inconsistencies between the tpp and u.s. law

8/2/2019 Inconsistencies Between the TPP and U.S. Law

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Inconsistencies Between the TPP and U.S. Law

The Trans-Pacific Partnership (TPP) is a free trade agreement currently being

negotiated by the United States, Australia, Brunei Darussalam, Chile, Malaysia, New Zealand,Peru, Singapore, and Vietnam.1 Canada, Mexico, and Japan have also expressed interest injoining the Agreement.2

The United States joined the TPP negotiations in March 2008.3 President Bush notifiedCongress of his intent to negotiate with the TPP members on September 22, 2008, and withpotential members Australia, Peru, and Vietnam on December 30, 2008.4 On November 14,2009, President Obama announced the United States intention to engage with the TPP.

5On

December 14, 2009, Ambassador Kirk officially notified Congress of the administrations intentto enter into negotiations on the TPP, with the objective of shaping a high-standard, broad-based regional agreement.6 The United States goals in joining the TPP negotiations seem to betwofold: (1) joining a new Asian-Pacific trading bloc, and (2) shaping the TPP to be consistentwith the United States free trade agreements with other countries.7

The most recent publicly available draft text of the TPPs Intellectual Property Chapter isdated February 10, 2011. The parties have not given any further information about theIntellectual Property Chapter since that time. The draft text contains several differences fromexisting U.S. law, including: the inclusion of transitory reproductions within the authorsreproduction right, slightly harsher anticircumvention provisions, a broad definition ofbroadcasting that includes Internet or individually-chosen transmissions, presumptions ofcopyright ownership, harsher actual and statutory damage provisions, more restrictive provisionsregarding court procedures for preliminary injunctions and forfeitures, and government authorityto prosecute civil copyright offenses. The draft text also fails to include limitation and exceptions

1USTR Fact Sheet: Trans-Pacific Partnership, OFFICE OF THE UNITED STATES TRADE REPRESENTATIVE,http://www.ustr.gov/about-us/press-office/fact-sheets/2011/november/united-states-trans-pacific-partnership (last

visited Feb. 2, 2012).2Statement by U.S. Trade Representative Ron Kirk on Announcements from Mexico and Canada Regarding the

Trans-Pacific Partnership, OFFICE OF THE UNITED STATES TRADE REPRESENTATIVE, http://www.ustr.gov/about-

us/press-office/press-releases/2011/november/statement-us-trade-representative-ron-kirk-announ (last visited Feb. 2,

2012); Statement by U.S. Trade Representative Ron Kirk on Japans Announcement Regarding the Trans-Pacific

Partnership, OFFICE OF THE UNITED STATES TRADE REPRESENTATIVE, http://www.ustr.gov/about-us/press-

office/press-releases/2011/november/statement-us-trade-representative-ron-kirk-japans (last visited Feb. 2, 2012).3 IAN F.FERGUSSON &BRUCE VAUGHN,CONG.RESEARCH SERV., R40502, THE TRANS-PACIFIC STRATEGIC

ECONOMIC PARTNERSHIP AGREEMENT 1(2009), http://fpc.state.gov/documents/organization/135949.pdf.4Id.5USTR Fact Sheet: Trans-Pacific Partnership,supra note 1.6Economic Opportunities and the TPP, OFFICE OF THE UNITED STATES TRADE REPRESENTATIVE,

http://www.ustr.gov/about-us/press-office/fact-sheets/2009/december/economic-opportunities-and-tpp (last visitedFeb. 2, 2012). The USTR observed relevant procedures from the Bipartisan Trade Promotions Authority Act of

2002, 19 U.S.C. 3804, although this provision applies only to agreements entered into before July 1, 2007. Request

for Comments Concerning Proposed Trans-Pacific Partnership Trade Agreement, 70 Fed. Reg. 66,720 (Dec. 16,

2009).7 FERGUSSON &VAUGHN,supra note 3, at 2.


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to copyright, and includes language regarding the intersection of the importation and distributionrights, the status of which is still unclear under U.S. law.

