The final draft of the Anti-counterfeiting Trade Agreement (ACTA) has been released to the public (unlike previous drafts, which were leaked). Previously we had looked at the possible changes that the agreement would bring to UK copyright law. I am happy to say that at least the worst case scenario did not materialise, but there is still some room for concern.
As stated previously, the most worrying change that ACTA will bring to these shores is the implementation of statutory damages. Art. 2.2 of ACTA reads:
“3. At least with respect to works, phonograms, and performances protected by copyrights or related rights, and in cases of trademark counterfeiting, each Party shall also establish or maintain a system that provides for one or more of the following:
(a) pre-established damages, or
(b) presumptions for determining the amount of damages3 sufficient to compensate the right holder for the harm caused by the infringement, or
(c) at least for copyright, additional damages.”
This is different to the current system, where damages are calculated on a case-by-case basis based on the actual damages incurred. s97(2) of the Copyright, Designs and Patents Act only asks that the courts consider all circumstances in determining damages, paying special attention to:
“(a) the flagrancy of the infringement, and
(b) any benefit accruing to the defendant by reason of the infringement, award such additional damages as the justice of the case may require.”
Funnily enough, I think that one provision in particular with regards to civil enforcement may bring about an improvement in the UK. As it has been covered in recent weeks, currently rights-holders in England and Wales can ask a court for a Norwich Pharmacal order (NPO) against an internet service provider to discover evidence that might tie a copyright infringer to a specific IP address. There is currently no requirement that such orders should be subject to any oversight. ACTA includes a provision that may apply here in Art. 2.5.4:
“4. Each Party shall provide that its authorities have the authority to require the applicant, with respect to provisional measures, to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse. Such security or equivalent assurance shall not unreasonably deter recourse to such procedures.”
This would hopefully overhaul the existing IP evidence regime, and for one, I think that it would be a welcome addition to UK copyright law. Similarly, Art. 2.18.4 seems to require the implementation of NPOs in legislation, but also requires that such orders should not hinder legitimate activities, such as electronic commerce, and importantly, that such orders should not affect “fundamental principles such as freedom of expression, fair process, and privacy”.
One of the possible changes that ACTA will bring is with regards to criminal liability for copyright infringement, as it is possible that it will widen the number of activities that are criminal. Currently, only infringement conducted with commercial intent is criminalised. What ACTA will do is change this to “commercial scale” practices. In other words, there is no longer need to prove profit, but if the practice is so large that it can be considered “commercial scale”, then that could be subject to criminal enforcement. Article 2.14.1 reads:
“1. Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright or related rights piracy on a commercial scale.
For the purposes of this section, acts carried out on a commercial scale include at least those carried out as commercial activities for direct or indirect economic or commercial advantage.”
Finally, ACTA includes several provisions related to technological protection measures in Art. 2.18.5-7. Reading these carefully, I did not find anything that changes existing anti-circumvention measures enacted in the UK to respond to the Information Society Directive, with one exception, Art. 2.18.6(b) seems to be geared towards the prohibition of mod chips and other similar devices that allow playing pirated computer games in consoles, which has been a bit of a grey area of the law. The section reads:
“In order to provide such adequate legal protection and effective legal remedies, each Party shall provide protection at least against […]:
(b) the manufacture, importation, or distribution of a device or product, including computer programs, or provision of a service that:
(i) is primarily designed or produced for the purpose of circumventing an effective technological measure; or
(ii) has only a limited commercially significant purpose other than circumventing an effective technological measure.”
In short, the final text of ACTA seems considerably less damaging than earlier drafts led us to believe. It seems like some clearer heads prevailed in removing at least some of the most draconian provisions. I am still seriously concerned about the exportation of statutory damages, but I am aware that things could have been worse.