Law changes required before NZ ratifies ACTA

UPDATE 3.45pm: Tim Groser's office clarifies planned amendments - librarians can rest easy

For New Zealand to ratify the Anti-Counterfeiting Trade Agreement (ACTA), it will need to make “minor” changes to copyright and trademark law, says trade minister Tim Groser.

The agreement is scheduled to be signed in Tokyo on Saturday, by representatives of Japan, Australia, Canada, the European Union, South Korea, Mexico, Morocco, New Zealand, Singapore and Switzerland. However, ratification, required for full participation in the treaty, is a step beyond signing. Before that happens, necessary changes to domestic law “would be subject to the usual ratification process, including public consultation and scrutiny by Parliament”, Groser says.

The minister’s office has sent Computerworld a list of amendments that will be required for ratification. These include powers for border agencies to prevent export as well as import of goods allegedly contravening copyright and will allow Customs officers to stop a shipment on suspicion of a breach, even in the absence of any formal notification from the rights owner of an alleged contravention.

One item under the copyright heading is puzzling. NZ’s copyright law will be changed, it says, to “extend the current prohibition of the use of TPM [technological protection measure] circumvention devices to cover a slightly broader range of devices.”

A technological protection measure is any kind of technology that controls what can be done with a recorded or transmitted work, for example to prevent copying or free playing of paid content. However there is no current “prohibition of the use of TPM circumvention devices” in New Zealand law.

The Copyright Act prohibits sale or distribution of TPM circumvention devices, but deliberately does not forbid their use. This is to provide an escape route for someone who needs to circumvent the protection to do something permitted under New Zealand law; for example to use a portion of a work in research or review, or to use a work that is not protected by copyright but which is in a collection of works clumsily protected by an overarching TPM.

Section 226E of the Copyright Act spells out procedures for using TPM circumvention devices legitimately.

Canadian academic Michael Geist, a leading commentator on ACTA, in a Computerworld interview last year, remarked how New Zealand law, particularly on the TPM issue, has “carved out a ‘made-in-NZ’ approach that is frequently cited as a model for other countries considering similar legislation.”

Some TPMs rely on digital information recorded on the medium, which can be masked by a “device” as simple as a black felt-tip pen. Commentators have facetiously asked whether this will make it illegal for stationery shops to sell such a pen if they suspect that it may be used for circumvention.

The full list of necessary amendments, as supplied by Groser’s office is below.

The Copyright Act 1994
• Extend current border protection measures to cover exports in respect of goods that infringe copyright (“infringing goods”).
• Extend the delegated power given to Customs to detain shipments of infringing goods to provide for ex-officio action (i.e. to detain infringing goods without a notice from right holders).
• Extend the current protection given to technological protection measures (TPMs) and copyright management information (CMI) to performances.
• Prohibit non-commercial dealing in works and performances subject to CMI interference.
• Extend the current prohibition of the use of TPM circumvention devices to cover a slightly broader range of devices.

The Trade Marks Act 2002
• Extend current border protection measures to cover exports in respect of goods that infringe a registered trade mark (“infringing goods”).
• Extend the delegated power given to Customs to detain shipments of infringing goods to provide for ex-officio action (i.e. to detain infringing goods without a notice from right holders).
• Provision of a specific offence for the unauthorised importation of counterfeit labels and packaging for the purpose of creating counterfeit goods.
• Provision for the courts to have the authority to order the delivery up and disposal of counterfeit labels and packaging.

UPDATE 3.45pm

Tim Groser’s office has clarified the nature of the planned amendment to the TPM section of the Copyright Act – Section 226. The only contemplated change is to one word in the definition of “circumvention device”. This currently reads: “A device or means that

(a) is primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of a technological protection measure; and

(b) has only limited commercially significant application except for its use in circumventing a technological protection measure.”

The change will substitute “or” for the “and” linking the two sub-clauses, so the definition will apply to a wider range of devices

The clauses on what one is allowed or forbidden to do with a circumvention device will remain unchanged. So librarians and other experts who may be called on to use one to facilitate a “permitted act” can rest easy.