The United States, together with several other industrialized nations, has signed a major international treaty designed to enhance global protections against counterfeiting and intellectual property piracy. The treaty, known as the Anti-Counterfeiting Trade Agreement, or ACTA for short, requires signatory nations to enact aggressive intellectual property protection legislation similar to that already in place in the United States. Significantly, the agreement was signed by the U.S. government without Congressional debate or approval.

ACTA has been in the works for more than three years. The agreement was signed recently at a Tokyo signing ceremony by Australia, Canada, Japan, Morocco, New Zealand, Singapore, and South Korea, as well as the United States, and significantly tightens global protections against intellectual property infringement, particularly with respect to copyrights. Three other participants in the negotiating process – the European Union, Mexico, and Switzerland – have not yet signed the agreement. The EU’s absence is notable – despite being negotiated by the European Commission on behalf of EU member states, the agreement itself must still be approved by the European Parliament – and the EU has not yet completed its internal procedures authorizing signature.

ACTA is a voluntary agreement that provides a mechanism for the parties involved to collaborate on increasing effective intellectual property rights enforcement.  ACTA is replete with provisions concerning enhanced criminal enforcement. For example, it requires parties to provide criminal penalties and procedures for willful trademark counterfeiting or copyright or related rights piracy on a commercial scale , and applies criminal penalties to willful importation and domestic use of labels or packaging using an unauthorized trademark, as well as unauthorized copying of cinematographic works from a performance in a movie theater. Countries must include imprisonment and heavy fines among the penalties for such activities.

While ACTA is heavily weighted in favor of rights holders and has received significant support from industry groups representing trademark and copyright owners, critics have also made their voices heard. One significant concern asserted is that the agreement, which was negotiated in secret, improperly and unfairly circumvents existing and accepted international negotiating protocols such as TRIPS and WIPO. Critics have also raised concerns about whether information privacy has been adequately considered. For example, among the many provisions requiring enhanced criminal enforcement, ACTA empowers signatory nations to order an online service provider to disclose information sufficient to identify a subscriber whose account was allegedly used for infringement.

In the United States, it remains to be seen whether ACTA will require any changes to existing intellectual property laws or creates any new international obligations. That’s because one significant issue drawing attention is whether public and congressional debate is needed before entering into an international agreement such as ACTA. At least one member of Congress has objected to the unilateral signing of the agreement, asserting that because Congress has plenary powers to regulate foreign commerce and protect intellectual property, the U.S. President does not have constitutional authority to unilaterally enter into such binding international treaties. If a constitutional challenge is brought regarding ACTA, the United States Trade Representative (which is a part of the executive branch and negotiated the treaty on behalf of the U.S.) may be required to provide clarity as to precisely what responsibilities have been imposed by this agreement.

This past week saw two new bills focusing on IP issues introduced by the United States Senate on the same day. While each deals with a different issue, they are both aimed at the same fundamental goal – to strengthen US law enforcement ability to deal with intellectual property infringement. This time, trademark and copyright protection take center stage, and they follow other attempts in 2011 to legislate on issues involving intellectual property.

The first of these, introduced as S. 968, is known as the “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act” – or the “Protect IP Act” in short form. The legislation is a revision of an earlier attempt to limit the illegal sale of counterfeit goods by cracking down on websites around the world.

The revised legislation, like the original one, confers significant powers to combat the online sale of counterfeit goods. Most of the original provisions remain, but notable among the additions is a limited private right of action that allows copyright holders to pursue injunctions against payment processors and ad networks to eliminate financial viability of a rogue website. The Protect IP Act also appears to respond to previous concerns by critics worried about an overreach of US authority by introducing a narrower definition of what a rogue website site is, and requiring those bringing an action —whether it’s the US Attorney General or a copyright owner —to first proceed against the owner or registrant of a domain name used before bringing an action against the domain name itself.

Nonetheless, Internet censorship worries remain. The revised legislation, as with the original, provides US authorities with the ability to institute an action against “nondomestic domain names,” meaning that law enforcement capability extends to websites not based in the United States – renewing concerns of too much US control over policing the Internet.  These concerns have recently drawn increased attention in the wake of the disclosure of sensitive diplomatic cables by Wikileaks and the vigorous efforts to choke off its ability to get information out to the global community.

The issue centers on the Internet Corporation for Assigned Names and Numbers (ICANN), its relationship with the United States, and its role in managing the global system of Internet protocol addresses and top-level domains. ICANN was originally created to oversee a number of Internet-related tasks previously performed directly on behalf of the US government. Several countries, in conjunction with the United Nations, have recently called for an international body representing the global community that would keep the web access open, free, and with sufficient privacy.

