The general consensus is that the Anti-Counterfeiting Trade Agreement (ACTA) 1I’ve been referring to the treaty in its acronym form as “the ACTA” rather than just “ACTA.” Maybe it’s just me, but while the former is technically correct, it still sounds weird to say. is on track to be completed by the end of this year. Once completed, the treaty would still need to be implemented by each party through its own legislative process – a process that could easily take several years. If the past is any indication, we can expect plenty of Fear, Uncertainty, and Doubt over the treaty until then.

If you’re just joining us, be sure to check out ACTA: Thought for FUD, parts one, two, and three. If not, read on for part four of this series, where I’m comparing the provisions of the ACTA to existing US law to counter some of the FUD over what this treaty will do.

The FUD toward this section of the ACTA departs from the pattern it follows in the previous sections. Here, the fear is not based on a misunderstanding of existing US law; instead, the fear is that this section follows US law too closely. The provisions here – the majority of which had been passed as part of the Digital Millennium Copyright Act of 1998 (DMCA) 2Which itself was passed largely to implement WIPO treaties – which themselves were largely a result of the US’s National Information Infrastructure Initiative – which itself was turtles all the way down. have caused a great deal of consternation since they became a part of US law, and the complaint is that the US is attempting to “export” these much-derided laws to the rest of the world.

Since I’ve limited these articles so far to a side-by-side comparison between the ACTA provisions and US law, I won’t get into any substantive discussion of these criticisms, but I did want to point out one such criticism since it came out just this week.

On Monday, Boing Boing posted Latest leaked draft of secret copyright treaty: US trying to cram DRM rules down the world’s throats, illustrating precisely the criticism I noted above.

The article frames the state of the current law through a complete mischaracterization. The author states:

In the US version, breaking DRM is always illegal, even if you’re not committing any copyright violation — so breaking the DRM on your iPad to install software you bought from someone who hasn’t gone through the Apple approval process is illegal, even though the transaction involves no illicit copying.

But, the claim that under US law “breaking DRM is always illegal – even if you’re not committing any copyright violation” is followed in the very next sentence by links to a court case and regulations where breaking DRM is not illegal when there is no copyright violation!

The original characterization of laws regarding DRM is wrong. The “evidence” presented only shows the way laws typically work. Congress passes a new law. Someone brings a lawsuit based on an interpretation of the law outside of its scope. A court determines the interpretation is outside the scope of the law – based on the text of the statute Congress passed and any relevant legislative history of the law. The court denies the person’s claim. The only way you can call this an “erosion” of the law is if you claim that Congress and supporters of the law secretly wanted it to mean the same as the interpretation advanced by these unsuccessful lawsuit filers.

The idea that the law has been “eroded” by regulators is even more silly. The DMCA included a provision that charges the Librarian of Congress, through the Register of Copyrights, to examine and pass exemptions to the DMCA anti-circumvention provisions every three years. The Copyright Office completed the latest round of these proceedings just this past June. It’s difficult to see how such a provision built into a law counts as erosion of the law.

But enough about that. Let’s take a look at Section 4 of the ACTA.

Section 4: Special Measures Related to Technological Enforcement of Intellectual Property in the Digital Environment

Proposed ACTA Provision Corresponding US Law
ARTICLE 2.18 ENFORCEMENT PROCEDURES IN THE DIGITAL ENVIRONMENT

1. Each Party shall ensure that enforcement procedures, to the extent set forth in the civil and criminal enforcement sections of this Agreement, are available under its law so as to permit effective action against an act of copyright infringement which takes place in the digital environment, including expeditious remedies to prevent infringement and remedies which constitute a deterrent to further infringement.
2. Those measures, procedures and remedies shall also be fair and proportionate.
3. Without prejudice to the rights, limitations, exceptions, or defenses to copyright infringement available under its law, including with respect to the issue of exhaustion of rights, each Party shall provide for civil remedies as well as limitations, exceptions, or defenses with respect to the application of such remedies, are available in its legal system in cases of third party liability *

* For greater certainty, the Parties understand that third party liability means liability for any person who authorizes for a direct financial benefit, induces through or by conduct directed to promoting infringement, or knowingly and materially aids any act of copyright or related rights infringement by another. Further, the Parties also understand that the application of third party liability may include consideration of exceptions or limitations to exclusive rights that are confined to certain special cases that do not conflict with a normal exploitation of the work, performance or phonogram, and do not unreasonably prejudice the legitimate interests of the right holder, including fair use, fair dealing, or their equivalents. At least one delegation opposes this footnote.

