Leak: How EU prepares next ACTA “technical round”

EUROPEAN COMMISSION
Directorate-General for Trade

Directorate E – Public Procurement and Intellectual Property, Bilateral Trade Relations
Public Procurement, Intellectual property.

EUROPEAN COMMISSION
Directorate-General for Trade

Brussels, 3 November 2010
Ref:
“LIMITED”

NOTE FOR THE ATTENTION OF THE INTA COMMITTEE

SUBJECT: ACTA Information regarding next steps

ORIGIN: DG Trade

(REMARKS:)

1. Please find enclosed a document agreed by the EU and US negotiators for a package solution to the outstanding reservations in the ACTA text at the end of the Tokyo round.
2. This is also to inform that Parties agreed to have a technical meeting to finalise the legal scrub of the ACTA text. Australia has offered to host the meeting on 30 November – 3 (or if necessary 4) December. The meeting will be held in Sydney.
The hosts propose that delegations included a legal expert and also a person familiar with the history of the negotiations, to avoid the re-opening of previously agreed issues. They are also asking for a modest sized delegation, as the issues involved will solely be of a technical nature.

Brussels, 3 November 2010
TRADE E/PVM D(2010)

LIMITED

NOTE FOR THE ATTENTION OF?THE MEMBERS OF THE TRADE POLICY COMMITTEE
Subject: – Information to the Trade Policy (TPC) Committee regarding ACTA

Contact: Mr. Luc Devigne, Head of Unit, Trade E.2 – Tel: 91873, Fax: 90586 HYPERLINK “mailto:luc.devigne@ec.europa.eu” luc.devigne@ec.europa.eu
Mr. Pedro Velasco Martins, Trade E.2 – Tel: 68893
HYPERLINK “mailto:pedro.velasco-martins@ec.europa.eu” pedro.velasco-martins@ec.europa.eu)
Ms. Alexandra Iliopoulou, Trade E.2 – Tel: 66701
HYPERLINK “mailto:alexandra.iliopoulou@ec.europa.eu” alexandra.iliopoulou@ec.europa.eu

Purpose: For information and circulation to members of TPC Committee.

1. Please find enclosed a document agreed by the EU and US negotiators for a package solution to the outstanding reservations in the ACTA text at the end of the Tokyo round.

This document will be presented orally at the TPC meeting of 5 November.

2. This is also to inform that Parties agreed to have a technical meeting to finalise the legal scrub of the ACTA text. Australia has offered to host the meeting on 30 November – 3 (or if necessary 4) December. The meeting will be held in Sydney.
The hosts propose that delegations included a legal expert and also a person familiar with the history of the negotiations, as there will inevitably be some ‘no go’ areas. They are also asking for a modest sized delegation, as the issues involved will solely be of a technical nature.
DATES ??The meeting will be held on Tuesday 30 November – Friday 3 December. ??VENUE ??The venue for the event will be the Observatory Hotel, Kent St, Sydney (http://www.observatoryhotel.com.au). The hotel is in a quiet area, a 10 minute walk to the water and not far from Sydney’s famous “Rocks” district. ??Lunches will be provided throughout the four days at the Observatory Hotel. ??ACCOMMODATION ??Hosts have negotiated a block accommodation booking with the Observatory Hotel. The discounted booking rate for ACTA delegates is AUD $275.00 per night. We would encourage delegates to stay at the hotel if possible. ??The block booking has been reserved only until 12 November. Accommodation is very tight in Sydney at that time.
For the purpose of the meeting, delegates may wish to arrive late on Monday 29 November and depart early Saturday 4 December. Given the tight accommodation situation in Sydney during this time, room rates for bookings at the Observatory on Saturday 4 December increase substantially ($550 per night). ??For those who wish to stay at the conference venue, please contact Rebecca Della Cioppa (rdellacioppa@observatoryhotel.com.au, ph +61 2 8248 5290). Please mention ACTA, in order to access the discounted rate.
Alternative options are available, although limited, and if you would like to inquire about these please get back in touch with Evan Johns (evan.johns@dfat.gov.au) or Sophie Crosbie ( HYPERLINK “mailto:sophie.crosbie@dfat.gov.au” sophie.crosbie@dfat.gov.au).
DELEGATION LISTS
MS should inform the Presidency about their participation lists by 12 November.
VISAS ??Delegates from some countries will require visas to visit Australia.

