bill is intended to respond to domestic pressures, it brings Canada in line with ACTA.

According to the IIPA, “Bill C-8 should be improved and then enacted as quickly as possible”. There is, however, concern that Bill C-8 goes far beyond what is required in terms of anti-counterfeiting, even as required by ACTA. This would be controversial enough, especially since ACTA shows no sign of imminently or even ever coming into force. Moreover, there is reason to believe that Bill C-8 could – whether inadvertently or otherwise – enable the use of copyright and even trade-mark law to block parallel imports, which are legitimate by definition and which have been legitimized by the Supreme Court of Canada.

Here are some questions I would have liked to see discussed more but the Moderator had other ideas:

1. How likely is it that ACTA will ever come into force?
2. How can the USA possibly expect to credibly oppose parallel imports in the TPP after its Supreme Court confirmed in Kirtsaeng last year that copyright law won’t work to block parallel imports and US TM law is generally ineffective?
3. Does the 301 process really have any consequences anywhere?

It’s always interesting that so many who profess to believe in free trade and believe that IP issues belong in free trade agreements are really hostile to parallel imports and use every possible means to erect “private tariffs” in these agreements.

The antipathy to parallel imports makes me even more concerned that Bill C-8 may have language in it that has been tainted by lobbyists and which may betray the Government’s stated intentions NOT to impede parallel imports. Having made the winning arguments in Canada’s leading Supreme Court case on parallel imports, I know how tricky every word and the placement and history of every word in the statute can be in this context.

Anyway, my slides contain a number of examples of the inconsistent and ambiguous wording that has crept into this bill that could impact the issue of parallel imports.

I’m also in good company here with Prof. Jeremy de Beer who told the Committee:

I admit that it was not easy for me, or a number of other IP experts

whom I consulted, to understand the intricacies of this bill's

provisions affecting parallel imports. The provisions are technical

and complex, and they interact with the provisions of the existing

legislation with effects that may not be immediately apparent.

The Committee hearings on Bill C-8 that took place last November were very unsatisfactory. The Committee would not hear from me, but did hear separate presentations from a father and son team of anti-counterfeiting lawyers from the same firm. This hearing was another example of the quote attributed to Bismarck “If you like laws and sausages, you should never watch either one being made”.

This is really too bad because I think that the Government and its officials have some good intentions here. Nobody supports counterfeiting. However, somewhere along the line, they are getting some not so good advice and the results could cause a lot of collateral damage to the free flow of legitimate goods - including medicines intended for sale in developing countries where lives may be at risk in the event of delayed delivery.

Lots more in my slides, which are available here.

HPK

The End of the Great Canadian Trade-mark Hyphen – and other Consequential Changes

The hyphenated spelling of “trade-mark” had become something of an – ahem – trade-mark for Canada. It was a bold proclamation of independence and innovative thinking when Bob Kelly - an arcane and erudite veteran of the Department of Justice from a bygone era – came up with this bright idea. That hyphen was inserted in 1993 and served a useful purpose, since many people were confused between the American/WIPO spelling ("trademark") and the British spelling ("trade mark"), which the Brits still use.  After all, isn’t the purpose of trade-marks law to avoid confusion? Canada had earlier used the British spelling. So - we are now following the American lead...Hopefully, this capitulation will appease the Americans and they will back down on term extension, prevention of parallel imports, repealing fair dealing, jail terms for petty infringers, ACTA implementation, the TPP and other aggressive efforts. As if!

Seriously, the Government has introduced numerous changes to the venerable Trade-marks Act (enjoy the spelling while you can) – above and beyond removing the hyphen from "trade-mark". These numerous changes to the Trade-marks Act are hidden in plain sight in the omnibus budget implementation Bill C-31 and they can be found here.

Fortunately, Rob Kittredge has gone to the trouble of preparing both a consolidated and redlined version that can be found on his blog, here, along with a short discussion by him, including his thoughts on the process of including these changes in an omnibus budget bill. All Canadian IP practitioners owe Rob a big vote of thanks for making these changes transparent and doing this so quickly over the weekend.

In days to come, I may and others no doubt will discuss the changes and how the bill is likely to be handled – and whether committee hearings should be undertaken. Along with Bill C-8 - the anti-counterfeiting legislation that goes well beyond what is needed to address counterfeiting and which had only perfunctory committee hearings - we are about to see a massive revision of the one piece of Canadian IP law that arguably needs little or no revision and which has worked really well since 1954, when it was introduced after a model consultation process led by the late John Osborne, an eminent practitioner in his day. No - I don't remember this first hand. But I heard a lot about it from the late Gordon Henderson and Bill Hayhurst, who both thought very highly of the legislation and the way that it was developed. Unfortunately, the days when such a process would work effectively are probably gone forever, given the role of lobbyists and well-funded trade associations.

