Rethinking the Anti-Counterfeiting Trade Agreement's criminal copyright enforcement measures.

• Author: Bitton, Miriam

1. INTRODUCTION

   The enforcement of intellectual property law is a continuing, evergrowing, and challenging task for countries around the world. In response to the challenges faced, enforcement issues have arisen at both the national and international levels. International agreements have been introduced over the years in order to advance minimum international standards that will assist national governments, inter alia, in combating widespread infringement.

   As part of this "war" against intellectual property infringement, criminal sanctions have gained in prevalence. Despite the efforts made, it is indisputable that counterfeiting rates have continuously grown in recent years, thereby suggesting that the criminal enforcement systems in place have not significantly deterred or affected people's behavior in this field. Counterfeiting today is a $600 billion industry worldwide and accounts for 5%-7% of global trade. (1) It is estimated that in the United States alone, counterfeiting accounts for over $200 billion annually. (2) In the last two decades, counterfeiting has increased by more than 10,000%. (3)

   As exemplified by the statistics, counterfeiting in today's globalized environment is a global problem that can only be combated on an international scale. In response to this need for anti-counterfeiting enforcement, a group of developed countries collaborated to negotiate and form the Anti-Counterfeiting Trade Agreement (ACTA), (4) an initiative to increase enforcement of intellectual property rights and combat counterfeiting beyond the existing enforcement provisions of the TradeRelated Aspects of Intellectual Property Rights Agreement (TRIPS). (5)

   Through the ACTA, the United States, Japan, Switzerland, and the European Communities have initiated a move towards heightened intellectual property rights enforcement. (6) These nations officially announced their intention to start negotiations for the ACTA in 2007. (7) Much of the negotiations were conducted in a shroud of complete secrecy, (8) Yet criticism of the secretive negotiations diminished when the negotiating parties released a draft of the proposed agreement in April 2010 and a final draft in October of the same year. (9) The agreement was ultimately finalized in May 2011. (10)

   The ACTA represents the strongest intellectual property enforcement agreement to date negotiated at the international level. The goals of the ACTA include: "(1) strengthening international cooperation, (2) improving enforcement practices, and (3) providing a strong legal framework for [intellectual property rights] enforcement." (11) It does so by bringing about the following changes to TRIPS's existing policies and goals:

   (1) [E]xpansive coverage of multiple kinds of IP and changes to the international definitions used in the WTO Agreement on Trade Related Aspects of Intellectual Property Law (TRIPS Agreement); (2) the expansion of what constitutes criminal copyright violations; (3) more stringent border measures; (4) mandating closer cooperation between governments and rights holders ... ; and (5) the creation of a new international institution (an ACTA "Committee") to address IP enforcement. (12) This Article explores the ACTA's criminal provisions pertaining to copyright law. The ACTA, described as a TRIPS-plus agreement, includes several provisions concerning the criminal enforcement of copyright law that have never before been included in an international agreement. Most notably, the ACTA calls for strong penalties on the books: "[E]ach Party shall provide penalties that include imprisonment as well as monetary fines) sufficiently high to provide a deterrent to future acts of infringement .... " (13) The tougher penalties apply to several acts of intellectual property infringement. Under the criminal enforcement provision, criminal sanctions apply to willful trademark counterfeiting, copyright piracy, or "willful importation and domestic use" of counterfeit labels and packaging in the course of trade on a commercial scale. (14) In addition, the ACTA demands that criminal penalties apply to the act of aiding and abetting criminal conduct and requires the criminalization of camcording movies in theaters. (15) Perhaps the most controversial provision (16) involves the criminalization of copyright infringement that takes place on the internet. (17) Finally, the ACTA requires that its member states establish anticircumvention laws to protect the use of online technological protection measures, (18) similar to the United States' Digital Millennium Copyright Act (DMCA). (19)

   Although not yet enacted, the ACTA has already been subject to sharp criticisms from non-member states and even member states' domestic citizens for its aggressive approach towards intellectual property enforcement as well as its procedural pitfalls, (20) Moreover, the following four main criticisms have been presented concerning the ACTA's negotiations: the lack of transparency and secrecy in the negotiating process, the limited number of negotiating participants, the undemocratic process, and the lack of accountability. (21)

   This Article questions the wisdom of the ACTA's criminal copyright infringement provisions, exploring whether the measures can in fact bring about better protection of intellectual property rights through stricter enforcement, given the American experience with similar measures. This analysis reveals that the ACTA will not be able to achieve its objectives because of its problematic design, which is quite similar to the problematic design of the U.S. law.