A detailed comparison of the February 2011 draft text of the TPP and U.S. law follows.U.S. statutory citations are to Title 17 of the U.S. code unless stated otherwise.

TPP IPR

Section

Number

TPP Text Difference from U.S. Law

Art. 4.1 Each Party shall provide that authors,performers, and producers ofphonograms have the right to authorizeor prohibit all reproductions of theirworks, performances, and phonograms,in any manner or form, permanent ortemporary (including temporary storagein electronic form).

106(1) only prohibits reproductionin copies or phonorecords, not inany manner or form. 101 requiresthat a copy be fixed, or sufficientlypermanent or stable to permit it to beperceived, reproduced, or otherwisecommunicated for a period of morethan transitory duration. The TPPdoes not define copy but suggeststhat transitory reproductions willqualify.

Art. 4.2 Each Party shall provide to authors,performers, and producers ofphonograms the right to authorize orprohibit the importation into thatPartys territory of copies of the work,performance, or phonogram madewithout authorization, or made outsidethat Partys territory with theauthorization of the author, performer,or producer of the phonogram.

It is not clear whether this conflictswith 109, because the relationshipbetween 109 and 602(a)(1) in theU.S. is still unsettled, particularly afterthe U.S. Supreme Courts evenly splitdecision in Costco v. Omega. Art. 4.2may conflict with U.S. law by notlimiting the importation right with thefirst sale doctrine.

Art. 4.5 Each Party shall provide that, wherethe term of protection of a work(including a photographic work),performance, or phonogram is to becalculated:(a) on the basis of the life of a naturalperson, the term shall be not less thanthe life of the author and 70 years afterthe authors death; and(b) on a basis other than the life of anatural person, the term shall be:(i) not less than 95 years from the endof the calendar year of the firstauthorized publication of the work,performance, or phonogram, or(ii) failing such authorized publication

The TPP mirrors the durationprovisions of 302(a)-(b), but theTPP establishes these limits asminimums, while U.S. law sets thelimits as the standard. Also, 302(e)provides that after 95 years frompublication or 120 years from creation,a person who files a certified reportthat nothing in the record indicates thatthe author has been alive for the last 70years is entitled to the presumption thatthe author has been dead for at least 70years.


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within 25 years from the creation of thework, performance, or phonogram, notless than 120 years from the end of thecalendar year of the creation of thework, performance, or phonogram.

Art. 4.7(b) Each Party shall provide that forcopyright and related rights, any personacquiring or holding any economicright in a work, performance, orphonogram . . . by virtue of a contract,including contracts of employmentunderlying the creation of works,performances, and phonograms, shallbe able to exercise that right in thatpersons own name and enjoy fully thebenefits derived from that right.

This provision is likely in line withU.S. law, but it is possible that shallbe able to exercise that right in thatpersons own name could beconstrued to grant authorship toemployers or contractors withoutmeeting the requirements the workmade for hire definition in 101. Also,this provision could be interpreted in amanner that conflicts with thetermination rights established in 203.

Art. 4.8 [Placeholders for provision on (1)exceptions and limitations, (2) Internetretransmission, and (3) any otherappropriate copyright/related rightsprovisions]

Because the text has not been drafted(or leaked) yet, it is unclear whetheranything in this article will differ fromcurrent U.S. law.

Art. 4.9 Art. 4.9 largely mirrors theanticircumvention provisions in U.S.law, found at 17 U.S.C. 12011204,but is significantly more restrictivethan Art. 11 of the WIPO CopyrightTreaty, which merely requires that

WCT Parties provide adequate legalprotection and effective legal remediesagainst the circumvention of effectivetechnological measures that are usedby authors in connection with theexercise of their rights . . . .

Art.4.9(a)(ii)(C)

[forbidding trafficking of products orservices that] are primarily designed,produced, or performed for the purposeof enabling or facilitating thecircumvention of any effective

technological measure . . . .