Metro-Goldwyn-Mayer Studios v. Grokster, 545 US 913, 930 (2005)

One infringes contributorily by intentionally inducing or encouraging direct infringement, … and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it … Although “[t]he Copyright Act does not expressly render anyone liable for infringement committed by another,” … these doctrines of secondary liability emerged from common law principles and are well established in the law.

I’ve discussed third party liability in detail previously on this site. This section begins with a provision establishing that Parties to the treaty recognize third party liability; I’ve included a footnote found in the text for clarity. Third party liability in copyright infringement is largely a creature of common law, so I’ve included language from the Supreme Court’s most recent third party infringement liability case, where the court restates the relevant principles.

Option 1
3. Each Party recognizes that some persons use the services of third parties, including online service providers, for engaging in copyright infringement. Each Party also recognizes that legal uncertainty with respect to application of copyright, limitations, exceptions, and defenses in the digital environment may present barriers to the economic growth of, and opportunities in, electronic commerce. Accordingly, in order to facilitate the continued development of an industry engaged in providing information services online while also ensuring that measures to take adequate and effective action against copyright or related rights infringement are available and reasonable each Party shall:
(a) provide limitations on the scope of civil remedies available against an
online service provider for infringing activities that occur by
(i) automatic technical processes, and
(ii) the actions of the provider’s users that are not directed or initiated by that provider and when the provider does not select the material, and
(iii) the provider referring or linking users to an online location,
when, in cases of subparagraphs (ii) and (iii) the provider does not have actual knowledge of the infringement and is not aware of facts or circumstances from which infringing activity is apparent; and
Option 2
Each Party recognizes that some persons use the services of third parties, including online service providers, for engaging in intellectual property rights infringements.
(a) In this respect, each Party shall provide limitation on the scope of civil remedies available against an on-line service provider for infringing activities that occur by
(i) automatic technical processes, or
(ii) the actions of the provider´s users that are not initiated nor modified by that provided and when the provider does not select the material or
(iii) the storage of information provided by the recipient of the service or at the request of the recipient of the service,
when exercising the activities as stipulated in paragraph 3(a)(ii) and/or (iii) the online service providers act expeditiously, in accordance with applicable law, to remove or disable access to infringing material or infringing activity upon obtaining actual knowledge of the infringement
the information at the initial source has been removed or disabled.

Option 1
(b) condition the application of the provisions of subparagraph (a) on meeting the following requirements:
(i) an online service provider adopting and reasonably implementing a policy to address the unauthorized storage or transmission of materials protected by copyright or related rights; and
(ii) an online service provider expeditiously removing or disabling access to material or alleged infringement, upon receipt of legally sufficient notice of alleged infringement, and in the absence of a legally sufficient response from the relevant subscriber of the online service provider indicating that the notice was the result of mistake or misidentification.
except that the provisions of (ii) shall not be applied to the extent that the online service provider is acting solely as a conduit for transmissions through its system or network.
Option 2:
Paragraph 3(a) shall not affect the possibility for a judicial or administrative authority, in accordance with the Parties legal system, requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility of the parties establishing procedures governing the removal or disabling of access to information
The Parties shall not impose a general monitoring requirement on providers when acting in accordance with this paragraph 3.

3. Each Party shall enable right holders, who have given effective notification to an online service provider of materials that they claim with valid reasons to be infringing their copyright or related rights, to expeditiously obtain from that provider information on the identity of the relevant subscriber.