As agreed among ACTA participants, the negotiating papers are not public documents and therefore should be treated with reserve.

Commission européenne, B-1049 Bruxelles / Europese Commissie, B-1049 Brussel – Belgium. Telephone: (32-2)299 11 11. Office: CHAR 8/235. Telephone: direct line (32-2) 2992436. Fax: (32-2) 2990586.

ANNEX I

PROVISIONS OF ACTA THAT PROVIDE VALUE COMPARED TO EXISTING INTERNATIONAL STANDARDS AND IN PARTICULAR WTO/TRIPS

General aspects, applicable to all the treaty:

As requested by the EU, Parties agreed to extend the scope of ACTA to other IPR infringements than copyright and trademarks (in the general sections, as well as in the civil, customs and digital sections). This means also that enforcement of geographical indications (GIs) would be included in these sections, benefiting from several innovative provisions.

recognition of the EU principle of proportionality (article 2.X.3, General Obligations)

Civil enforcement:

introduction of provisional injunctions and final injunctions against intermediaries (valuable and based on EU Directive), applying to all IP rights (articles 2.X.1 and 2.5.1.(a)).

clearer measures on provisional enforcement in the case of inaudita altera parte: expeditious and without undue delay (article 2.5.2);

clearer provisions on the calculation of damages, with more options given to right-holders and consequent increased chances of being compensated. Some of the provisions apply at least to copyright and/or trademark infringements (article 2.2);

the Right of Information provision becomes mandatory, instead of its permissible status in TRIPS, while introducing and preserving the protection of confidential and personal data (article 2.4);

clearer measures on disposal of goods; putting the accent on destruction – while with TRIPS wording, there were often fake goods returning to the market after being confiscated. Applies at least to copyrights and trademarks (article 2.3).

clearer provisions on provisional measures regarding the seizures of documentary evidences (original or copies) or other taking into custody of suspected infringing goods (article 2.5.3).

Border enforcement

obligation to provide for export controls, as well as for import (TRIPS only requires the latter), though provision is nuanced, as there is no mandatory requirement to provide for export controls based upon applications for action. (Article 2.X);

compulsory border measures are no longer restricted to trademarks and copyrights, as is the case in TRIPS. (It should be noted that there is a footnote excluding patents from the ACTA border measures, due to “access to medicines” concerns) This has the vey important consequence to establish parallel treatment of GIs and trademarks regarding customs controls, including clause of non discrimination (article 2.X);

Parties shall provide for ex-officio action, a feature that is not covered by equivalent TRIPS provisions on border measures (article 2.X).

inclusion of goods of a commercial nature sent in small consignments, into the scope of application of the border measures. Although not specifically excluded in TRIPS, the ACTA language introduces a clear commitment to act on small consignments. This is an important element in the light of the growth in commercial internet sales of IPR infringing products (Article 2.X).

other less important, but nevertheless useful elements include:

effective detailed rules regarding border measure procedures (including applications for action, ex-officio action by customs and the disclosure of information to right holders). In order to fit in with the Parties’ diverging systems, the provisions remain general. Whilst it is recognised that the details may be helpful, there is little in the provisions that strengthen enforcement in concrete terms.

obligation to provide authority to order destruction of infringing goods; the provisions concerning remedies are very similar to the equivalent TRIPS provisions. TRIPS refers to the destruction or disposal of goods in the section on border measures (and to the disposal of goods outside the channels of commerce in the section on civil remedies). ACTA border measures refers to the destruction of goods or to their disposal outside the channels of commerce. The nuances are subtle and cannot be considered to be a significant added-value element.

rules regarding fees for border enforcement; the ACTA text on this issue states that any fees should not deter recourse to the procedures. This in a general concept that customs should respect, with regard to fees that are charged to an economic operator, for what might be considered to be services rendered. It does not add significantly to the enforcement of IPR at the border.