1201(a)(2)(A) is similar, but onlyincludes goods or services designed orproduced for the purpose ofcircumventing, not for the purposeof enabling or facilitating the

circumvention . . . .Art. 4.9(a) Such criminal procedures andpenalties shall include the applicationto such activities of the remedies andauthorities listed in subparagraphs (a),(b), and (f) of Article [15.5] asapplicable to infringements, mutatismutandis.

Art. 15.5 requires the imposition ofactual terms of imprisonment whencriminal infringement is undertaken forcommercial advantage or privatefinancial gain, while 1204 providesfor fines orimprisonment for criminalanticircumvention violations.


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Art. 4.9(a) &Art. 12.12(b)

. . . each Party shall provide that anyperson who [commits ananticircumvention violation] shall beliable, and subject to the remedies setout in Article 12.12.

. . . each Party shall provide that itsjudicial authorities shall, at the least,have the authority to . . . provide anopportunity for the right holder to electbetween actual damages . . . or pre-established damages . . . .

1203(c)(5) grants courts discretion toreduce or remit damages in cases ofinnocent violations, and mandates thatcourts remit damages for innocentviolations by libraries, archives,

educational institutions, or publicbroadcasting entities.

Art. 4.9(c) Each Party shall provide that aviolation of a measure implementingthis paragraph is a separate cause ofaction, independent of any

infringement that might occur under thePartys law on copyright and relatedrights.

U.S. courts have split on the questionof whether an anticircumventionviolation requires an infringement ofcopyright. See MDY Industries LLC v.

Blizzard Entmt, Inc., Nos. 09-15932 &16044 (9th Cir., Dec. 14, 2010)); butseeStorage Tech. Corp. v. CustomHardware Engineering, 2004 WL1497688 (D. Mass, July 2, 2004),vacated on appeal, 421 F.3d 1307(Fed. Cir. 2005); The ChamberlainGrp., Inc. v. Skylink Techs., Inc., 381F.3d 1178 (Fed. Cir. 2004).

Art.4.9(d)(viii)

noninfringing uses of a work,performance, or phonogram in a

particular class of works,performances, or phonograms when anactual or likely adverse impact on thosenoninfringing uses is demonstrated in alegislative or administrative proceedingby substantial evidence; provided thatany limitation or exception adopted inreliance upon this clause shall haveeffect for a renewable period of notmore than three years from the date ofconclusion of such proceeding.

1201(a)(1)(C), which governs theLibrarian of Congresss

anticircumvention exemptiondetermination, does not require asubstantial evidence standard, butrather that the Librarian shalldetermine whether persons who areusers of a copyrighted work are, or arelikely to be in the succeeding 3-yearperiod, adversely affected by theprohibition under subparagraph (A) intheir ability to make noninfringing usesunder this title of a particular class of

copyrighted works. The Register ofCopyrights has interpreted this to meanthat proponents of a 1201 exemptionmust provide sufficient evidence of asubstantial adverse effect, noting[h]ow much evidence is sufficientwill vary with the factual context of thealleged harm, and is never the only


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consideration in the rulemakingprocess. 73 FR 58075.

Art.4.10(a)(iii)

each Party shall provide that anyperson who without authority, andknowing, or, with respect to civil

remedies, having reasonable grounds toknow, that it would induce, enable,facilitate, or conceal an infringement ofany copyright or related right . . . (iii)distributes, imports for distribution,broadcasts, communicates or makesavailable to the public copies of works,performances, or phonograms, knowingthat rights management information hasbeen removed or altered withoutauthority . . .

1202(b)(3) only prohibits a personfrom distributing, importing fordistribution, or publicly performing

works, while the TPP also includesbroadcasting, communicating, andmaking available works.

Art. 4.10(c) Rights management informationmeans:(i) information that identifies a work,performance, or phonogram; the authorof the work, the performer of theperformance, or the producer of thephonogram; or the owner of any rightin the work, performance, orphonogram;(ii) information about the terms andconditions of the use of the work,

performance, or phonogram; or(iii) any numbers or codes thatrepresent such information, when anyof these items is attached to a copy ofthe work, performance, or phonogramor appears in connection with thecommunication or making available ofa work, performance or phonogram, tothe public.

