A KEI note to Library of Congress about ACTA text

From: James Love
To: Michele Woods
Cc: Nancy Weiss
Subject: Some examples of US inconsistency with ACTA
Date: Fri, 12 Nov 2010 07:29:09 -0500

This note cites several areas where US law is plainly inconsistent with
ACTA.

In addition, in a separate analysis,I have called attention to proposed
legislation in USA on orphan copyrighted works that are very
inconsistent with ACTA provisions on remedies.
https://www.keionline.org/node/980

Some examples of inconsistencies between ACTA and US law

1. 4 USC 2117. Limitation on liability

This is concerns the National Archives And Records Administration. When
letters and other intellectual productions (exclusive of patented
material, published works under copyright protection, and unpublished
works for which copyright registration has been made) come into the
custody or possession of the Archivist, the United States or its agents
are not liable for infringement of copyright or analogous rights arising
out of use of the materials for display, inspection, research,
reproduction, or other purposes.

2. Librarian of Congress not subject to damages for certain infringements:

Cite: Pub. L. 85-147, Aug. 16, 1957, 71 Stat. 368, as amended by Pub.
L. 87-263, Sept. 21, 1961, 75 Stat. 544; Pub. L. 88-299, Apr. 27,
1964, 78 Stat. 183.

“That the Librarian of Congress is authorized and directed to arrange,
index and microfilm the papers of the Presidents of the United States in
the collections of the Library of Congress, in order to preserve their
contents against destruction by war or other calamity and for the
purpose of making them more readily available for study and research to
the fullest possible extent consistent with any existing limitations
that may have been imposed on the use of or the access to such papers by
their donors or by those placing them on deposit with the Library of
Congress. Neither the United States nor any officer or employee of the
United States shall be liable for damages for infringement of literary
property rights by reason of any activity authorized by this Act.

3. Civil Remedies for non-payment of royalties on digital audio recording devices and media:

Copyright Law of the United States of America and Related Laws
Chapter 101 Digital Audio Recording Devices and Media
17 USC § 1009. Civil remedies
(d) Award of Damages. —
(1) Damages for section 1002 or 1003 violations. —
(A) Actual damages. —
(i) In an action brought under subsection (a), if the court finds that a
violation of section 1002 or 1003 has occurred, the court shall award to
the complaining party its actual damages if the complaining party elects
such damages at any time before final judgment is entered.
(ii) In the case of section 1003, actual damages shall constitute the
royalty payments that should have been paid under section 1004 and
deposited under section 1005. In such a case, the court, in its
discretion, may award an additional amount of not to exceed 50 percent
of the actual damages.

The standards for Section 1004 Royalty payments are very precise, and
not based upon “any” measure put forward by copyright owners.

4. Statutory limits on liabilities for Satellite carriers are inconsistent with ACTA provisions on damages:

17 USC 119. Limitations on exclusive rights: Secondary transmissions of
superstations and network stations for private home viewing
(a) Secondary Transmissions by Satellite Carriers. —
(7) Violation of territorial restrictions on statutory license for
network stations. —
(A) Individual violations. — The willful or repeated secondary
transmission by a satellite carrier of a primary transmission made by a
network station and embodying a performance or display of a work to a
subscriber who is not eligible to receive the transmission under this
section is actionable as an act of infringement under section 501 and is
fully subject to the remedies provided by sections 502 through 506,
except that —
(i) no damages shall be awarded for such act of infringement if the
satellite carrier took corrective action by promptly withdrawing service
from the ineligible subscriber, and
(ii) any statutory damages shall not exceed $5 for such subscriber for
each month during which theviolation occurred.

17 USC 122. Limitations on exclusive rights; secondary transmissions by
satellite carriers within local markets
17 USC 122(f)(A-B)
(f) Violation of Territorial Restrictions on Statutory License for
Television Broadcast Stations. —
(1) Individual violations. — The willful or repeated secondary
transmission to the public by a satellite carrier of a primary
transmission embodying a performance or display of a work made by a
television broadcast station to a subscriber who does not reside in that
station’s local market, and is not subject to statutory licensing under
section 119 or a private licensing agreement, is actionable as an act of
infringement under section 501 and is fully subject to the remedies
provided by sections 502 through 506 and 509, except that —
(A) no damages shall be awarded for such act of infringement if the
satellite carrier took corrective action by promptly withdrawing service
from the ineligible subscriber; and
(B) any statutory damages shall not exceed $5 for such subscriber for
each month during which the violation occurred.