HPK

Canadian Copyright and Related Issues - Suspense at Summer’s End

Here are some developments we can expect soon in Canadian copyright law:

• York University will likely very soon file a statement of defence in the lawsuit by Access Copyright. This has already taken months longer than usual. York’s position and strategy will inevitably attract much scrutiny, since an adverse outcome for York could profoundly and negatively affect the entire Canadian educational community at all levels.
• The Federal Court could rule at any time in the Voltage Pictures effort to compel Teksavvy to hand over the identities of thousands of its customers. Teksavvy, it will be recalled, has spent a lot of money not to take a position on this issue and to buy time for a law school clinic to get involved as an intervener. Teksavvy’s counsel spoke briefly at the end of the hearing, which took place on June 25, 2013 but Teksavvy had not previously taken any position.
• The Copyright Board has just advised that “the Tariff of Levies to Be Collected by CPCC in 2012, 2013 and 2014 on the Sale, in Canada, of Blank Audio Recording Media is scheduled to be published in the Canada Gazette this Saturday, August 31, 2013. The links to the certified Tariffs, as well as the decision in respect of each Tariffs will be available on our web site under the heading “What’s New” on Friday, by the end of the business day.” The Board will also, at some point, rule on whether it intends to proceed with a hearing on whether there can be a levy on microSDs for the period of January 1 to November 6, 2012. The Government published a regulation on November 7, 2012 that stated that “Memory cards in microSD form factor, including microSD, microSDHC and microSDXC cards, are excluded from the definition “audio recording medium” in section 79 of the Copyright Act.”
• The Supreme Court of Canada could at any time now deliver its judgment in the case involving Cinar and Claude Robinson, et al which will presumably focus on the question of what is a “substantial part”.

In the somewhat longer term, we know that we will see:

• The hearing in the Federal Court of Appeal on the Warman v. Fournier case, which involves fair dealing, substantial copying, limitation periods, etc. and in which there are now some prominent interveners.
• A ruling by the Copyright Board in Access Copyright’s quest to get a tariff on copying by provincial civil service employees.
• A hearing next May by the SCC on the interplay between the Status of the Artist Act and the Copyright Act and whether the National Gallery must negotiate exhibition rights, etc. with respect to pre-existing art works under the aegis of the former act rather than the latter, under which the artists have apparently never even tried to get a tariff at the Board.
• A hearing by the Federal Court of Appeal on whether Catherine Leuthold gets the $22 million or so that she believes she is owed by CBC for the few apparently inadvertently unlicensed re-uses of a few of her still photos from 9/11 that the Federal Court said was worth less than $20,000 and what the cost consequences may be to her if she does not succeed.
• A hearing beginning February 11, 2014 by the Copyright Board of the Access Copyright proposed Post-Secondary Tariff, in which the AUCC has spent almost $2 million that we know about and withdrawn its objections, leaving its members without any representation in a hearing in which Access Copyright is seeking what it considers to be a “mandatory” tariff.
• A hearing by the Copyright Board beginning April 29, 2014 into Access Copyright’s proposed tariff for K-12 schools, which is taking place notwithstanding that the K-12 school boards have stopped paying anything to AC under the previous tariff.

Other issues to watch in the medium term will include:

• How will the educational community react to York’s defence of the Access Copyright litigation?
• Will Access Copyright sue one or more K-12 school boards?
• Whether the Government will look at growing calls to deal with certain issues involving the Copyright Board, some of which could be dealt with by regulation, rather than legislation.
• Whether Canada gives into expected American and/or European pressure to extend the copyright term to life + 70 years, etc. and other potentially controversial US and EU IP demands in the TPP and/or CETA negotiations.
• Whether the far reaching Bill C-56 dealing with anti-counterfeiting – but which goes far beyond what might be required even by ACTA – is reintroduced after the expected prorogation, whether changes will be made before it is re-introduced, and what will happen to it if it proceeds through the committee process.

Most of the above issues have been discussed before on this blog. Watch here for further developments.

HPK

Bill C-56: Just When You Thought It Was Safe To Go Back Into The Water?

Some may have thought that ACTA was dead and that, after a year of arguably the most sweeping changes in Canadian copyright law in almost a century, there might be time to pause, reflect, absorb and assimilate.  No such luck.

Bill C-56 could very well be intended to set the stage for Canadian ratification of the controversial Anti-Counterfeiting Trade Agreement (“ACTA”).The European Union has clearly rejected ACTA – amid much controversy and even internal acrimony. Canada has signed the ACTA treaty - but has not yet ratified it. Canada has no obligation to ratify it and has no current binding obligations to make any of the changes proposed in Bill C-56. Clearly, the USA would like Canada to implement whatever changes ACTA may require and to ratify it soon.