This is similar to 1202(c), but doesnot include the exception for publicperformances of works by radio andtelevision broadcast stations includedin 1202(c)(4)-(5).

Art. 5 Without prejudice to Articles11(1)(ii), 11bis(1)(i) and (ii),

11ter(1)(ii), 14(1)(ii), and14bis(1) of the Berne Convention, eachParty shall provide to authors theexclusive right to authorize or prohibitthe communication to the public oftheir works, by wire or wireless means,including the making available to thepublic of their works in such a way that

Although there is a circuit split on thisissue, there is little statutory support

for the position that the 106(3)distribution rights includes a makingavailable right absent actual transfer.


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members of the public may accessthese works from a place and at a timeindividually chosen by them.

Art. 6.5(a) broadcasting means the transmissionto the public by wireless means or

satellite of sounds or sounds andimages, or representations thereof,including wireless transmission ofencrypted signals where the means fordecrypting are provided to the publicby the broadcasting organization orwith its consent; broadcasting doesnot include transmissions overcomputer networks or anytransmissions where the time and placeof reception may be individually

chosen by members of the public

The Copyright Act does not definebroadcasting, except as an FCC-

licensed terrestrial broadcast station forpurposes of compulsory licenses in 114(j)(3), and the TPP adds thatbroadcasting does not include Internettransmissions or individually-chosentransmissions.

Art. 10.2 In civil, administrative, and criminalproceedings involving copyright orrelated rights, each Party shall providefor a presumption that, in the absenceof proof to the contrary, the personwhose name is indicated in the usualmanner as the author, producer,performer, or publisher of the work,performance, or phonogram is thedesignated right holder in such work,

performance, or phonogram. EachParty shall also provide for apresumption that, in the absence ofproof to the contrary, the copyright orrelated right subsists in such subjectmatter.

Neither of these presumptions exists inU.S. copyright law. Fulfilling noticerequirements only affects a defendantsclaim of innocent infringement under 401, 402, 405.

Art. 12.3(b) . . . in determining damages forinfringement of intellectual propertyrights, its judicial authorities shallconsider, inter alia, the value of theinfringed good or service, measured by

the suggested retail price or otherlegitimate measure of value submittedby the right holder.

Under 504(b), the copyright ownermay recover actual damages and anyof the infringers profits attributable tothe infringement. U.S. jurisprudencehas established that the market value of

the work is determined by what awilling buyer would have beenreasonably required to pay to a willingseller for plaintiffs work.FrankMusic Corp. v. MGM Inc.

Art. 12.4 In civil judicial proceedings, eachParty shall, at least with respect toworks, phonograms, and performances

504(c) provides the option ofstatutory damages, but law does notrequire that these damages be high


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protected by copyright or related rights,and in cases of trademarkcounterfeiting, establish or maintain asystem that provides for pre-establisheddamages, which shall be available upon

the election of the right holder. Pre-established damages shall be in anamount sufficiently high to constitute adeterrent to future infringements and tocompensate fully the right holder forthe harm caused by the infringement.

enough to constitute a deterrent tofuture infringements, as the TPPrequires.

Art. 12.7(b) Each Party shall provide that in civiljudicial proceedings . . . (b) its judicialauthorities shall have the authority toorder that materials and implementsthat have been used in the manufacture

or creation of such pirated orcounterfeit goods be, withoutcompensation of any sort, promptlydestroyed or, in exceptionalcircumstances, without compensationof any sort, disposed of outside thechannels of commerce in such amanner as to minimize the risks offurther infringements . . . .

503(b) permits a court to order thedestruction or other reasonabledisposition of . . . all plates, molds,matrices, masters, tapes, filmnegatives, or other articles by means of

which such copies or phonorecordsmay be reproduced. This is narrowerthan the TPPs inclusion of allmaterials and implements used in themanufacture or creation of the goods.