Criminal enforcement: [comment: this was negotiated by the Presidency on behalf of the Member States and on the basis of a common position unanimously agreed in COREPER]

definition of “commercial scale” – the ACTA wording defines the concept of TRIPS and redresses the doubts created by the recent WTO panel against China, which introduced high quantitative thresh-holds – 500 fakes – for penal measures to kick in. It also introduces the concept of “indirect economic advantage”, which is valuable (article 2.14);

ex officio penal measures – TRIPS did not require this important principle. Valuable element (article 2.17);

criminal liability for “aiding and abetting” – did not exist in TRIPS (article 2.14.4);

penalties – obligation for a Party to provide for both imprisonment and monetary fines in its national legislation, which was optional in TRIPS (article 2.15);

seizure of assets derived from criminal activity and documentary evidence relevant to the alleged offence – did not exist in TRIPS (article 2.16);

definitive confiscation of assets derived from criminal activity – did not exist in TRIPS (article 2.16);

criminal penalties are clearly provided for the use of labels and packaging identical or similar to a registered trademark, without the authorization of the rightholder – did not exist in TRIPS (article 2.14.2);

penal responsibility for moral persons – important for the EU (article 2.14.5);

clearer measures on disposal of goods, putting the accent on destruction – with TRIPS wording, there were often fake goods returning to the market after being confiscated (article 2.16);

Digital enforcement:

the entire section is a novelty, without parallel in any plurilateral or multilateral agreement. TRIPS was entirely silent on the subject (internet not such a relavant issue in 1994);

In detail: innovative provisions on the way to enforce internet infringements (infringements in digital world are not different from infringements in physical world), applicable to all IP rights, including GIs (article 2.18.1);

general provisions on ISP liability (although we were very close to achieving a more detailed regime, broadly inspired by EU acquis), applicable also to trademarks (matters for the EU textile, luxury and cosmetics sectors) (article 2.18.2 and 2.18.4);

consolidation in an Enforcement Treaty of substantive provisions on technical protection measures. This is innovative in such a context. The international framework was negotiated at WIPO through two substantive treaties. The new text clarifies such technical protection including a definition, while preserving access to copyrighted works when limitations and exceptions are applicable (article 2.18. paragraphs 5 to 8).

Enforcement practices:

management of risks at the border: establishes provisions for contacts between right-holders and customs, which are not in TRIPS (article 3.2)

environmental concerns in destruction of goods: New concept (article 3.5).

International cooperation:

introduction of more detailed provisions on exchange of information.

4 November 2010
World Intellectual Property Organisation (UN)

Page 1 sur 2
1. Scope of civil measures (Section 2 of ACTA – page 6)

Introduce a footnote in the title of Section 2: Civil Enforcement, to make the inclusion of
patents and undisclosed information optional.

Section 2: Civil Enforcement1

(…)
________________________
1
For the purpose of this Agreement, Parties may exclude patents and protection of undisclosed information from the scope
of this section.

2. Border measures – Scope definition (Art. 2.X.1 – page 9)

The word “unreasonably” is replaced by the word “unjustifiably”.

ARTICLE 2.X: SCOPE OF THE BORDER MEASURES

In providing, as appropriate, and consistent with a Party’s domestic system of IPR protection
and without prejudice to the requirements of the TRIPS Agreement, for effective border
enforcement of intellectual property rights, a Party should do so in a manner that does not
discriminate unjustifiablyunreasonably between intellectual property rights and that avoids
the creation of barriers to legitimate trade.

3. Border measures – export controls (Art. 2.X.1 – page 10)

The EU withdraws its reservation and accepts the inclusion of the expression “where
appropriate”, in Article 2.X.1, alínea b).

4. Camcording (Art. 2.14.3 and Art. 2.15 – pages 13-14)

a) In Article 2.14.3, the US withdraws its reservation and accepts the current “may” provision.

b) In article 2.15, EU and US agree to remove the reference to “2.14.3”.

ARTICLE 2.15: PENALTIES

For the offences specified in 2.14.1, 2.14.2, 2.14.3, and 2.14.4, each Party shall provide
penalties that include imprisonment as well as monetary fines1 sufficiently high to provide a
deterrent to future acts of infringement, consistently with the level of penalties applied for
crimes of a corresponding gravity.