3. Each Party shall promote the development of mutually supportive relationships between online service providers and right holders to deal effectively with patent, industrial design, trademark and copyright or related rights infringement which takes place by means of the Internet, including the encouragement of establishing guidelines for the actions which should be taken.

17 USC § 512. Limitations on liability relating to material online

(a) Transitory Digital Network Communications.— 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 by reason of the provider’s transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections, if—
(1) the transmission of the material was initiated by or at the direction of a person other than the service provider;
(2) the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider;
(3) the service provider does not select the recipients of the material except as an automatic response to the request of another person;
(4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, or provision of connections; and
(5) the material is transmitted through the system or network without modification of its content.

(b) System Caching.—
(1) Limitation on liability.— 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 by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider in a case in which—
(A) the material is made available online by a person other than the service provider;
(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person; and
(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A),
if the conditions set forth in paragraph (2) are met.

[…]

(c) Information Residing on Systems or Networks At Direction of Users.—
(1) In general.— 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 by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—
(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

(2) Designated agent.— The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
(A) the name, address, phone number, and electronic mail address of the agent.
(B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

[…]

(d) Information Location Tools.— 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 by reason of the provider referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link, if the service provider—
(1)(A) does not have actual knowledge that the material or activity is infringing;
(B) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
(C) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(3) upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity, except that, for purposes of this paragraph, the information described in subsection (c)(3)(A)(iii) shall be identification of the reference or link, to material or activity claimed to be infringing, that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate that reference or link.

This provision largely mirrors the DMCA chapter on internet safe harbors. I’ve edited out large portions of the statute for space.

4.59 In order to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors, the right holder of any copyright or related rights or owner of an exclusive license in connection with the exercise of their rights and that restrict unauthorized acts in respect of their works, or other subject matters specified under Article 14 of the TRIPS Agreement, each Party shall provide for civil remedies, or criminal penalties in appropriate cases of willful conduct , that apply to:
(a) the unauthorized circumvention of an effective technological measure that controls access to a protected work, performance, or phonogram; and
(b) the manufacture, importation, or circulation of a technology, service, device, product, component, or part thereof, that is: marketed or primarily designed or produced for the purpose of circumventing an effective technological measure; or that has only a limited commercially insignificant purpose or use other than circumventing an effective technological measure.

5. Each Party shall provide adequate legal protection against a violation of a measure implementing paragraph (4), independent of any infringement of copyright or related rights.

Option 1
Further, each Party may adopt exceptions and limitations to measures implementing paragraph 4 so long as they do not significantly impair the adequacy of legal protection of those measures or the effectiveness of legal remedies for violations of those measures.

Option 2
5. Each Party may provide for measures which would safeguard the benefit of certain exceptions and limitations to copyright and related rights, in accordance with its legislation.

17 USC § 1201. Circumvention of copyright protection systems

(a) Violations Regarding Circumvention of Technological Measures.—
(1)(A) No person shall circumvent a technological measure that effectively controls access to a work protected under this title. The prohibition contained in the preceding sentence shall take effect at the end of the 2-year period beginning on the date of the enactment of this chapter.

[…]

(2) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that—
(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
(B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or
(C) is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.

Also part of the DMCA, this provision creates separate liability for circumventing or manufacturing tools to circumvent technological protection measures.

6. Each Party shall provide adequate and effective legal remedies to protect electronic rights management information, each Party shall provide for civil remedies, or criminal penalties in appropriate cases of willful conduct, that apply to any person performing any of the following acts knowing or with respect to civil remedies having reasonable grounds to know that it will induce, enable, facilitate, or conceal an infringement of any copyright or related right:
(a) to remove or alter any electronic right management information. The obligations in paragraphs (4) and (5) are without prejudice to the rights, limitations, exceptions, or defenses to copyright or related rights infringement. Further, paragraph (4) does not imply any obligation to require that the design of, or the design and selection of parts and components for, a consumer electronics, telecommunications, or computing product provide for a response to any particular technological measure, so long as the product does not otherwise violate any measures implementing paragraph (4).
(b) to distribute, import for distribution, broadcast, communicate, or make available to the public copies of works, knowing that electronic rights management information has been removed or altered without authority.
6.2 Each Party may adopt limitations or exceptions to the requirements of subparagraphs (a) and (b).

