[A2k] European ICT sector's concerns about ACTA: ECIS position paper

Malini Aisola malini.aisola at keionline.org
Fri Sep 17 17:38:04 EDT 2010

The European Committee for Interoperable Systems (ECIS) is an
international non-profit association that endeavours to promote a
favourable environment for interoperable ICT solutions. Its members
include both large and small companies in the ICT sector such as IBM,
Nokia, Oracle, Opera, and Red Hat.

See below ECIS' position paper on ACTA


ECIS' concerns on the impact of the Anti-Counterfeiting Trade Agreement

We understand that negotiators of ACTA are in the final stage of the
negotiation process before concluding the agreement. The European
Committee for Interoperable Systems ("ECIS"), which has been defending
the interests of its information technology sector members in policy
debates affecting intellectual property, competition and
interoperability for over twenty years, is concerned about three issues
raised by the most recently accessible draft Agreement dated as
of 25 August 2010:

1. Interoperability

First, ECIS is deeply concerned about the impact of ACTA on an issue
that was the subject of intense controversy in the legislative
discussions on Directive 2001/29/EC, the "Information Society Copyright
Directive." That Directive in its originally-proposed form would have
facilitated the use of Technological Protective Measures ("TPMs") to
prevent lawful reverse engineering engaged in by software developers to
ensure software programs can interoperate with each other.

As many software developers rely on lawful reverse engineering to
achieve interoperability, the proposal's language was heavily
criticized. Ultimately, a carefully-crafted compromise was reached among
all interested parties (embodied in Recital 50 of the Information
Society Copyright Directive) ensuring that it remains lawful to
circumvent TPMs applied to computer programs if necessary to facilitate
lawful reverse engineering.

It now appears that ACTA could overturn that hard-fought compromise.
ECIS would like to engage in a more detailed discussion with you on this
matter, but the reasoning behind its concern can be summarised as

* It is often necessary to reverse engineer computer programs in order
to ascertain the information necessary to achieve interoperability.
Because such reverse engineering requires acts of reproduction and
translation that are among the exclusive rights of copyright owners,
Articles 5 and 6 of Directive 91/250/EEC of 14 May 1991 on the legal
protection of computer programs (today restated as Directive 2009/24/EC
of 23 April 2009) (the "Software Copyright Directive") provide for
exceptions to such rights. Those exceptions ensure the lawfulness of
reverse engineering, and hence prevent powerful players from hindering
competition and innovation. The European Parliament played a leading
role in establishing these exceptions, having adopted them on its first
reading of the directive.

*It is possible, however, for rightholders to use TPMs to "lock"
computer programs in various ways that prevent reverse engineering. Thus
it may be necessary to circumvent such TPMs in order to be able to
undertake lawful reverse engineering. Therefore, in order not to
diminish the effectiveness of the Directive's copyright exceptions, the
provision in the Software Copyright Directive addressing circumvention
of TPMs was made subject to those exceptions: Article 7 of the Directive
states that its anti-circumvention provision is "without prejudice" to
the reverse engineering exceptions.

* When the Information Society Copyright Directive was proposed some six
years later, its original text did not make clear whether the Software
Copyright Directive's anticircumvention regime or its own
anti-circumvention provision (in its Article 6) applied to TPMs used in
connection with computer programs. Had the latter applied, it would have
prohibited circumvention of such measures necessary to facilitate lawful
reverse engineering. This uncertainty was ultimately addressed by the
inclusion of Recital 50 of the Information Society Copyright Directive,
which was added after an intense battle to ensure that reverse
engineering necessary for interoperability was not prevented. Thus,
Article 6 of the Information Society Copyright Directive on
circumvention of TPMs does not apply to circumvention of TPMs used in
connection with computer programs.
                "Such a harmonised legal protection [i.e., the legal
                protection of technological measures] does not affect
                the specific provisions on protection provided for by
                Directive 91/250/EEC. In particular, it should not apply
                to the protection of technological measures used in
                connection with computer programs, which is exclusively
                addressed in that Directive. It should neither inhibit
                nor prevent the development or use of any means of
                circumventing a technological measure that is necessary
                to enable acts to be undertaken in accordance with the
                terms of Article 5 (3) or Article 6 of Directive
                91/250/EEC. Articles 5 and 6 of that Directive
                exclusively determine exceptions to the exclusive rights
                applicable to computer programs."

