Written by James Love
Thursday, 26 June 2008
These are the substantive suggestions for provisions of the ACTA that the RIAA sent to the USTR on March 17, 2008.
Enforcement Best Practices
A.Legal Obligations
Parties shall:
1. Make deterrence against piracy and counterfeiting a priority legal matter.
2. Provide criminal sanctions for any act of copyright infringement that takes place on a commercial scale, including in the online environment, regardless of whether such acts are undertaken with a financial incentive.
3. Make it a criminal offense to import or export, manufacture, sell or otherwise distribute a device or system, or a component of a device or a system, knowing or having reason to know that the device or system is primarily used or designed to circumvent technological protection measures used in conjunction with materials protected by intellectual property rights.
4. Provide monetary fines and sentences of imprisonment for the importation, exportation, distribution, sale or other manner of making available of counterfeit or pirated goods sufficient to deter future infringements, consistent with a policy of removing the infringer's monetary incentive.
5. Provide for the availability of civil and injunctive relief against landlords that fail to reasonably exercise their ability to control the infringing conduct of their tenants.
6. In territories with high rates of production of pirated optical discs, provide for a system of licensing prior to the manufacture or export of optical discs, as well as the import or export of manufacturing equipment, and manufacturing materials, including optical grade polycarbonate, "stampers" and "masters."
B.Investigatory Provisions
Parties shall:
1. Provide law enforcement authorities ex officio powers to investigate criminal infringements of intellectual property rights and initiate criminal actions on their own initiative.
2. Permit law enforcement authorities, both at the border and internally, to seize clearly infringing copyright and trademark materials and to seize and/or place under seal equipment or materials suspected of being used to produce such infringing copies without the need for a complaint from the right holder, and without regard to whether protected materials have been recorded or otherwise registered with border authorities.
3. Allow law enforcement officials to communicate and share information with right holders with respect to material evidence of infringement of intellectual property that officials have in their possession.
4. Ensure that courts have the authority to issue ex parte search orders.
5. Provide that orders by judicial authorities need not individually identify the items subject to seizure, so long as they fall within general categories specified in the order.
C. Border Control
Parties shall:
1.Provide that goods that have been determined to be pirated or counterfeit by competent authorities at the border shall be destroyed, except in exceptional cases.
2. In no event authorize their border authorities, except in exceptional circumstances (such as to facilitate a controlled delivery or other law enforcement operation), to permit the exportation or transshipment of counterfeit or pirated goods.
3. Provide that competent authorities have the authority to initiate border measures ex officio, with respect to imported, exported, or in-transit merchandise suspected of being counterfeit or confusingly similar trademark goods, or pirated copyright goods, without the need for a formal complaint from a private party or right holder, and regardless of whether the relevant right that is being infringed is recorded with Customs otherwise registered.
4. In civil judicial proceedings concerning the enforcement of intellectual property rights, provide that judicial authorities have the authority to order a party to desist from an infringement, in order, inter alia, to prevent, immediately after they clear customs, the entry into the channels of commerce in the jurisdiction of those authorities of imported goods that involve the infringement of an intellectual property right, or to prevent their exportation.
D.Seizure of Materials
Parties shall:
1. Provide that judicial authorities have the authority to order the seizure of suspected counterfeit, pirated or other infringing goods, any related materials and implements including that used in the commission of the offense, any assets traceable to the infringing activity, and any documentary evidence relevant to the offense.
2. Provide that orders by judicial authorities need not individually identify the items subject to seizure, especially when the seizure involves a large amount of infringing items, so long as they fall within general categories specified in the order.
3. Allow for ex parte freeze orders to give the territory's authorities and rights holder an opportunity to ensure that infringer's profits are confiscated and that monetary damages are recoverable.
E. Destruction of Materials Determined to be Pirated or Counterfeit
Parties shall:
1. Provide that goods that have been determined to be pirated by competent authorities shall be destroyed, except in exceptional circumstances.
2. Provide that courts shall confiscate and destroy the equipment used for the manufacture of pirated goods in order to ensure that infringing parties do not repeat their illegal activities,
3. Provide that goods determined to be infringing are subject to forfeiture and destruction regardless of whether any action for infringement is initiated, whether civil, administrative or criminal and without any compensation of any kind to the defendant, and regardless of whether there has been any finding of liability on the part of any person.
F.Evidentiary Standards
Parties shall:
1. Provide that the person whose name is on the protected material is presumed to be the relevant right holder.
2. Provide that proof of ownership may be obtained by means of an affidavit, unless this issue is placed into question by material evidence to the contrary.
3. Provide that the presumption of ownership may be rebutted only if the defendant is able to provide concrete evidence to the contrary.1
4. As a deterrent to groundless defenses, award plaintiffs full costs and fees for overcoming frivolous challenges to titles.
G. Transparent Judicial Proceedings, Policies and Guidelines
Parties shall:
1. Provide clear, transparent, and predictable judicial proceedings, policies, and guidelines related to intellectual property enforcement.
2. Provide that final judicial decisions and administrative rulings of general application pertaining to the enforcement of intellectual property rights be in writing and state any relevant findings of fact and reasoning or the legal basis on which the decision or rulings are based.