5. Internet – infringements in digital networks (Art. 2.18.2 – page 15)

The EU lifts its reservation and the following changes (highlighted in 6.below) are introduced
to the text of article 2.18.2:

Page 2 sur 2
a) Add “Further to paragraph 1,” at the beginning of the Paragraph, and
b) replace “including” by “may include”.

6. Internet – scope of covered infringements (Art. 2.18.2 to 2.18.4 – page 15)

Make the scope of IP rights covered by Article 2.18.2 to 2.18.4 as follows:
a) 2.18.2 – “copyright”;
b) 2.18.3 – “trademarks and copyright”;
c) 2.18.4 – “trademarks or copyright”.

ARTICLE 2.18: ENFORCEMENT IN THE DIGITAL ENVIRONMENT

1. (…)

2. Further to paragraph 1, eEach Party’s enforcement procedures shall apply to
infringement of at least trademark and copyright or related rights over digital networks,
includingwhich may include the unlawful use of means of widespread distribution for
infringing purposes. These procedures shall be implemented in a manner that avoids the
creation of barriers to legitimate activity, including electronic commerce, and, consistent with
each Party’s law, preserves fundamental principles such as freedom of expression, fair
process, and privacy.2

3. Each Party shall endeavour to promote cooperative efforts within the business
community to effectively address at least trademark and copyright or related rights
infringement while preserving legitimate competition and consistent with each Party’s law,
preserving fundamental principles such as freedom of expression, fair process, and privacy.

4. Each Party may provide, in accordance with its laws and regulations, its competent
authorities with the authority to order an online service provider to disclose expeditiously to a
right holder information sufficient to identify a subscriber whose account was allegedly used
for infringement, where that right holder has filed a legally sufficient claim of infringement of
at least trademark rights or copyrights or related rights and where such information is being
sought for the purpose of protecting or enforcing at least the right holder’s trademark rights
or copyright or related rights. These procedures shall be implemented in a manner that
avoids the creation of barriers to legitimate activity, including electronic commerce, and,
consistent with each Party’s law, preserves fundamental principles such as freedom of
expression, fair process, and privacy.

EUROPEAN COMMISSION
Directorate-General for Trade

Directorate E – Public Procurement and Intellectual Property, Bilateral Trade Relations
Public Procurement, Intellectual property.

Brussels, 4 November 2010
TRADE E/PVM D(2010)

LIMITE
NOTE FOR THE ATTENTION OF?THE MEMBERS OF THE INTA COMMITTEE
Subject: – Information to the Trade Policy (TPC) Committee regarding ACTA

Purpose: For information and circulation to members of TPC Committee.

This is to reply to written comments submitted by CZ, EL, ES, FI, FR, IT, NL, PT, SE and UK.

Also enclosed as ANNEX I is a document listing the most important innovative aspects of ACTA in comparison with the prevailing international standards, and namely with the TRIPS Agreement.

General Scope

Several MS (CZ, EL, ES, FR, IT, PT) expressed the concern that ACTA could be seen as TRIPS minus, because certain provisions on the chapters on civil enforcement do not cover infringements of all IPR. Some MS also complain about the fact that certain provisions in the border and digital chapters are only mandatory for copyright and trademark infringements and consider this discriminatory.

While it was obviously in the interest of the Commission to achieve a result in the negotiations that is as close as possible to the rules in force in the EU (including TRIPS), it was not possible to reproduce, in such an international negotiation, the acquis to the letter. From a legal point of view, there are no objections against agreeing on a lower level of harmonisation in ACTA, compared to the EU acquis. However, as an absolute minimum, the ACTA provisions are, at least, aligned to the TRIPS Agreement. The Commission wishes to clarify that there are no provisions in ACTA falling below the minimum thresholds of enforcement imposed by TRIPS. That would be illegal and could expose the ACTA members to WTO litigation. It is also expressly safeguarded in Article 1.1 ACTA. All limitations of the scope to trademarks and/or copyright which exist in some provisions, namely in the civil enforcement chapter, concern TRIPS+ provisions (see below for more detail).