This is what the Bill says it does, according to the published summary, which has no direct legal  effect:

SUMMARY
This enactment amends the Copyright Act and the Trade-marks Act to add
new civil and criminal remedies and new border measures in both Acts, in order
to strengthen the enforcement of copyright and trade-mark rights and to curtail
commercial activity involving infringing copies and counterfeit trade-marked
goods. More specifically, the enactment
(a) creates new civil causes of action with respect to activities that sustain
commercial activity in infringing copies and counterfeit trade-marked goods;
(b) creates new criminal offences for trade-mark counterfeiting that are
analogous to existing offences in the Copyright Act;
(c) creates new criminal offences prohibiting the possession or export of
infringing copies or counterfeit trade-marked goods, packaging or labels;
(d) enacts new border enforcement measures enabling customs officers to
detain goods that they suspect infringe copyright or trade-mark rights and
allowing them to share information relating to the detained goods with rights
owners who have filed a request for assistance, in order to give the rights
owners a reasonable opportunity to pursue a remedy in court;
(e) exempts the importation and exportation of copies and goods by an
individual for their personal use from the application of the border measures;
and
(f) adds the offences set out in the Copyright Act and the Trade-marks Act to
the list of offences set out in the Criminal Code for the investigation of which
police may seek judicial authorization to use a wiretap.
The enactment also amends the Trade-marks Act to, among other things,
expand the scope of what can be registered as a trade-mark, allow the Registrar
of Trade-marks to correct errors that appear in the trade-mark register, and
streamline and modernize the trade-mark application and opposition process.

Nobody defends counterfeiting – especially when it involves medicines or other products with health and/or safety aspects. However, the evidence that counterfeiting of such products with health and safety consequences actually occurs in Canada on a commercial scale seems strangely elusive and mostly anecdotal, as is the case with respect to economic data. Moreover, there are other laws to deal more directly with hazardous and dangerous products, especially food and drugs. 

On the other hand, the rhetorical attempts (without any evidence) to conflate “counterfeiting “and “piracy” with terrorism, pornography, theft, stealing, money laundering, organized crime  and other ills  continue unabated. Indeed, overly zealous border enforcement to prevent trade in counterfeit drugs has held up the transshipment of life saving generic and perfectly legal drugs to developing countries (for example, even via such an advanced country as The Netherlands) because customs officials took it upon themselves – or perhaps were encouraged – to block such shipments. 

Excessive criminalization and excessive border enforcement measures do not promote respect for the law. It also costs a lot for society to enforce such laws at the expense of taxpayers. 

What we do know is that ACTA is an American initiative and Canada has been under intense pressure to support the Americans on such initiatives. We see this every year in the annual “301”show. We will likely see similar efforts in the Trans Pacific Partnership ("TPP") negotiations. We vividly saw attempts to pressure Canada on IP  a few years ago when a prominent American lobbyist named Scotty Greenwood blatantly tried to trade off “buy American” protectionism for Canadian copyright capitulation. In the past, various Canadian Governments including the current Government, to its credit, have mostly resisted these kinds of tactics. Funny – we thought we already had free trade with the USA – but we keep finding out that we still just have to tweak a little here and there in our IP laws... which, incidentally, comply with every treaty we have ever ratified. The same cannot be said of the USA – as the WTO has confirmed on the copyright front, where the USA is an ongoing scofflaw in respect of the infamous “Section 110” violation.

Against this background, we now see Bill C-56 – introduced on Friday, March 1, 2013. Even with the whole weekend to look at it, one will need much more time. It is 50 pages long.  The first 13 page deal with copyright – the balance with trade-marks.  

There may be some  positive aspects of this legislation that will be useful to combat seriously harmful counterfeiting. However, there are countless questions that require answers. No answers in today’s blog – but just some questions that many will or should be asking:

COPYRIGHT 

1. How will these provisions affect “parallel imports”? These are imports that may in some way be protected by copyright or other IP law and which were made perfectly legally in the country where they were made and which can be imported (apart from possible “private tariff”  IP legal tactics) into Canada at a lower price than the “exclusive” Canadian distributor is able or willing to charge. Canada is known to be a high price market where price discrimination is prevalent, as a Senate Report recently confirmed. The party with copyright ownership in Canada and the place of manufacture may or not be same or related. But the goods are perfectly legitimate. The copyright owner has already been paid where the goods were made. We had a Supreme Court of Canada decision about this in the 2007 Kraft decision, in which arguments that I made were instrumental in the prevailing judgment. The complexity of that judgment is enough to show that there are no easy answers to the issues involved, as I show in a short paper for the Law Society of Upper Canada. To what extent is this initiative being driven by those whose real agenda is opposition to parallel imports and the use of IP law as "an instrument of trade control"?
2. What are the consequences of customs officers getting more immediate and short term power than we now give to judges? 
3. What does “reasonable grounds” mean, when see through the eyes of a customs officer?
4. If the Supreme Courts of Canada and the USA struggle with the difference between legitimate parallel imports and pirated goods, how are customs officers supposed to make these decisions on the spot and accurately?
5. What protection will there be for the privacy of importers?
6. What redress will there be for importers whose goods have been wrongfully seized?
7. Why does the bill deal with a “communication signal”?
8. Will the personal baggage exception be sufficient to prevent overly zealous and intrusive border searches of laptops, smart phones, etc. to ensure that "the number of copies, indicate that the copies are intended only for their personal use"? After all, it could be argued that such a determination cannot be made without a search in the first place.

