By Monika Ermert for Intellectual Property Watch
Formal negotiations on an Anti-Counterfeiting Trade Agreement (ACTA) are expected to commence next week in Geneva, according to a European Commission official, even as a leaked United States trade office paper is drawing criticism of the proposed pact.

The publication of a US Trade Representative’s office discussion paper on ACTA leaked last week on Wikileaks has spurred criticism of the new agreement proposed by the US, Japan, European Union and Switzerland and discussed behind closed doors so far.

ACTA is intended as “a new standard of intellectual property enforcement to combat the high levels of trade in counterfeit and pirated goods worldwide,” according to information made available by the Australian Department of Foreign Affairs and Trade (DFAT), another partner in the negotiations. Several nongovernmental organisations have warned against a trend of “forum shopping” for global IP enforcement.

According to DFAT, which has been more open than other governments on the issue, proposals made in the leaked paper date back to November 2007, with minor updates from 4 February. The idea of an international IP enforcement agreement has been around for some time, writes DFAT, and was discussed at the Global Congress on Combating Counterfeiting (GCCC) 2007 and 2008 and pushed by Japan at the 2005 Gleneagles Group of 8 Summit. A signing of ACTA at the G8 in Japan in July is out of the question, said the EU official. “This is a rumour,” he said.

IP on the G8 Agenda, But ACTA Targeted for Year’s End

Update: IP-Watch has learned the meeting will take place on 3-4 June, at an unspecified location. Further information will be added as it becomes available.

Given that no draft ACTA text beyond the discussion paper has been presented signing in July would have been ambitious, say experts. But given that for negotiating partner the European Union the finalised text needs not only a “yes” of the Commission, but, said the Commission official, also of the Council, it seems close to impossible, at least for some EU negotiating partners.

”We have a mandate for negotiation” since 14 April, the Commission official said. Yet for final approval the so-called Article 133 committee of the European Council and the Council itself would have a final say. “Negotiations will involve the Commission, EU member states and especially the presidency,” he said. The EU presidency will change hands from Slovenia to France on 1 July.

A US trade official put negotiations within this year. “The United States will strive to complete the agreement before the end of 2008,” the official said. Like the Commission official, the US official said he did not expect signing at the G8, adding, “The G8 and ACTA are separate and distinct.”

But intellectual property is again on the preliminary agenda of the G8 summit in Japan and if signing in 2008 is intended it might come up in some of the bilateral talks between the ACTA negotiating partners who are in attendance. G8 members include: Canada, France, Germany, Italy, Japan, UK, US and Russia.

Cooperation, Enforcement, Legal Framework

The discussion paper published on Wikileaks leaves a lot of details unanswered. It includes international cooperation measures, enforcement measures and legal framework as the main provision categories for ACTA.

International cooperation among enforcement agencies, including joint actions, exchange of information between national authorities and capacity building and technical assistance in improving enforcement are the major points for the “cooperation” category.

Mentioned enforcement practices to be harmonised include: formal or informal public/private advisory groups; specialised IP expertise in law enforcement agencies; the sharing of information on enforcement actions with international colleagues and the public; and the establishment of coordination bodies to facilitate joint actions are mentioned.

For the legal framework, criminal and civil law enforcement is envisaged, as are far-reaching border measures like ex-officio authority for customs authorities to suspend import, export and trans-shipment of suspected IPR-infringing goods, possibilities for rights-holders to initiate border blocks for “suspicious” goods, and “the authority to impose deterrent penalties.”

Special provisions were put forward in the discussion paper for internet distribution and information technology. The discussion paper recommends a legal regime that includes safeguards for ISPs from liability on the one hand, and cooperation of ISPs with right holders on the other hand. Data about the identity of alleged infringers, for example, should be handed over on “effective notification” of “a claimed infringement.” Also, remedies against circumvention of technological protection measures used by copyright owners and the trafficking of such circumvention devices are recommended.

Finally, oversight to resolve implementation issues by a committee of ACTA parties is proposed.