Art. 12.8 Each Party shall provide that in civiljudicial proceedings concerning the

enforcement of intellectual propertyrights, its judicial authorities shall havethe authority to order the infringer toprovide any information that theinfringer possesses or controlsregarding any persons or entitiesinvolved in any aspect of theinfringement and regarding the meansof production or distribution channel ofsuch goods or services, including theidentification of third persons involved

in the production and distribution of theinfringing goods or services or in theirchannels of distribution, and to providethis information to the right holder.

This provision does not includeexceptions for information that is

privileged from disclosure by state lawor the Rules of Evidence. The TPPsuse of infringer instead of allegedinfringer creates uncertainty as towhether the provision only appliesafter judgment or if the TPP ispresuming guilt.

Art. 12.12(c) In civil judicial proceedingsconcerning the acts described in Article4.[9] (TPMs) andArticle 4.[10] (RMI), each Party shall

This provision is not in conflict with 505, but 505 is more broad andbalanced because it also gives the courtauthority to award costs and fees to the


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provide that its judicial authoritiesshall, at the least, have the authority to .. . (c) order payment to the prevailingright holder at the conclusion of civiljudicial proceedings of court costs and

fees, and reasonable attorneys fees, bythe party engaged in the prohibitedconduct . . . .

prevailing party, whether plaintiff ordefendant.

Art. 13.1 Each Party shall act on requests forprovisional reliefinaudita altera parteexpeditiously, and shall, except inexceptional cases, generally executesuch requests within ten days.

U.S. law contains no requirement thatthe court execute grants on preliminarymotions within 10 days. The TPP alsofails to mention that a party may obtaina preliminary injunction only if sheshows that (1) she is likely to succeedon the merits, (2) she will sufferirreparable harm from the defendants

conduct, (3) less harm will result to thedefendant if the preliminary injunctionissues than to the plaintiff if thepreliminary injunction does not issue,and (4) the public interest weighs infavor of the plaintiff.

Art. 15.1(a) Willful copyright or related rightspiracy on a commercial scale includes:(a) significant willful copyright orrelated rights infringements that haveno direct or indirect motivation of

financial gain . . . .

Under 506(a)(1), criminal willfulcopyright infringement that is not forcommercial advantage or privatefinancial gain is limited to: copies witha total retail value of $1,000, or by

making the work available on acomputer network open to the public ifthe defendant knew that the work wasintended for commercial distribution.

Art. 15.5(a) With respect to the offences describedin Article 15.[1]-[4] above, each Partyshall provide: (a) penalties that includesentences of imprisonment as well asmonetary fines sufficiently high toprovide a deterrent to futureinfringements, consistent with a policy

of removing the infringers monetaryincentive. Each Party shall furtherestablish policies or guidelines thatencourage judicial authorities toimpose those penalties at levelssufficient to provide a deterrent tofuture infringements, including theimposition of actual terms of

While U.S. law currently providescriminal penalties includingimprisonment and fines for copyrightviolations, the U.S. does not have anofficial policy of ensuring that thefines are sufficiently high as to have adeterrent effect, and the U.S. does not

have any policies or guidelinesencouraging judges to deter futureinfringement. The guidelines thatcome closest to satisfying thisprovision are the U.S. SentencingGuidelines, although they are notexclusively devoted to deterrence as atheory of punishment.


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imprisonment when criminalinfringement is undertaken forcommercial advantage or privatefinancial gain.

Art. 15.5(b) Each Party shall provide that items

that are subject to seizure pursuant toany such judicial order need not beindividually identified so long as theyfall within general categories specifiedin the order . . . .

The 4th Amendment requires that

warrants issue only upon probablecause and particularly describing theplace to be searched, and the personsor things to be seized. Dependingupon how general is interpreted, theTPP may not require sufficientparticularity under the 4th Amendment.