The Commission also recalls that the disagreement among ACTA parties about the scope of the agreement was the major point of contention from the first round of negotiations, back in June 2008.

This issue was only solved in the last day of the Tokyo round, through a compromise solution that the Commission considers overall balanced and acceptable. The compromise consisted of the following elements:

– The acceptance that ACTA would be a treaty covering infringements of IPR and not only of copyright and trademark, as was the wish of many ACTA parties. All the sections of ACTA with the exception of the one on Criminal Enforcement have a broader scope than trademarks and copyrights;

– The exclusion of patents from the section on Border measures;

– The limitation to copyright and trademarks of the mandatory application of certain TRIPS+ provisions in the Civil enforcement section, as well as the option to exclude patents and protection of undisclosed information from this section;

– The limitation to copyright and trademarks of the mandatory application of certain provisions in the Digital Enforcement section (to be noted that these provisions – article 2.18.3 and 2.18.4 – are themselves optional).

The main reason for these targeted differences of treatment between copyright + trademark and the other IP rights have to do with the fact that in several ACTA countries there are a number of civil, customs and digital enforcement provisions that only apply to trademarks and copyright or even only to copyright.

Insisting on broader coverage for these provisions would require those countries to substantially change their domestic law, and several of them, in particular the US, refused to do it through ACTA.

The Commission notes that the exact same position was adopted by the European Union during the negotiations, particularly in the Criminal Enforcement chapter, but also in the recent written comments, where the UK and SE insist that the EU expressly excludes “undisclosed information” and “layout-designs of integrated circuits” from the scope of the civil and/or the border enforcement sections.

In this context, it was not possible to conclude an agreement without a certain level of flexibility from all parties. However, it is clear that a broad coverage of IP rights, including geographical indications (GIs) was only achieved due to the successful pressure by the EU and that without the EU participation, ACTA would revert to an agreement dealing with copyright and trademark infringements only.

Definitions

EL and IT point out that ACTA has a definition for “counterfeit trademark goods” but not for “counterfeit geographical indications”. The definition for trademarks, which is a “cut and paste”from a TRIPS footnote, was introduced before Parties agreed to expand the scope of ACTA to other IPR infringements. The Commission will consider whether a definition of counterfeit trademark goods is still necessary in ACTA. This issue will be addressed during the legal scrub process.

Scope of Border Measures (Article 2.X – page 9)

Several MS (EL, ES, FR, IT, PT, UK) expressed concerns about the wording of the definition of IP rights covered by the border enforcement provisions, and namely about the ambiguity introduced by expressions such as “as appropriate” or “unreasonably”.

First of all, it is essential to recall that ACTA is an enforcement treaty and that Parties negotiators’ had no mandate to introduce, modify or eliminate rules about the substantive protection of IPR. In ACTA, Parties establish provisions to deal at the border, by the administration or in court with infringements of IP rights as defined domestically by each of the Parties.

Article 2.X – Scope of the Border Measures was one of the most difficult provisions to negotiate, with the ACTA Parties split between those who insisted on its mandatory application to all IP rights and those who could only accept an obligation to cover copyright and trademarks, like in TRIPS Article 51.

Finally, an agreement was reached on a broad coverage of all IP rights (except patents). Furthermore, a number of elements strengthen the EU demand for a broad scope:
–   the reference to “domestic system of IPR protection”: this safeguards the EU concern that if a certain right is defined and protected in an ACTA country, then an infringement of this right must be enforced at the border as well;
–   the concept of non-discrimination between IP rights: this is particularly important to avoid different treatments between trademarks and GIs in countries where both systems coexist;
–   the reference to avoiding “the creation of barriers to legitimate trade”: once more, this reference reinforces the Parties’ commitment to ensure that legitimate GIs will not be prevented to circulate legally.

None of these elements exists in TRIPS (Article 51), which simply imposes border measures for copyright and trademark infringements and allows other infringing goods (ex: GIs) to be traded freely.