TRADE-MARKS

1. Why change the definition of trade-mark – which derives from who knows how many centuries of  jurisprudence – to be based upon “sign” rather than “mark”? If this is meant to sweep in colours, sounds, smells and other things that are not “marks” in the classic sense of “making a mark”, “marking out a territory”, setting out a boundary, the “mark” of a signet ring, etc., is this a major policy shift that requires extensive debate? Or is this simply another example of “If IP protection is good, more IP must be even better”.  It’s not obvious to everyone that the colour of delivery trucks or the sound of a motorcycle or the smell of a perfume should be protected by trade-marks law and, even if so, how such a regime can be effectively maintained and enforced. For example, if I should want to start a little parcel delivery business on the side and I find a good deal on a brown van, should I need to get it repainted?
2. Will we now have a “Trade-signs Act”? Alan Macek has already decried that we have not reverted to pre-hyphen days – so many may focus on the very name of the legislation.
3. Do we want to introduce a concept of being able to expunge an existing registration that “is likely to unreasonably limit the development of any art or industry”? The Courts have struggled for years with very mixed results to interpret much clearer provisions under the Competition Act.  Whatever the intention may be here, what does this really mean?
4. Do the provisions mix up the copyright aspect of packaging and labelling with the trade-marks aspects, and create a result that could prevent or severely inhibit legitimate parallel trade? It is common ground that trade-marks law has become virtually totally ineffective in Canada and the USA in the blocking of legitimate parallel imports – and most agree that this is how it should be. But is this now about to change without a thoroughly informed discussion?
5. Are we criminalizing a whole range of activity that has at most been subject to civil remedies? Are we criminalizing activity that may even have been perfectly legal, such as parallel trade?
6. Do the criminal provisions as drafted – with the mens rea concept of “knowingly” - suggest that wise parties should do more diligent searching when adopting a trade-mark, or should they avoid any kind of searching whatsoever so as to avoid any “knowledge” of possibly “criminal” infringement?
7. Is it really a good idea for a trade-mark examiner to be able to block a registration on the basis that “the trade-mark is not distinctive”? Is this really what is intended? This is potentially a huge change in policy and practice. Does this mean that examiners will now browse the internet and raise countless problematic objections?
8. Again, is it wise to give powers to customs officials that even judges do not have?
9. Again, what redress is in place for importers and their customers for wrongful seizures.

This bill is bound to raise a lot of difficult technical and policy issues on its own. It is immensely complicated and requires enormous scrutiny.  Indeed, the proposed changes to the Trade-marks Act are the most comprehensive in 60 years. 

Moreover, questions will also be asked focussing on:
1. Is ACTA a good idea for Canada?
2. If so, does this bill go farther than necessary?
3. What are the unforeseen effects of this bill resulting from  non-transparent policy objectives, if any, and problematic drafting, if any? 
4. Could the bill, through its substantive provisions or through overly zealous enforcement or in other ways, affect trade in legitimate goods?

The coincidental timing of the bill with certain aspect of the Canada/USA file having to do not only with IP but potentially other issues is also bound to raise many questions.

HPK

(rev. March 6, 2013)

ACTA "intercessional" [sic?] meeting in Washington, August 16, 2010

It seems that there will be an "intercessional" [sic?] ACTA meeting in Washington, D.C. on August 16, 2010.

Either somebody (USTR?) can't spell or this is a great pun or Freudian slip.

"Intercession" usually has religious significance, i.e. see here and here, i.e. in the sense of mediating between two parties who can't agree, which seems to be the situation these days between the US and the EU over ACTA, which both parties are pursuing with religious-like fervour but also with fervent disagreement over just how excessive and aggressive the agreement should be.

Whether this will be an "intercessional" or "intersessional" meeting, apparently the meeting will be only between the USA and the EU, with the less important countries, in their view, such as Canada not invited.

Speaking of religion, I guess that "They also serve who only stand and wait..."

HK

Justice Hughes on Canada's Copyright Act

Here is a recent breathtaking ruling by Hughes, J. of the Federal Court of Canada setting aside a "rolling Anton Piller" order that allowed for civil search and seizure before judgment against several "small shopkeepers." It is an excellent review of the dangers of this ultra-powerful enforcement weapon when used improperly and on the basis of "careless, inadequate or misleading" evidence. This ruling must be read with great care by any IP enforcement counsel contemplating use of an Anton Piller order.