Negotiating partners are tight-lipped on the details of the provisions. On the question of what kind of oversight body might be finally chosen, USTR answered: “We are still studying appropriate mechanisms for ongoing cooperation internally and discussing the issue with the other ACTA participants.” It is unclear from the available information if there is a more detailed draft proposal. According to USTR, “the text for the agreement is being developed.”

Criticism from NGOs

Canadian law expert David Fewer, staff counsel at the University of Ottawa’s Canadian Internet Policy and Public Interest Clinic, told the Ottawa Citizen that the discussion paper was very close to a potential Christmas wish-list by Hollywood companies.

Knowledge Ecology International (KEI), in an earlier statement filed to USTR, warned against a lack in differentiation and clearness of core terms, like counterfeiting, infringement or piracy. “Is Microsoft a “pirate” for insisting on the right to continue to infringe the z4 patents in order to use an infringing DRM technology to protect Microsoft software itself from infringement by unauthorised uses?” KEI asked in its statement.

”Is the International Trade Commission endorsing piracy by refusing to prevent the importation of all mobile phones that use infringing semiconductor chips?” or “Is Abbott Laboratories a “pirate” for seeking a compulsory license for its infringing use of patents on a Hepatitis C virus genotyping test kit?”

Users of social networking tools MySpace, Facebook or Youtube might be searched at borders because of extensive evidence of unauthorised use of content on these platforms, as could USTR officials who had copies and shared copyrighted articles about counterfeit products, KEI asserted.

IP Justice heavily criticised the attempt to keep developing countries out of the negotiations. “After the multilateral treaty’s scope and priorities are negotiated by the few countries invited to participate in the early discussions, ACTA’s text will be ‘locked’ and other countries who are later ‘invited’ to sign on to the pact will not be able to re-negotiate its one-sided terms,” IP Justice stated. Signing on to ACTA is said to be “voluntary” but seen as difficult to refuse after the negotiation is completed.

Petra Buhr of IP Justice suggested the World Intellectual Property Organisation or the World Trade Organisation as international fora for negotiations on IP issues. But the US trade official said, “We feel that the approach of a free-standing agreement is an appropriate way to pursue this project among interested countries. We support the important work of WTO and WIPO related to IPR enforcement.”

Lack of Transparency

Despite the lack of legal details for the various ACTA provisions, critics, IP law researchers and some politicians concur that there is a lack of transparency in the process.

”In my opinion it is not acceptable that international agreements are negotiated behind closed doors while Parliament is working on legislation on the very same issue in a co-decision procedure,” said Eva Lichtenberger, Green Party member of the European Parliament. “It is contradictory to European rules to prejudice EU legislation in that way,” she said, “and it does not serve our democratic process.” Lichtenberger just won a decision by the president of the EU parliament with regard to a provision to exclude parallel imports from criminal sanctions in a directive on “Criminal measures aimed at ensuring the enforcement of intellectual property rights.”

The EU Parliament has not been informed about the negotiations so far and although the new Lisbon Treaty strengthens Parliament’s role, under the status quo they might in the end only be “consulted” on a finalised ACTA.

Questions in Europe

Some questions are arising on the negotiation of ACTA in Europe. The EU enforcement directive called IPRED 2 is a follow up to civil rights measures against IPR infringement and piracy in the already passed IP Enforcement Directive (IPRED). Taken together, these EU directives cover very much the same ground on IPR enforcement as ACTA will.

IP law experts in Europe say they do not know how ACTA would reconcile European data protection standards with perhaps tougher provision for searches in ACTA.

”The EU Commission as a general rule strives towards keeping bilateral or plurilateral treaty negotiations in line with norms existing on the EU level,” the German Ministry of Justice said in response to questions from Intellectual Property Watch. “Standards for criminal law sanctions are not in place at the EU level,” it said.

As IPRED 2 was delayed by questions of institutional competency and by changes in competency, the Lisbon Treaty of the Union still did not fix the content of Europe’s criminal law sanctions regulation against IP infringement and piracy. “The question of possible overlaps therefore is not applicable here,” it said.

The German government supports the ACTA negotiations, the ministry said. As Germany already has high protection standards for IP, from the German point of view, timing is not as critical as the elaboration of sound regulations for ACTA.

Monika Ermert may be reached at info@ip-watch.ch.