Although, in order to reach an agreement on Article 2.X ACTA, it was necessary to insert certain elements of flexibility, like to reference to “as appropriate” or “unjustifiably”, the Commission submits that ACTA provides a considerably higher level of balance between the way trademark infringements and GI infringements will be treated by customs of the ACTA Parties providing for both types of protection.

Also in this aspect, ACTA represents an important progress in relation to the current international standard set by the TRIPS Agreement, which it would be regrettable to jeopardise.

It must also be recalled, that the EU also needs this flexibility, since, as it is recalled by SE in its comments, not all IP rights are covered by Regulation 1383/2003 (ex: undisclosed information and Layout-designs(topographies) of integrated circuits). Imposing the application of ACTA’s border measures to all IP rights would not be in line with the EU acquis.

Civil Section
Article 2.2.: Damages
FI and FR request further clarification on the article defining civil enforcement damages. This Article was one of the most discussed provisions of this section. The current drafting is the result of a lengthy and balanced discussion.
The first sentence of paragraph 1 states the principle, i.e. that the damages shall be “adequate to compensate for the injury the right holder has suffered”. What follows in the second sentence of paragraph 1, in paragraph 2 and in paragraph 3, are the different possibilities to calculate that injury. Paragraph 4 indicates that the judicial authorities should have discretion in each single case whether, depending on the specificities of that case, they want to award lump sum damages or damages based on the actual damage of the right holder. This possibility to choose is also available for the right holder. Finally, paragraph 5 provides for the payment of legal cost and other expenses.
Paragraph 1 obliges the parties to provide that judicial authorities can order that the injured party be compensated for the real damage, listing criteria that are very similar to those contained in Article 13(1)(a) of the Enforcement Directive. In addition, the authorities have also the possibility to order, according to paragraph 2, that the profit of the infringer is paid to the right holder. This criterion is also contained in Article 13(1)(a) of the Enforcement Directive.
Similarly to Article 13(1) of the Enforcement Directive, the draft ACTA text clearly says, in paragraph 1, that the obligation to pay damages may be imposed only on infringers “who knowingly or with reasonable grounds to know” engaged in an infringing activity. To further clarify and be sure that this “negligence” criterion also applies to paragraph 2, a direct link between paragraphs 1 and 2 is mentioned at the end of paragraph 2.
The separation between these two paragraphs, 1, and 2, can be explained by the fact that the profit of the infringer is not in all cases in its entirety considered to be lost profit of the infringer (different distribution channels, different prices etc). However, if the objective pursued by damages – compensation and deterrent from further infringements – is to be reached, damages need at least to absorb the profit made by the infringer. The draft text of ACTA achieves this objective by separating the two aspects.
Paragraph 3 establishes a second possibility to calculate damages. According to the draft text, Parties should establish among three different systems one or more of them. Parties are clearly not required to establish the three systems together. We do not agree that these systems appear to be cumulative.