And here's a statement from that ruling that should be brought to the attention of those who would impugn the adequacy of Canadian copyright law and are calling for additional and unnecessary enforcement powers:

[60] The Copyright Act supra is among the most generous of any intellectual property statute in Canada or elsewhere in providing for rights and remedies. Copyright subsists without the necessity for registration and is presumed in the absence of evidence to the contrary. Registration is cheap and easy and provides presumptive evidence as to copyright subsistence and ownership. Proceedings can be quickly brought as an application rather than an action. Damages can either be proved or an election to take statutory damages made. An injunction can extend to works not specifically put in issue. Allegedly infringing works can be taken into interim and final custody. An Anton Piller Order must be considered as an exceptional remedy to be used with caution and respect. It should not be considered as routine where so many other remedies and procedures are available.
(emphasis added)

For those in policy circles abroad who may not know him or have seen him at the Fordham IP conference, Justice Hughes was a preeminent Canadian barrister for decades before his appointment to the Federal Court. His books are - or should be - in every IP firm library in Canada. He speaks not only with the authority of a Federal Court judge but as a judge with vast and successful experience in IP law. His views require attention in any fora where IP policy is in issue. ACTA, CETA (Canada/EU) , Special 301 and domestic copyright revision immediately come to mind.

HK

PS - this 30 page ruling dated April 12, 2010 was issued five days after the hearing.

Will Canadian Copyright Revision Spring Forth Early?

This year, it sure looks like we are having an early spring.

And it may be that we will have an earlier than expected springtime copyright bill, as I am hearing on good authority.

Will it hopefully be truly “recalibrated” to serve Canadian needs and show Canadian competence, sovereignty and leadership? Or will it be the “Son of 61" - and follow in the footsteps of that very unpopular bill from 2008?

Will it be WIPO ready, and if so will Canada ratify the WIPO treaties? More crucially, will it be ACTA ready, whatever that may turn out to mean? If it is a balanced, reasonable and viable bill domestically, will that mean that Canada has drawn a line in the sand beyond which it will not go in the so-far-secret ACTA negotiations?

And above all, can any bill of any substance be passed in this minority Parliament and get through the Senate with adequate committee hearings and debate in time for the next election, whenever that may be? Bill C-32 - which was much simpler and much less controversial than Bill C-61, for example, took precisely a year to get through and that was with a majority government and without any effective mobilization of "citizen democracy" online. In 1997, we did not have blogs, Facebook, Twitter or YouTube.

If the next bill is truly balanced, well drafted, and comprehensible, it could be passed into law relatively quickly. If not, it may become the third failed bill in five years.

HK

ISP beats Hollywood in Oz iiNet decision

The Federal Court in Australia has given a huge victory to an ISP that fought back against Hollywood.

Justice Cowdroy's landmark judgment is summarized as follows:

21. In summary, in this proceeding, the key question is: Did iiNet authorise copyright infringement? The Court answers such question in the negative for three reasons: first because the copyright infringements occurred directly as a result of the use of the BitTorrent system, not the use of the internet, and the respondent did not create and does not control the BitTorrent system; second because the respondent did not have a relevant power to prevent those infringements occurring; and third because the respondent did not sanction, approve or countenance copyright infringement.
22. I will now make my formal orders. For the reasons provided in the written judgment I make the following orders.
    1. The Amended Application be dismissed.
    2. Subject to Order 3 and 4, the Applicants pay the costs of the Respondent, including costs thrown away as a result of the Applicants’ abandoning the primary infringement claim against the Respondent.
    3. Any party or person applying for an order for costs different to that provided by Order 2 is to notify the Court within 14 days in which event Order 2 will be vacated and in lieu costs will be reserved.
    4. If any application for costs is made as provided in Order 3 the parties and/or persons are to consult and prepare consent directions for the filing of submissions and, if required, for a hearing on costs.

Here's the decision - which is 636 paragraphs in length and extremely detailed in its factual and legal analysis.

It is worth noting that Justice Cowdroy issued this decision just 70 days - i.e. 10 weeks - after the conclusion of a hearing that began on October 26, 2009 and ended on November 26, 2009 with 19 hearing days . And much of the time the decision was pending was the Christmas season.

Michael Geist has quickly focused on the Judge's disparaging remarks on "termination" of subscribers accounts, and how this would not be reasonable because it would prevent use of the internet for all sorts of non-infringing uses.

Of course, the decision is mostly about "authorization", which is a proverbially important topic in Commonwealth countries and very different in important ways from the American concept of contributory infringement or secondary liability. It is this latter concept plus the US Supreme Court's "inducement" doctrine enunciated in Grokster + the US instigated three strikes policy that the US is trying to force upon Canada and ohter countries in every forum it can.