Note the limits on damages here are for “willful or repeated” act, and
seem inconsistent with the ACTA article on damages for copyright
violations.

5. The safe harbor provisions of 17 USC 512 are not consistent with ACTA provisions on damages or injunctions.

17 USC 512 Limitations on liability relating to material online

The following phrase is found 4 times in 17 USC 512:

A service provider shall not be liable for monetary relief, or, except
as provided in subsection (j), for injunctive or other equitable relief,
for infringement of copyright . . .

In Section 5 of the ACTA text concerning “Enforcement of Intellectual
Property Rights in the Digital Environment,” there is this footnote 13:

13/For instance, without prejudice to a Party’s law, adopting or
maintaining a regime providing for limitations on the liability of, or
on the remedies
available against, online service providers while preserving the
legitimate interests of right holders.

However, the ACTA text in Section 2: Civil Enforcement does not seem to
allow for the types of exceptions found in U.S. law. Indeed, in the
injunctions provisions of U.S. law, injunctions can only be eliminated
in cases where right owners receive compensation for infringements.

6. US limits on remedies regarding trademark infringement are inconsistent with ACTA:

15 USC 1114. Remedies; Infringement; Innocent Infringement By Printers
And Publishers. In particular, the provisions of 15 USC 1114 (2).

15 USC 1114 (2)(A) Where an infringer or violator is engaged solely in
the business of printing the mark or violating matter for others and
establishes that he or she was an innocent infringer or innocent
violator, the owner of the right infringed or person bringing the action
under section 43(a) [15 USC 1125(a)] shall be entitled as against such
infringer or violator only to an injunction against future printing.

15 USC 1114 (2)(B) . Where the infringement or violation complained of
is contained in or is part of paid advertising matter in a newspaper,
magazine, or other similar periodical or in an electronic communication
as defined in section 2510(12) of title 18, United States Code, the
remedies . . . shall be limited to an injunction against the
presentation of such advertising matter in future issues . . . The
limitations of this subparagraph shall apply only to innocent infringers
and innocent violators.

15 USC 1114 (2)(C) Injunctive relief shall not be available to the owner
of the right infringed or person bringing the action under section 43(a)
[15 USC 1125(a)] with respect to an issue of a newspaper, magazine, or
other similar periodical or an electronic communication containing
infringing matter or violating matter where restraining the
dissemination of such infringing matter or violating matter in any
particular issue of such periodical or in an electronic communication
would delay the delivery of such issue or transmission of such
electronic communication after the regular time for such delivery or
transmission, and such delay would be due to the method by which
publication and distribution of such periodical or transmission of such
electronic communication is customarily conducted in accordance with
sound business practice, and not due to any method or device adopted to
evade this section or to prevent or delay the issuance of an injunction
or restraining order with respect to such infringing matter or violating
matter.

This is not about copyright infringement, but it is another example of
how careless the legal review was of the remedies section in ACTA.

7. State Sovereign Immunity

Not sure how you deal with this, but of course, it is a major
inconsistency.

—————
Under the precedent set by the U.S. Supreme Court in Florida Prepaid
Postsecondary Education Expense Board v. College Savings Bank et al.
(98-531) 527 U.S. 627 (1999), Argued April 20, 1999–Decided June 23,
1999, and subsequent extensions of the doctrine of State Sovereign
Immunity, there are no damages available for infringement of
intellectual property by State governments.

This now applies to patents, copyright, trademarks, plant breeder
rights, semi conductor designs, industrial designs, etc.

Comment: Some members of Congress don’t like the result of this Supreme
Court decision, but it is the law of the land. Among other thing, this
provision is effectively an important element of the research exception
in the U.S., since scientists working in state Universities and labs are
not subject to damages for patent infringement. It also provides an
important exception for damages for the infringement of copyright in the
context of state educational and research institutions.

—
James Love, Director, Knowledge Ecology International
https://www.keionline.org | http://www.twitter.com/jamie_love
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