The second system which provide for “presumptions for determining the amount of damages…” which mirrors Article 13(1)(b) of the Enforcement Directive providing for the possibility for the judicial authorities to award lump sum damages, is the one applicable to the EU. It has to be noted that, in the current draft, a detailed footnote is attached to this option which defines the notion of presumption by a direct reference to three optional and alternative definitions, including, the EU definition of lump sum damages. The Commission cannot see how the wording of the footnote specifying “… the presumption…. is…” could be interpreted differently than by saying “presumption …means…”. Consequently, there is no change in the burden of proof but simply a positive definition of this concept of “presumption” in the context of ACTA.
Finally, according to the Directive, Member States must provide for this possibility but the judicial authorities have the discretion to award damages according to this “lump sum” methodology or to the “actual damages” methodology. This is reflected in paragraph 4 which provides the judicial authorities with the discretion to choose the best option.
Article 2.3: Other Remedies
In reply to the comment by SE: The scope of this provision is limited to “pirated copyright goods and counterfeit trademark goods”. The aim of this provision is to apply remedies such as destruction to goods that have been found to infringe a copyright or a trademark right under the law of the country in which the procedures are invoked. The need to “have found an infringement” has been always present in all former draft texts of this Article; in particular the one discussed in Tokyo and dated 29 September. The problematic issue in the current text concerns the drafting of paragraph 1 as far as the notion of “pirated copyright goods” is concerned.
The definition of “pirated copyright goods” is given in Chapter 1, Section B and this definition is a copy of TRIPS footnote 14. Reading this definition in conjunction with the current Article 2.3 may lead to interpret that this definition is not linked to an actual infringement in the territory (EU or MS) where the action (e.g. destruction) is sought, it is enough that the behaviour “would have constituted an infringement”.
As far as “counterfeit trademarks goods” are concerned the definition includes the expression “and that thereby infringes the rights of the owner of the trademark in question under the law of the country in which the procedures… are invoked”. However, “pirated copyright goods” are defined as goods that are made abroad in a certain way, “…where the making of that copy would have constituted an infringement under the law of the country in which the procedures are invoked”. This definition may create a legal fiction of an infringement in cases where no such infringement has been committed. The reason for this is, of course, that it otherwise would be impossible for the customs to intervene against copyright goods (import as such does not constitute a copyright infringement). As a consequence, the proposed wording in ACTA would in respect of copyright mean that we may have to provide a possibility to destroy goods produced abroad when there has not been an actual infringement in the EU. This is not in compliance either with the EU acquis or with the aim of this Article as negotiated during 11 rounds.
The suppression of a reference to an “infringement” is a mistake made by the Chair during the last night of the negotiation to adapt this provision according to the global agreement between Parties on the scope of the civil chapter. It was not the intention of the Parties to modify the substance of the provision but just to adapt the scope.
The Commission intends to address this “technical” problem during the next legal scrubbing of the text. Parties could re-adapt the current text using the version dated 29 September where a clear reference to the necessity of having an infringement is mentioned. The final text could therefore be read as the following:
“At least with respect to goods that have been found to be pirated or counterfeited, each Party shall provide….”
Criminal Section
Paragraphs 2.14.3 and 2.15: Camcording
On FI and UK’s comments on “camcording”: These concerns have been duly addressed as mentioned in the EU-US joint package addressing the outstanding reservations in the ACTA text (TPC 632/10b, of 3 November):

