From Wellington to Lucerne: Tracking the Major ACTA Changes

While the parties have not formally disclosed it, the immediate ACTA schedule now appears to include discussions between the U.S. and the EU next month in Washington followed by a full round of talks (Round Ten) in Japan in September.  Some have criticized the exclusion of the remaining ACTA countries in the August discussions, but as I posted earlier, the ACTA text has really come down to a U.S. vs. EU document with the remaining countries picking a side.  The sticking point in Washington will undoubtedly be scope of the treaty, with the EU pushing for inclusion of geographical indications and the U.S. making it clear they are willing to cave on almost anything that does not involve changes to domestic law.  Geographical indications would require change, however, which is what led to my post speculating about the possibility of an ACTA without Europe. 

Last week I posted a scorecard on the major areas of disagreement. This final chart highlights the key changes from the April meeting in New Zealand to the June meeting in Lucerne, with many changes the result of a shift in U.S. position.

Article April 2010 Draft July 2010 Draft
Article 1.4: Privacy and disclosure of information There was a placeholder stating an article needed to be drafted. There is now text of the article.
Article 1.X: (General Principles) No such article. Aus/NZ/Sing/Can are proposing a generic set of principles for enforcement of IP, including social/economic welfare, transfer of technology etc.
Article 2.X.1: General Obligations with respect to enforcement No such paragraph. General statement regarding effective and expeditious action, and may not create barrier to trade.  The text is copied from article 41.1 of TRIPS.
Article 2.X.4: General obligations with respect to enforcement Place holder for government exceptions/liability. US has proposed text allowing for exemptions for governments based on fair compensation.
Article 2.X.6: General obligations (rights of the defendant and third parties) Obligation to ensure the protection of the rights of the defendant and third parties appeared only under the criminal enforcement section. This obligation has been moved to general obligations
Article 2.2.1: Damages A more rigid calculation of damages as: compensatory to injury caused to right holder OR accounting of profits. More flexible approach to how damages are calculated based on taking into account a number of factors.
Article 2.2.3: Damages (April 2010 draft) Even unknowing infringers could be liable for accounting of profits or damages, and these could be statutory amounts. (Based on the January 2010 leak this was an EU proposal) Removed.
Article 2.2.5: Damages (legal fees) There were a 2 options proposed (which was a streamlining from the Jan 2010 leak). A single clear statement that attorney and court fees can be ordered payable.
Article 2.6: Application by rights holder Formerly 2 options for the scope of border measures on application by rights holder. One of the few areas where another option has been put on the table.  The US/J/NZ/Can/Sing/Aus/CH/Mex have proposed a 3rd option (option #2 in the July draft) which clearly makes in-transit measures optional. 
Article 2.14.1: Criminal Enforcement Broader definition of what constitutes a “commercial scale”. Specific wording suggested that would exclude (EU) or allow to be  excluded (US) end users from being involved in “commercial scale” operations.
Article 2.18.3, 3bis & 3ter: Enforcement Procedures in the Digital Environment (ISP safe harbour provisions) A lot of progress was made, with ISPs qualifying for safe harbour more easily.
2.18.3(a): Obligations of ISP non-liability ISP non-liability seemed optional for certain routine actions or those outside their control. Everyone (except CH) now agrees that ISPs will not be liable at least for some routine actions or those outside their control (the details of which are mostly similar from the April to July draft).
2.18.3(b) Conditions for ISP non-liability in cases of temporary storage The wording describing this temporary storage scenario was more vague in the April draft, was presented in several options and had more conditions associated with it. Temporary storage is only conditioned on the ISP removing the material after notice that the offending material has been removed from the originating site.
2.18.3(c) Conditions for ISP non-liability in cases of linking users to offending material As in the case of temporary storage above, in the April draft these conditions were presented in several options and had more conditions associated with it. When linking an ISP will not be liable so long as they fulfill conditions:
1) ISP must not get direct financial gain
2) ISP must remove access to material once they get notice of alleging infringing material and there is no refutation from subscriber who posted the material
3) ISP must not have actual knowledge of the infringement

Article 2.18.4: Enforcement Procedures in the Digital Environment (Anti-circumvention provisions) Unauthorized circumvention was prohibited Substantially less circumvention is prohibited in the July draft:
-Only unauthorized circumvention which is carried out knowingly (or with reasonable grounds to know) is prohibited
– “unauthorized circumvention of copy control” (per footnote 56)  need not be prohibited

Article 2.18.X: Exceptions Formerly 2 options regarding exceptions, the second of which was broader and did not contain a limitation precluding impairing legal adequacy. ACTA parties have largely agreed on this wording to allow for exceptions which don’t impair adequacy/effectiveness of protection.

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