   The Article proceeds as follows: Part II will generally discuss the intersection of criminal law and intellectual property law, touching upon the complexities surrounding the criminalization of intellectual property infringement. Part III will then turn to the specific branch of copyright law, examining its intersection with criminal law. Part IV will outline the development of criminal copyright infringement provisions and discuss the reasons for the criminalization of copyright law. In Part V, the effects of these criminal sanctions will be examined and their futility shown. Part VI will then turn to examine the international dimension of copyright enforcement, discussing the developments of criminal provisions under international intellectual property law from the adoption of the Berne Convention through the ACTA and describing the key changes introduced by ACTA from TRIPS. This Part will also discuss ACTA's proposed copyright enforcement measures, demonstrate their drawbacks given the American experience, and propose a different approach to enforcement challenges--mainly relying on educational campaigns as a tool for bringing about a real change.

2. THE INTERSECTION OF CRIMINAL LAW AND INTELLECTUAL PROPERTY LAW

   Criminal law has been embedding itself into intellectual property law enforcement at a rapid pace. (22) Given the increasing value of intellectual properties to the U.S. economy, (23) the attempt to use criminal sanctions to protect intellectual property rights comes as no surprise. However, because of the unique characteristics of intellectual properties--intangibility, non-excludability, and non-rivalry--the application of criminal law to this domain has met much difficulty and opposition.

   1. THE COMPLEXITIES SURROUNDING THE CRIMINALIZATION OF INTELLECTUAL PROPERTY INFRINGEMENT

      Should intellectual property infringement be criminalized? That is, should criminal sanctions come in place of civil sanctions, in addition to them, or not at all? While the existing theoretical discussion on this question is sparse, various legal commentaries have addressed the general justifications for and against criminalizing intellectual property law.

      Intellectual property crimes usually do not involve violence. (24) The harm they cause is often difficult to assess, (25) and the victims of the crimes are not easily identifiable. (26) The question of who should be held culpable for the offense is also not easily answered. (27) Moreover, some intellectual property offenses "are committed in the course of conduct that is otherwise legal, and even socially productive." (28) These factors have led one scholar to denominate intellectual property offenses as "morally ambiguous." (29) This uncertainty causes people to question whether such offenses are morally wrong in the first place and consequently whether they are deserving of criminal sanctions. (30) Stuart Green notes that another ambiguity in the intersection between criminal law and intellectual property law comes from their incompatible paradigms: criminal law relies on the paradigm of theft, (31) while intellectual property relies on the paradigms of infringement, false marking, counterfeiting, and regulatory violations. (32) Each paradigm is based on different moral and doctrinal foundations, and the lack of coherence as to why each paradigm is applied further intensifies the moral ambiguity in criminalizing intellectual property violations. (33)

      However, the fact that intellectual property crimes may at times be morally ambiguous does not necessarily mean that criminal law should not be applied to such crimes. Rather, the use of criminal law has to take a nuanced approach in which the moral ambiguity surrounding certain infringing conduct is acknowledged. (34) As Green states, "our system is committed to the notion that only the most clearly harmful and wrongful kinds of conduct should be treated with criminal sanctions," and thus he cautions against the indiscriminate use of sanctions. (35) Moreover, he warns that, if the ambiguity prevails, "the moral authority of the criminal law will itself be viewed as ambiguous." (36)

   2. JUSTIFICATIONS FOR USING CRIMINAL SANCTIONS

      If intellectual property is protected like tangible property, then one can argue that infringements of intellectual property rights should be punished as deprivations of tangible property. (37) Irina Manta notes...