17 USC § 1202. Integrity of copyright management information

(a) False Copyright Management Information.— No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement—
(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.
(b) Removal or Alteration of Copyright Management Information.— No person shall, without the authority of the copyright owner or the law—
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law,
knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

This is yet another part of the DMCA. There is not much to say about this provision – it hasn’t received a lot of attention in academic literature and there are very few published court opinions applying it. 3But check out IQ Group v. Wiesner Pub, 409 F.Supp.2d 587 (NJDC 2006) for a detailed discussion of the provision’s history and meaning.

That actually takes care of the bulk of the substantive provisions of the ACTA. Next week, I’ll take a brief look at the remaining chapters, and then wrap up what lessons we can learn from this comparison, as well as make a few general observations about some of the other major criticisms of the treaty.

References   [ + ]

1. I’ve been referring to the treaty in its acronym form as “the ACTA” rather than just “ACTA.” Maybe it’s just me, but while the former is technically correct, it still sounds weird to say.
2. Which itself was passed largely to implement WIPO treaties – which themselves were largely a result of the US’s National Information Infrastructure Initiative – which itself was turtles all the way down.
3. But check out IQ Group v. Wiesner Pub, 409 F.Supp.2d 587 (NJDC 2006) for a detailed discussion of the provision’s history and meaning.

5 Comments

  1. Just a comment you may wish to consider. ACTA opponents constantly proclaim that ACTA will both force the US to change portions of Title 17 and in the future prevent the US from changing other portions of Title 17. While I am generally loathe to get embroiled in semantical word games (like “theft”), this is one area where I happen to believe that a basic understanding of the distinction between a “treaty” and an “executive agreement” is worth mentioning.

    You have taken great pains to lay the ACTA and the pertinent provisions of Title 17 side by side in an effort to demonstrate that the first proclamation by opponents lacks merit. However, there still remains their second proclamation anent “tying the hands of Congress”. Last time I looked the Executive Branch does not hold the constitutional power to unilaterallly control what the Legislative Branch may or may not do in matters of legislation entrusted to the Congress.

    Opponents neatly sidestep this fundamental underpinning of our constitutional system and it system of checks and balances. Perhaps it would be useful to call their hand.

    • M.,

      Thanks for the comment. I certainly want to include a discussion about how treaties work in a future posting about the ACTA. I’ve noticed the same points you bring up about the effects of a treaty like this on national law, points that do seem to stem from a misunderstanding of how treaties and executive agreements work. I admit my understanding of this subject is rudimentary, but hopefully I can at least convey some of the basics, to counter some of the silly assertions I see being made.

      • Merely a suggestion, but you may also wish to consider your use of the term “treaty” in association with ACTA. Referring to it as such is grist for the mill of those who are viscerally opposed to ACTA. As their argument would go, “See, even he calls it a ‘treaty’, so it must be so.”

        Some time ago I noted that Ben S. was prone to use the term “file sharing”. At my suggestion he has since adopted “file distribution”.

        As I noted earlier, I am not fond of being “word picky”, but in this situation I prefer to use my own dictionary, and not that of those inclined to demean copyright law.

  2. In response to Mr. Slonecker, a frequent commenter on my site, to whom I’ve addressed this point, I find it troubling that he is somewhat misleading in his comment here in framing the issues of the differences between an executive agreement and a treaty.

    He is correct in noting that ACTA is not a treaty, but an executive agreement. Where he is misleading is in pretending that there is a fundamental difference in what these are, other than the fact that one is approved by the Senate and the other is not. He is correct that *legally* an executive agreement *should not* bind Congress, but he ignores the reality of the situation, in that it absolutely does have that impact. If you look at the issue with any sense of intellectual honesty, you would know that once an executive agreement is signed, it is quite frequently referred to by politicians, the press and lobbyists as a treaty, and discussed as part of our “international obligations.” Any attempt to stray from them are condemned as “failing to meet our international obligations.”