i) in Article 2.14.3, the US withdraws its reservation and accepts the current “may” provision.

ii) in article 2.15, EU and US agree to remove the reference to “2.14.3”, which means that ACTA Parties have no obligation to introduce imprisonment and monetary fines for any camcording infringements.

Digital Section
Paragraph 2.18.2: Digital networks
NL and the UK expressed concern about the wording of article 2.18.2 regarding digital networks, on which the EU had introduced a reservation.
As mentioned in the EU-US joint package addressing the outstanding reservations in the ACTA text (TPC 632/10b, of 3 November) COM and US agreed to reformulate the paragraph in a manner that addressed our concerns, namely with an express reference to the IPR infringements mentioned in 2.18.1:
2. Further to paragraph 1, eEach Party’s enforcement procedures shall apply to infringement of at least trademark and copyright or related rights over digital networks, includingwhich may include the unlawful use of means of widespread distribution for infringing purposes.
Paragraph 2.18.5: Technical Protection Measures
In reply to the comments by FI: As far as technical protection measures (TPMs) are concerned the aim of this provision is that only circumvention undertaken to commit an IP infringement can be made subject to civil or criminal liability.
The Commission reads the provision of paragraph 2.18.5, including the definition provided in footnote 14, as implying that all protection granted to TPM are limited to providing adequate legal protection and effective legal remedies against the circumvention of TPM, as long as:
–   the TPM are effective (TPM themselves are not a form of copyright or neighbouring rights);
–   the TPM are used by authors, performers or producers of phonograms in connection with the exercise of their rights (i.e., TPM used by any other group, such as broadcasters, to control access to scheduled programmes are not protected, TPM used by the group of beneficiaries to achieve goals not linked to protecting their copyrights (“access control”) are not protected either);
–   the TPM are used to restrict acts, in respect of works, performances or phonograms, which are not authorised by authors, performers or producers of phonograms or are not permitted by law – this essentially implies two things:
(1)   acts not prohibited by copyright, such as browsing, linking, … cannot be prevented by using TPM; and
(2)   TPM cannot be used to override statutory exceptions (“permitted by law”).
In order to clarify the concerns in relation to “access control”, it is the view of the Commission that with the current definition given in footnote 14 it cannot be inferred that copyright allows rightholders to prohibit certain forms of “use” and thus prevent access to works. This form of “usage” control is not part of the EU acquis.
As international and domestic laws currently stand, copyright and related rights allow the right holder to prevent certain acts such as reproductions, fixations, adaptations, the distribution of copies and the communication to the public (including making a work available to the public in an interactive manner). None of these restricted acts should be confused with a right to prevent use (e.g., reading, viewing) of a work. Any attempt to expand copyright to cover “use” would muddle the distinction between IP and conditional access. The Commission cannot follow an approach where controlling access to services is mixed with the infringement of IP rights.
In these circumstances the reference to access control is highly sensitive. The only way acceptable by the Commission in the ACTA text was by adding a caveat to footnote 14 which read as follows: “without prejudice to the scope of copyright or related rights contained in a Party’s law…”
By doing that, the definition in footnote 14 does not extend the scope of protection to encryption devices or other tools to control access independently to the exercise of their rights by authors, performers or producers of phonograms.
Technical Protection Measures provisions, computer programs and interoperability
In reply to the comments by SE and UK: Regarding the current draft of ACTA and its impact onto the computer program’s (Directive 91/250/EEC) special circumvention regime for interoperability purposes, this was indeed considered during the negotiation and a specific footnote has been added regarding the implementation of paragraphs 2.18.5 and 2.18. 6.
The footnote 15 concerns interoperability and states that “no Party shall be obliged to require…” There is no obligation to amend (or not) the current EU legal framework regarding interoperability.
In addition, to clarify the footnote and to be sure that EU law will not change, a Negotiator Note has been also added at the request of the EU which states that there is no obligation for a Party to mandate interoperability. That is to say that “there is no obligation for the ICT (Information Communication Technology) Industry to design devices, products, components, or services to correspond to certain technological measures”. Therefore the limitations expressed in Recital 48 – 2nd sentence of the directive 2001/29/EC and of directive 91/250/EEC are preserved.
The Commission has already requested that Negotiators’ Notes be made public.
Paragraph 2.18.8: Exceptions and limitations
In reply to the comments by FR: The paragraph 8 provides for different safeguards to the EU acquis. In the first sentence, it provides that the Parties may “adopt or maintain appropriate limitations or exceptions to measures implementing paragraphs 5, 6 and 7”. It is the Commission’s interpretation that relevant exceptions for computer programs (Directive 91/250/EEC) fall into this concept of “appropriate limitations or exceptions”.
In the second sentence, the paragraph provides that obligations in paragraphs 5, 6 and 7 are without prejudice to the limitations and exceptions to the copyright or related rights. It is the Commission’s interpretation that this will preserve the EU regime of limitations and exceptions of copyright and related rights established by the Directive Copyright in the Information Society, in particular as far as Article 6(4) of the said directive is concerned.
It is therefore fundamental for the Commission that paragraph 8 remains unchanged as it is the only one in the current ACTA text which preserves safeguards corresponding to Article 6(4) of Directive 2001/29/EC and relevant exception of Directive 91/250/EEC.
Paragraph 2.18.7: Rights-Management Information
In reply to the comments by SE: Paragraph 2.18.7 provides for protection of RMIs through “adequate legal protection and effective legal remedies…” which includes criminal or civil remedies. Parties are free to choose one of the two or both.
The mentioning of “civil remedies” as example of “adequate legal remedies” does not oblige Parties to provide such civil remedies as long as “adequate legal remedies” are in place.

Vienna Convention on the Law of Treaties Art. 30, Par 2.: “When a treaty specifies that it is subject to, or that it is not to be considered as incompatible with, an earlier or later treaty, the provisions of that other treaty prevail.“
As indicated in the EU-US joint package addressing the outstanding reservations in the ACTA text (TPC 632/10b, of 3 November) the COM and the US agreed to replace the word “unreasonably” by “unjustifiably” in Article 2.X.

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