In short, because of the special nature of computer programs, the
European Union retains a special regime governing circumvention of TPMs
used in connection with computer programs, which is different from the
regime provided by Article 6 of the Information Society Copyright
Directive and which clearly does not prohibit circumvention of TPMs
preventing reverse engineering.

* Now we come to ACTA. Article 2.18 (6) of the document reportedly
representing the draft ACTA text as of 25 August 2010 would require ACTA
members to adopt prohibitions on TPM circumvention-related acts that are
rather similar to those contained in Article 6 of the Information
Society Copyright Directive. Nothing in this draft ACTA paragraph
indicates that such provisions would not apply to computer programs, and
were they to do so, reverse engineering (and hence interoperability)
could be prevented by TPMs and it would be unlawful to circumvent such
TPMS to enable reverse engineering.

* The EU has proposed that ACTA members would have to apply such
anticircumvention provisions only "in appropriate cases" or only "to the
extent provided by [an ACTA member's] law." These caveats are welcome,
but ECIS has serious concerns about their efficacy in ensuring that the
EU's special anti-circumvention regime for computer programs could
remain intact. First, these proposals are bracketed in the available
ACTA draft, and it is unclear whether such EU proposals would be
included in any final ACTA. Second, even if they were to be included,
ECIS does not believe they provide sufficient certainty that the
existing EU regime on circumvention related to computer programs could
remain intact. In light of the critical importance of this regime to
fundamental EU policies related to interoperability, competition and
innovation, the ACTA text should leave no doubt on this score.

The European Commission has repeatedly confirmed that ACTA will respect
the acquis communautaire, and will not require the European Union to
introduce new legislation. To meet this promise, the Commission should
ensure that explicit language along the lines of that contained in
Recital 50 of the Information Society Copyright Directive is included in

2. Scope

Second, while ECIS believes that governments should indeed take the
appropriate action to prevent counterfeiting, the Commission appears to
be demanding that ACTA covers far more than counterfeiting, in
particular by insisting on inclusion of patents. ECIS urges the
European Commission to ensure that ACTA only applies to acts of
counterfeiting and piracy, and that it does not apply to all
intellectual property rights.

ECIS is especially concerned with respect to criminalising patent
infringement, as this would have especially serious implications for
software development. Although in Europe patents are not permitted for
software “as such,” many patents do exist on software technologies,
though their validity can often be questionable. European software
developers may know of these patents and infringe them in good faith
believing that they are invalid, but cannot be certain on this score.
The decision on validity rests with a patent office or a court. However,
if the consequence of potentially infringing such patents is prison, the
developers will be dissuaded from taking the risk and proceeding with
the development work. The impact would be particularly grave in the area
of software interoperability, where the lack of a clear interoperability
exception to patents has enabled patent holders to threaten developers
of interoperable products with lawsuits. Imposing the threat of criminal
sanctions on such developers would aggravate the harm even further. The
consequences would be potentially even more drastic for open source
developers in Europe who are contributing to a community development
project in their individual capacity. Fear of a criminal conviction
could discourage them from making valuable contributions that would
otherwise benefit users, the open source community, and ultimately
European economic competitiveness in the software sector. 

Criminalising such ordinary product development will threaten the
balance in the patent system by encouraging the pursuit and enforcement
of weak patent claims. And if the risk of infringing a patent with the
ultimate aim of challenging the validity of a patent is so high,
innovation will seriously suffer. This would be an unfortunate result
for a trade agreement aiming to address counterfeiting and piracy, and
intended to foster creativity and innovation.

3. Transparency

Finally, ECIS underscores the importance of transparency in negotiations
on a trade agreement with such a significant impact on EU citizens and
industry. The European Commission and Council should ensure more
transparency in the negotiations on ACTA. The Treaty on the Functioning
of the European Union ("TFEU") recognises that "in order to promote good
governance and ensure the participation of civil society, the Union
institutions, bodies, offices and agencies shall conduct their work as
openly as possible." We note that negotiations were not conducted in
conformity with these standards of transparency to keep the public
informed and to allow for input from businesses and other stakeholders
about enforcement practices that will affect them. On that basis, ECIS
calls for the European Commission and the Council of the European Union
to ensure that all stakeholders' views are heard and considered in the
negotiations process, particularly at this critical stage of the

Malini Aisola
Knowledge Ecology International
1621 Connecticut Avenue NW, Suite 500, Washington DC 20009
malini.aisola at keionline.org|Tel: +1.202.332.2670|Fax: +1.202.332.2673

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