"Authorization" was also a key issue in the Canadian Supreme Court's landmark 2004 CCH decision.

While this decision will make for wonderful reading for copyright aficionados everywhere, and much celebration by those who believe in reasonable, proportionate and effective remedies, there will also be another process starting immediately.

This will entail the inevitable spin and propaganda that entertainment industry lobbyists will invoke as to how this decision clearly proves the need for a strong and mandatory "three strikes" mechanism and that ACTA is just the right forum to put it into place.

HK

PS:

It sure didn't take long for the spin to begin. See this .... HT @MichaelGeist on Twitter.

Canadian Proposal for ACTA Secretariat

The indispensable Jamie Love has posted a much more convenient version of an earlier leaked “non-paper” from Canada which proposes an ACTA “Council”, i.e. secretariat, that would stand apart from WIPO and the WTO.

Let us assume that this document is authentic. If it isn't, Canada should promptly say so.

This document not only suggests that ACTA will be a fertile turf for cultivation by ambitious bureaucrats and lobbyists but that Canadian officials may be treating ACTA a lot more seriously and enthusiastically than Canadian Ministers realize or care to admit. I, for one, would like to take Minister Clement at this word when he says that ACTA will be “subservient” to Canada’s domestic law and policy.

Anyway, here’s what the leaked Canadian document is all about in its own words:

During the informal meeting of the Anti-Counterfeiting Trade Agreement (hereafter
referred to as ACTA, or “the Agreement”), in Berne, Switzerland, on March 11-12, 2008,
negotiating partners discussed a number of institutional issues to be eventually
considered under Chapter Five of the Agreement (“Institutional Arrangements”), such
as, inter alia, monitoring and evaluation, dispute settlement, and accession, as well as
the various options to address them. In giving consideration to how these issues could be
addressed, Canada offered to prepare a non-paper outlining the various options that
negotiating partners might like to consider.

It is noted that the various issues to be addressed under the Agreement will require some
level of administrative commitment from each of the Parties, and have been enumerated
in view of Parties’ existing IP and enforcement-related requirements, arising from both
treaty obligations and from domestic law, with a view to reducing the overall
administrative burden on each Party. As such, it is noted that this list is non-exhaustive,
and in that light, Canada welcomes the input of other ACTA partners to develop a more
comprehensive review of the various options available under the Agreement.

This might even lead to a permanent new institution located somewhere:

Negotiating partners may wish to consider where meetings of the Council of Parties
will be held. For example, will meetings be hosted on a rotating basis by Parties to
the Agreement, or will these be hosted permanently in one location?

Ambitious, yes. Necessary, not.

Several other documents are available here. Jamie invites one and all to judge for themselves if these documents threaten US national security.

Given the leaks we have seen, the secrecy is entirely understandable but not for “national security” reasons. It’s really all about negotiating a supra-sovereign international IP regime that no country would democratically accept, not even the USA. According to Jamie, who recently talked with US Ambassador Ron Kirk:

Kirk didn't want people “walking away from the table,” which would likely happen if the text was public, he said.

How would we as Canadians in a democratic country react to a proposal to drastically rewrite Canadian IP law wihtout tabling the various readings of the legislation, holding the committee debates in secrecy, sharing drafts only with a few lobbyists, and letting the public in only when its about to be proclaimed in force?

Not very well, I suspect.

HK

USA Treaty Priorities?

It's been widely reported via Reuters that:

Somalia has announced it plans to ratify a global treaty aimed at protecting children, leaving the United States as the only country outside the pact, UNICEF said on Friday.

Somalia and the United States have long been the last hold-outs to the Convention on the Rights of the Child, adopted by the United Nations General Assembly exactly 20 years ago.

The most widely ratified international human rights treaty, it declares that those under 18 years old must be protected from violence, exploitation, discrimination and neglect.

(emphasis added)

Maybe the only explanation for the US being the last holdout from this worthy sounding treaty that even Somalia will ratify is that it is just too busy protecting the obsolete business models of the RIAA and MPAA through the secret ACTA treaty process and doesn't have enough time or resources to worry about lesser priorities, such as protecting children.

HK

ACTA - Certificate of Entitlement

ACTA - Time to Walk Away?

canada.com

David Gonczol, Ottawa Citizen

Here's Jamie Love in the Huffington Post on the ACTA leaks story broken by Michael Geist.

Here's The Atlantic.

Here's the New Zealand Herald.

This is going into the main stream.

If all or indeed any substantial portion of the rumours about ACTA (three strikes +, DMCA +, WIPO+, border searches of iPods, cell phone etc, for MP3s, etc.) are true, and if Canada goes along with this "agreement", then Canada will forfeit its sovereignly to determine its own IP policy. For starters, this summer's mammoth copyright consulation will have been for nothing.

So if there is substantial truth to these rumours, then Canada needs to seriously consider walking away from this secret treaty/agreement process. Maybe sooner rather than later.