    The fact that US negotiators are fighting so hard against EU attempts to include patents in ACTA *solely* because ACTA does not match up with US patent law in a few key areas, is pretty clear evidence that the US negotiators recognize the fact that in passing ACTA, they are likely committing the US to change its laws, and they wish to avoid that, since they have directly insisted (repeatedly) that ACTA will have no impact on US laws.

    Mr. Slonecker has a habit of ignoring how these things work. It’s unfortunate.

    Separately, while you’re “debunking” the “FUD,” on this issue, I should ask if you will address the key point that I have asked about secondary liability in ACTA. You point to the Grokster ruling to show that it does not change current US law — which is a point we agree on. But my concern has always been that this is entirely caselaw driven. When Congress had a chance to pass a law (the INDUCE Act) that would have codified inducement into the law, it chose not to do so. That means that Congress could choose to change the law, if it felt that the Grokster ruling on inducement was incorrect.

    However, with ACTA in place, that would be much more difficult. To make Mr. Slonecker happy, I will admit that they could still “legally” change the law, but even he must admit that there is no practical way for Congress to actually do so once ACTA passes. Changing the law against ACTA would create a serious diplomatic problem with other ACTA signees.

    This has been my concern for quite some time, and one that I do not believe is FUD.

    Copyright law has evolved quite a bit during the last century. ACTA seeks to lock in certain aspects of it, without evidence that those aspects make sense, work well, or are even needed for effective copyright law to function. When we have, as we do, a faith-based copyright law, based on the beliefs of what works, rather than the evidence of what works, it would behoove us to allow multiple systems to work in different countries, so we can learn what sorts of copyright law actually promote the progress, and which ones don’t. ACTA most certainly ties the hands of many of the leading developed nations in preventing such experimentation and data collection.

    Is that FUD?

  3. I realize that you’re disagreeing with Boingboing on the merits of including TPM language in ACTA, which is fine. But I think you’re mischaracterizing (or perhaps misunderstanding) what BB is actually asserting in its article. You write:
    The article frames the state of the current law through a complete mischaracterization. The author states:

    In the US version, breaking DRM is always illegal, even if you’re not committing any copyright violation — so breaking the DRM on your iPad to install software you bought from someone who hasn’t gone through the Apple approval process is illegal, even though the transaction involves no illicit copying.

    But, the claim that under US law “breaking DRM is always illegal – even if you’re not committing any copyright violation” is followed in the very next sentence by links to a court case and regulations where breaking DRM is not illegal when there is no copyright violation!

    BB’s article doesn’t appear to be claiming that “breaking DRM is always illegal” under current US law, but rather, that the language the US is proposing for ACTA would do so. That is, that the US proposal for ACTA would allow for no exceptions. That may not be quite accurate either, but it’s a different assertion than the one you appear to criticizing.

    It’s unclear what BB is referring to, but it sounds like they may be referring to paragraph 6 in Art. 2.18 of the “leaked” document listed on Geist’s blog. That text doesn’t appear to include or allow for exceptions to the blanket ban on circumvention of access controls. It appears completely dependent on whether the circumvention is “authorized,” and ignores whether it might be “permitted by law” in some other way (as it is phrased in paragraph 5. Wouldn’t you agree that this specific language (in paragraph 6) diverges from US law by not mentioning exceptions otherwise permtited by law?

    Both BB and Geist have also been critical of the US position on access controls, as opposed to copy controls (or controls used by authors and performers to protect their rights udner copyright). The US DMCA already addresses access controls, so perhaps adding “access control” language to ACTA won’t affect US law, assuming ACTA allows for exceptions liek those in the US DMCA. But surely inserting access control language in ACTA would go beyond existing law in many other countries.