Art. 15.5(c) . . . that its judicial authorities shallhave the authority to order, amongother measures, the forfeiture of anyassets traceable to the infringing

activity, and shall order such forfeitureat least in cases of trademarkcounterfeiting . . . .

18 U.S.C. 2323 subjects only thefollowing items to forfeiture forcriminal copyright infringement: theinfringing articles, property used or

intended to be used to commit orfacilitate the infringement, proceeds orproperty derived from proceeds as adirect or indirect result of theinfringement.

Art. 15.5(g) . . . that its authorities may initiatelegal action ex officio with respect tothe offenses described in this Chapter,without the need for a formal complaintby a private party or right holder.

To the extent that the TPP criminaloffenses cover conduct that is notcriminal under U.S. law (see above),the U.S. government would not haveauthority to initiate a criminal legalaction to redress the harm.

Art. 16.3 This provision in large part mirrors 512, so while the U.S. is likely alreadyin compliance, the specificity of theprovision leaves little room for othercountries for whom the 512 regimemay not be ideal.

Art. 16.3(a) . . . each Party shall provide,consistent with the framework set outin this Article: (a) legal incentives forservice providers to cooperate withcopyright owners in deterring the

unauthorized storage and transmissionof copyrighted materials . . . .

This provision is ambiguous, althoughthe U.S. could arguably already be incompliance through the notice-and-takedown system under 512. TheTPP provision may encourage a

graduated response mechanism, orsomething to that effect.

Art. 16.3(b) The TPP does not include a limitationon liability of nonprofit educationalinstitutions, as 512(e) does.

Art.16.3(b)(vi)(B)

. . . accommodating and notinterfering with standard technicalmeasures accepted in the Partys

This provision is similar to 512(i)(1)(B), but is actually morespecific about which technical


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territory that protect and identifycopyrighted material, that aredeveloped through an open, voluntaryprocess by a broad consensus ofcopyright owners and service

providers, that are available onreasonable and nondiscriminatoryterms, and that do not imposesubstantial costs on service providers orsubstantial burdens on their systems ornetworks.

measures must be accommodated.

Art.16.3(b)(x)

If the service provider removes ordisables access to material in good faithbased on claimed or apparentinfringement, each Party shall providethat the service provider shall be

exempted from liability for anyresulting claims, provided that, in thecase of material residing on its systemor network, it takes reasonable stepspromptly to notify the person makingthe material available on its system ornetwork that it has done so and, if suchperson makes an effective counter-notification and is subject tojurisdiction in an infringement suit, torestore the material online unless the

person giving the original effectivenotification seeks judicial relief withina reasonable time.

This provision is similar to 512(g)(1), but U.S. law does notrequire that the alleged infringer besubject to jurisdiction in court beforethe service provider restores the

material online.

Side Letter 1,Section (a),Footnote 35

In the case of notices regarding aninformation location tool pursuant toparagraph (b)(i)(D) of Article 16.3, theinformation provided must bereasonably sufficient to permit theservice provider to locate the referenceor link residing on a system or networkcontrolled or operated by or for it,

except that in the case of a noticeregarding a substantial number ofreferences or links at a single onlinesite residing on a system or networkcontrolled or operated by or for theservice provider, a representative list ofsuch references or links at the site maybe provided, if accompanied by

512(c)(3)(iii) requires that thecopyright owners provideIdentification of the material that isclaimed to be infringing or to be thesubject of infringing activity and that isto be removed or access to which is tobe disabled, and informationreasonably sufficient to permit the

service provider to locate thematerial. In Viacom v. YouTube thecourt held that Viacom was required tosubmit the individual URL of claimedinfringing videos and rejected therepresentative list that Viacom hasprovided, which at least arguablyestablishes a stricter standard than the


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information sufficient to permit theservice provider to locate the referencesor links.

TPP provision.

Jodie Griffin

Staff AttorneyPUBLIC KNOWLEDGE1818 N Street, NW, Suite 410Washington, DC 20036

inconsistencies between the tpp and u.s. law

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