We know that there is unprecedented secrecy over this process. Neither the WTO nor WIPO ever worked this way. There is no reason or justification for this. Absolutely none other than industry induced secrecy. You can be sure that the RIAA and MPAA know exactly what is going on here.

We know that Canada has very limited ability to influence the Americans. As Trudeau said, when a mouse gets in bed with an elephant, it is the mouse that needs to worry about being rolled over.

Canada has long since lost much if not most of its honest broker status in international IP and other diplomatic circles. We likely don't have the clout any more to stand up to the Americans in a negotiating room or to broker some more moderate IP arrangement. If we really think we can do that, maybe we should remain at the ACTA table for a while. But if we can't, maybe we should just walk away. And maybe sooner rather than later.

Walking away could preserve Canadian sovereignty to do what is best for Canada, which is what we really ought to care about. It might help Canada to regain international credibility and bargaining strength.

From what we have seen in the leaks to date, there is really nothing in the proposed ACTA that would benefit Canada. We do not have a serious piracy or counterfeiting problem here unless one believes the recycled and circular back-of-the-envelope “evidence” from the usual lobbyists. One has to look very hard to find fake Rolexes or pirate CDs or DVDs in Canada. I have frankly never seen this stuff in Canada. Compare mid-town Manhattan where these things are “in your face.” Claims about counterfeit medicines and health and safety issues, etc. are a smokescreen for the real agenda here, which is an ultra strong copyright and trade-marks regime, with huge “ex officio” powers given to border guards, who will be informed and educated by industry “experts.” Such ex officio action has recently resulted, for example,. in scandalous delays of perfectly legal generic AIDS drugs en route through The Netherlands to developing countries. In any case, one does not need ACTA to deal with any issues involving fake medicines or counterfeit Christmas tree decorations.

People don’t like surprise attacks on their civil liberties - and ACTA could be a very big surprise indeed, resulting in cut-offs of internet service and warrantless searches of electronic devices at the border for copyright infringement - i.e. downloaded songs and movies.

Anyone who doesn't believe that the US is serious about this should look at a recent bulletin dated August 20, 2009 from U.S. CUSTOMS AND BORDER PROTECTION CBP DIRECTIVE NO. 3340-049 which begins as follows:

PURPOSE. To provide guidance and standard operating procedures for searching, reviewing, retaining, and sharing information contained in computers, disks, drives, tapes, mobile phones and other communication devices, cameras, music and other media players, and any other electronic or digital devices, encountered by U.S. Customs and Border Protection (CBP) at the border, both inbound and outbound, to ensure compliance with customs, immigration, and other laws that CBP is authorized to enforce.

These searches are part of CBP's long-standing practice and are essential to enforcing the law at the U.S. border. Searches of electronic devices help detect evidence relating to terrorism and other national security matters, human and bulk cash smuggling, contraband, and child pornography. They can also reveal information about financial and commercial crimes, such as those relating to copyright, trademark and export control violations. Finally, searches at the border are often integral to a determination of admissibility under the immigration laws

(emphasis added)

And this is BEFORE ACTA. This US will expect this and more from other ACTA partners.

That's right. Copyright “violations” (whatever that may mean) are right up there with terrorism and child pornography. Take no comfort in promises of a “de minimis” exception policy. First of all, I'm sure that RIAA and MPAA and their Canadian branches, CRIA and CMPDA, will lobby hard to make sure that “de minimis” means some truly low number such as five or ten MP3 files or one or two movies for which the traveller can't prove “ownership” on the spot. And do we really want border guards detaining us for hours and our devices for up to days, weeks or months while they determine whether we are “de minimis” or not? And what about songs that we have legally ripped to our iPods, according to the RIAA and CRIA. from CDs that we have bought and paid for? What if the customs agent doesn't believe that we own the CDs? And don't bring any children with you on your travels. (Unless you want to leave them in the care of border officials!)

They are notorious “pirates.”

If Canada remains in this negotiation in order to try to moderate the extremists, the minimum price for so doing should be complete transparency and immediate publication of all draft texts, as has been the normal practice at the GATT, WTO, WIPO and elsewhere for decades. That is the only way that moderation can hope to be achieved. And we should still be prepared to walk away.

HK

PS - November 6, 2009: This is front page news in today's Ottawa Citizen.

Copyright War Presentation Live Online Tuesday June 9 2009

I will be participating on Tuesday June 9 at 3:15 EST in a day long session of online interactive presentations on Copyright Wars hosted by an exciting new enterprise called Brighttalk.com.

I would encourage you check out the other presentations and tune in free - you can see them listed here.

I'll be dealing with ACTA, WIPO and Canada. You'll be able to send in questions in real time...this is interactive.

Hope to see you...