3. Publicize information on their efforts and actions to provide effective enforcement of intellectual property rights in their civil, administrative, and criminal systems, including any statistical information that may be collected for such purpose.
4. Publish information related to respective intellectual property enforcement actions, including relevant statistical information.
H.Penalties
Parties shall:
1. Establish policies or guidelines that encourage judicial authorities to impose remedies at levels sufficient to deter future infringements and to adequately compensate right holders, particularly bearing in mind that many large scale infringements are properly understood as criminal conspiracies and/or organized crime.
2. Establish statutory minimum and maximum penalties that are adequate to deter persons that engage or contemplate engaging in acts of piracy.
3. Provide, whenever law enforcement authorities' investigatory powers are dependent on the level of minimum/maximum penalties available for criminal infringements, that criminal penalties are set at a level that ensures that law enforcement authorities have adequate powers to investigate copyright infringements. For example, penalties should be set at a level that ensures that law enforcement officials have the authority to initiate investigations, search prel1Jises, seize goods, and arrest suspects of criminal activity.
4. Continuously monitor the level of fines imposed and where necessary issue sentencing guidelines to ensure that fines imposed by the judicial authorities remove all gains from the infringer and deter future infringements.
5. Provide that right holders are entitled to recover their costs of investigation and litigation against infringers of intellectual property rights.
6. Provide that courts have the authority to close commercial outlets and manufacturing plants that have been used to manufacture or distribute pirate or counterfeit products.
7. In criminal matters, provide that competent authorities keep an inventory of goods and other materials proposed to be destroyed, and have the authority temporarily to exempt such materials from the destruction order to facilitate the preservation of evidence upon notice by the right holder that it wishes to bring a civil or administrative case for damages.
I. Monitoring Activities
Parties shall:
1. With respect to A.1 above, provide adequate safeguards against the unauthorized manufacture of infringing optical discs, and provide that facilities producing such products comply with the standards established by the association of replicators (IRMA) in their Anti-Piracy Compliance Program.
2. Compel manufacturers of optical discs in their territory to maintain complete and accurate records to enable right holders and public authorities to trace the person or entity that ordered the infringing discs.
3. Require that OD replicators apply unique source identification codes to all optical discs, including master discs and stampers. Secure and unique identifiers enable the tracing of the source of a product and provide a deterrent against piracy.
J. Online Infringing Activities
Parties shall:
1. Provide exclusive rights under copyright to unambiguously cover Internet use.
2. Establish appropriate rules regarding liability of service/content providers:
(a) Establishing primary liability where a party is involved in direct infringement; and ensure the application of principles of secondary liability, including contributory liability and vicarious civil liability, as well as criminal liability and abetting if appropriate.
(b) Establishing liability for actions which, taken as a whole, encourage infringement by third parties, in particular with respect to products, components and/or services whose predominant application is the facilitation of infringement.
3. Provide remedies and injunctive relief against any entity that:
(a) Creates or otherwise maintains directories of infringing materials;
(b) Provides "deeplinks" to infringing files;
(c) Commits any act, practice or service that has little or no purpose or effect other than to facilitate infringement, or that intentionally induces others to infringe (specifically allowing proof of "intent" by reference to objective standards–i.e. a reasonable person would surmise such an intent);
4. Require internet service providers and other intermediaries to employ readily available measures to inhibit infringement in instances where both legitimate and illegitimate uses were facilitated by their services, including filtering out infringing materials, provided that such measures are not unduly burdensome and do not materially affect the cost or efficiency of delivering legitimate services;
5. Require Internet service providers or other intermediaries to restrict or terminate access to their systems with respect to repeat infringers.
6. Establish liability against internet service providers who, upon receiving notices of infringement from content provides via email, or by telephone in cases of pre-release materials or in other exigent circumstances, fail to remove the infringing content, or access to such content, in an expeditious manner, and in no case more than 24 hours;
or
Provide that, in the absence of proof to the contrary, an internet service provider shall be considered as knowing that the content it stores is infringing or illegal, and thus subject to liability for copyright infringement, after receiving notification from the right holder or its representative, normally in writing, including by email or by telephone in the case of pre-release materials or in other exigent circumstances.
7. Establish, adequately fund and provide training for a computer crimes investigatory unit.
8. Provide injunctive relief against intermediaries whose services are used for infringing activities regardless of whether damages are available.
9. Establish policies against the use of government networks and computers, as well as those networks and computers of companies that have government contracts, to prevent the use of such computers and networks for the transmission of infringing materials, including a ban on the installation of p2p applications except, and to the extent to which, some particular government use requires such installation.
10. Consideration to be given to the following: possible rules on data retention, the right to information giving right holders access to data held by ISPs in the preparation and course of proceedings including in civil proceedings, and availability of complete and accurate WHOIS data.
K. Organizational Issues
Parties shall:
1. Establish anti-piracy units, including at a minimum Police and Customs officers. Such units will gather intelligence on IP crime in order to facilitate policy formulation and generate criminal investigations. Units would be expected to prepare annual reports on the criminal environment in the key IP sectors. This would document key facts on manufacturing sources and distribution networks, including any international links/exports. References would be made, inter alia, to key personalities, organized crime groups, and links to terror networks.
2. Establish single point of contact for law enforcement officials from other countries, as well as for afflicted right holders.