Attraverso - Digital Copyright Crimes and the Trans-Pacific Partnership

By Professor Jeffery Atik

The IP provisions of the Trans-Pacific Partnership (TPP), a regional trade agreement involving the United States and 10 other Pacific Rim nations, are not merely 'TRIPS Plus;' they are also 'WIPO Plus.'

Two major multilateral copyright treaties came into force following the establishment of TRIPS: the 1996 WIPO Copyright Treaty and the 1996 WIPO Performances and Phonograms Treaty. Together, these treaties expand protection to authors and performers in the digital environment. As WIPO products, these two treaties, known together as the WIPO Internet Treaties, reflect fairly broad international consensus, in contrast to the more contentious 'TRIPS Plus' norms promoted by the United States and Europe in various bilateral and regional settings. The now abandoned Anti-Counterfeiting Trade Agreement (ACTA) was an attempt to construct TRIPS Plus broadly, outside of the WTO.

The WIPO Internet Treaties establish new categories of unlawful activity, but they do not require the imposition of criminal penalties on infringers. For example, Article 11 of the WIPO Copyright Treaty requires signatories to "provide adequate legal protection and effective legal remedies" against persons who circumvent technological measures for the protection of copyrighted works. While the WIPO Copyright Treaty does not prevent a signatory from imposing criminal liability in these cases, neither does it mandate it.

The 1998 Digital Millenium Copyright Act (DMCA) purports to be the United States implementation of the WIPO Internet Treaties. Yet the DMCA arguably goes beyond the WIPO Internet Treaties by imposing criminal liability on persons who "willfully violate" DMCA's central provisions "for purposes of commercial advantage or private financial gain."

Certainly the United States was not acting inconsistently with the WIPO Copyright Treaty when, in Section 1204 of the DMCA, it subjects willful violators of DMCA's circumvention prohibitions "for purposes of commercial advantage or private financial gain" to a fine of not more than $500,000 or imprisonment not to exceed five years. But other WIPO Internet Treaty signatories could give effect to their respective obligations to "provide adequate legal protection and effective legal remedies" without creating new crimes.

The United States imposed a DMCA-inspired criminalization requirement in the recent United States -- Korea Free Trade Agreement. The United States - Korea FTA, in turn, serves as the model for ongoing bilateral and regional free trade agreements involving the United States, including the TPP.

As had been the case in the United States -- Korea FTA, the TPP will require its signatories to "ratify or accede to" a long list of international IP agreements, including both of the WIPO Internet Treaties. But recall these treaties do not impose any criminalization requirement. Rather, criminalizing technology circumvention was a matter of unilateral U.S. discretion. Presumably, criminalization mandates were considered, and rejected, within the WIPO forum during the negotiation of the WIPO Internet Treaties.

The DMCA-inspired criminalization mandates found in the United States -- Korea FTA (and perhaps soon to emerge in the TPP) are not found in the ACTA text. Rather, ACTA contains at best permissive (as opposed to mandatory) language with regard to criminal liability for copyright or related rights infringement "in the digital environment." This outcome strongly suggests that the United States had been unable to persuade its 'like-minded' ACTA negotiating partners of the wisdom of imposing criminal penalties for circumvention offenses. The likely source of resistance is the European Union -- which was present in the ACTA negotiations but is outside the TPP process. It may prove counterproductive for the United States to push a new IP enforcement norm upon pliant TPP counterparties, if that norm does not enjoy the support of Europe.

Attaching criminal liability to circumvention offenses is generally regarded as TRIPS Plus, as it is part of the package of IP enforcement enhancements sought by the United States in various international fora. But these criminalization mandates might be more accurately regarded as "WIPO Plus," in that they build on the WIPO Internet Treaties. So as the move to the TRIPS Plus program is commonly understood to be a move away from the TRIPS/WTO structure which had provided underlying substantive norms, so too are the new digital crimes imposed by United States -- Korea FTA and the TPP a move away from WIPO.

"Plus" is not necessarily more. While the new IP measures known as TRIPS Plus (or, to follow this post, WIPO Plus) build on the underlying strata of TRIPS and the WIPO Internet Treaties, they also subtract. To insist on criminalization is to admit that mere administrative and civil remedies are inadequate. Yet departing from a broad consensus to impose narrow, treaty-by-treaty concessions (where other values are in play) risks delegitimizing that very consensus.

This is the third in a series of Atraverso posts "IP Crimes in a TRIPS-Plus World."

See these earlier posts:

The Trans-Pacific Partnership and IP Crimes

Revisiting China's IP Conviction Thresholds

Follow me on Twitter @jefferyatik

Thanks to Christina Perrone for research assistance.