HK

L’Oréal and parallel imports

Anyone who seriously does not think that attempts will not be made to use ACTA to get at parallel imports should look at the recent UK decision involving L'Oreal and eBay, which is almost 500 paragraphs in length and in the end refers several questions to the ECJ. The case concerns both counterfeits and parallel imports. While the judgment confirms that "a trade mark owner cannot request border control measures in respect of parallel imports" in the EU, it does show that major trade-mark owners regard both parallel imports and counterfeits as illegal and will what they can to stop both. It would be natural for the EU to "policy launder" though ACTA a change in its own law. Policy laundering is arranging for policy that is too controversial to legislate domestically being adopted in a treaty or agreement that "must" be implemented domestically.

Here's the decision from Justice Arnold of the UK High Court and some preliminary commentary from my friends at the IP Kat and IPWars.

HK

WIPO Copyright Meeting - May 2009

Following the recent Fordham Conference, I posted this comment on April 25, 2008 on the question of whether there could be a WIPO treaty for rights of the blind in the works:

• Despite the earlier promise (or at least the expectation) of a WIPO treaty for the rights of the blind, WIPO Deputy Director Michael Keplinger (whose appointment will shortly expire) indicated that no such thing was in the works. At best, we could expect “soft law.” Whether such an explicit statement reflects the wishes of the new WIPO DG, Francis Gurry, is not known because Mr. Gurry was not present. Of course, the WIPO Secretariat cannot unilaterally decide to launch a treaty process - such a mandate must come from the WIPO General Assembly. But the Secretariat can be very influential in such matters. One would think that a copyright treaty for the rights of the blind is about as close as one could get to a useful, necessary and relatively non-controversial multilateral issue. If WIPO is really unable or unwilling to press forward on this issue, there are bound to be more questions about WIPO’s future role in international norm setting and treaty making. Certain countries may think that they don’t need WIPO in such a role today or even in future. However, things could change very quickly in international politics and economics - especially when - not if - the “BRIC” (Brazil, Russia, India and China) countries (which were not represented on the faculty of this year’s Fordham conference and have not been invited to the ACTA table) assert the power that is rapidly shifting in their direction. Hopefully, the forthcoming SCCR meeting in May will shed some light and accomplish something more than calling simply for another semi-annual SCCR meeting at some presumably pleasant time in Geneva.

The WIPO Standing Committee on Copyright and Related Rights (SCCR) is meeting in Geneva next week. Here are the documents. Hopefully, we will see if WIPO can make any progress on this issue and whether Mr. Keplinger's comment was indeed reflective of the Secretariat's views.

For many reasons, WIPO has been unable to achieve any notable successes in international substantive law norm setting since the 1996 Internet treaties. Even these treaties, which are now almost thirteen years old, have yet to be ratified by major developed countries apart from the USA, Japan, Switzerland and Australia - the latter under intense American pressure and the profoundly American-deferential leadership of former Prime Minister John Howard. (The ratification by Belgium is regarded as something of an anomalous accident, since Belgium is part of the EU and the EU has not yet ratified).

The troubles of WIPO under its former DG, Kamil Idris, certainly didn't help. The result has been a wave of bilateral and plurilateral initiatives that have ignored WIPO and even the WTO. It will be recalled that the TRIPs agreement in the 1994 WTO Uruguay Round treaty was arguably a rebuke to WIPO, which under the late Arpad Bogsch had taken a rather purist approach to IP that was largely insulated from such worldly concerns as economics, trade policy and the needs of developing countries.

The potential apotheosis of plurilateralism may be the current ACTA initiative, which is a significant threat to a sustainable system of international norm setting in IP law.

WIPO needs a new and positive milestone and the world needs a newly renewed WIPO. The pieces and the players are in place, particularly Francis Gurry, the new DG at WIPO who has fully earned the significant respect and confidence he enjoys. If ever there was an issue around which well-intentioned countries could rally, a treaty for the rights of the blind could be that issue.

Next week, we may see a draft treaty or a proposal tabled by Brazil, as the Irish Times reports. Also, look to leadership from Jamie Love and his very worthy KEI NGO. Here's one of his blogs.

Finally, we await with interest where Canada will stand on all of this.

HK

PS: William New of IP Watch reports that:

A group of Latin American and Caribbean countries have declared their intention to support discussion of a proposal to negotiate a World Intellectual Property Organization treaty ensuring an exception to copyright for visually impaired readers who lack access to protected reading materials. The proposal is expected to be brought to the floor of a key copyright committee meeting this week.

Mr. New also reports on other aspects of the forthcoming meeting, including this:

The committee will elect a chair for the meeting. In the case of the SCCR, unlike any other WIPO committee, the same person has been chair for as long as a decade: Jukka Liedes of Finland. He has generally shown sympathy for developed country – especially European – perspectives. It is unclear why developing countries do not push an alternative candidate for the chairmanship.