The second piece of legislation, introduced as S. 978, seeks to amend existing criminal penalties for criminal copyright infringement. Current US law makes unauthorized uploads and downloads of copyrighted content a felony. The new legislation specifically targets the illegal streaming of copyrighted content, extending felony status to such conduct. While it does not bring with it the same controversial issues as S. 968, these provisions do represent an attempt to address the constantly-changing nature of technology, such as the emergence of “cloud” computing, and its utility in assisting infringement of copyrights.

Attempts to legislate in the arena of intellectual property are therefore significantly increasing as 2011 progresses. Both bills come on the heels of at least two other major attempts to introduce legislation centered around intellectual property issues – one a controversial attempt to exert further control over the Internet, known as Cybersecurity and Internet Freedom Act, and a renewed attempt to reform US patent law. With the addition of S. 968 and S. 978, there is no doubt that intellectual property issues are firmly in focus for the US legislature.

Last week, the parties negotiating the multi-lateral Anti-Counterfeiting Trade Agreement, or more commonly known as ACTA, finalized their draft document in what has been a long, tedious, and often controversial process. ACTA began in October 2007 in a combined international attempt to address counterfeiting and piracy of goods. If ratified and enacted into law, ACTA may have profound global implications on international copyright and trademark issues.

As a product of negotiations between countries and involving various other governmental and non-governmental organizations, ACTA becomes part of a growing body of international intellectual property treaties. The agreement, however, has a number of nuances that make it exceptional among these treaties, and includes several notable provisions that may conflict with existing laws in many jurisdictions. Scholars and commentators are just beginning to weigh in, and now that the final text has been released, expect to see extensive debate on its implications.

One aspect of ACTA that makes it exceptional is that it was negotiated outside the framework of existing and accepted international intellectual property protocols, notably WIPO and the WTO’s 1994 TRIPS agreement. Initially, the United States, the European Union, Switzerland, and Japan announced that they would begin negotiating what would become ACTA, and were soon joined by a number of other countries. The parties clearly acknowledge and recognize the role of such international protocols and existing intellectual property agreements – yet conducting their negotiations outside of traditional bodies such as WIPO and TRIPS means that they need not listen to the views or voices of anyone outside of their negotiating circle.

ACTA’s stated objective is to strengthen existing intellectual property enforcement. The text of the final draft reveals a strong slant in favor of IP rights holders, which is not unexpected in view of the countries invited to participate. With provisions strengthening civil enforcement, enhancing damages, and increasing border vigilance of intellectual property infringement, ACTA clearly intends to tighten the global framework for protecting the rights of IP owners.

One example of this is an entire section entitled “Criminal Enforcement” which explicitly mandates that parties provide for criminal penalties for intellectual property rights violations. While criminal liability already exists in many countries, one persistent problem is uneven and inconsistent international enforcement. ACTA appears to elevate priority for criminal enforcement of intellectual property rights violations with some broad and sweeping provisions.

One such provision explicitly requires parties to provide criminal penalties and procedures for willful trademark counterfeiting or copyright or related rights piracy on a commercial scale – which means, broadly, acts carried out as commercial activities for direct or indirect economic or commercial advantage.  Other specific examples of where criminal procedures and penalties apply include willful importation and domestic use of labels or packaging using an unauthorized trademark, and unauthorized copying of cinematographic works from a performance in a movie theater. Penalties are specifically meant to include imprisonment and heavy fines.

The language of ACTA also invites questions of whether information privacy is being adequately considered. For example, ACTA includes an entire section acknowledging how quickly and easily intellectual property rights infringement can occur in the digital age. The agreement’s section on Enforcement in the Digital Environment empowers parties to order an online service provider to disclose information sufficient to identify a subscriber whose account was allegedly used for infringement. ACTA also includes detail on how parties should cooperate internationally, encouraging cross-border information sharing and coordination of criminal and border enforcement of violations. Yet another issue with ACTA is the mechanism for domestic ratification – in the United States, for example, it is possible that ACTA may be ratified by executive action rather than by the legislature, circumventing any public debate about the implications of its provisions.

ACTA seeks to enhance protections available to IP rights holders to address increasing counterfeiting and piracy around the globe, noting that effective enforcement of intellectual property rights is critical to sustaining and promoting global economic growth. It remains to be determined, however, whether the real effect of ACTA will simply be to enable an erosion of privacy protections and an increase in criminal penalties without any actual impact on reducing global IP violations.