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More on Canada's new counterfeiting bill: ACTA 'through the back door'?

Photo: greensefa/Flickr

This month, the Council of Canadians put out a media release on Harper's new anti-counterfeiting legislation (Bill C-56), asking why Canada would kowtow to the U.S. or EU on this issue considering how much global opposition there is to the Anti-Counterfeiting Trade Agreement. Only one of the 11 countries to sign ACTA has ratified (Japan) and it was declared dead last summer when the European Parliament voted against it.

"Is Bill C-56 not simply a way to support ACTA through the back door?" asked NDP MP Charmaine Borg in the House of Commons on March 4. Industry Minister Christian Paradis replied that the legislation is necessary to keep Canadians safe from counterfeit goods crossing the border, and that the legislation needed modernizing. But is it necessary or is it excessive? Reports over the past weeks explain the proposed copyright enforcement changes in more detail.

New government powers and criminal offenses

Michael Geist, a law professor at the University of Ottawa specializing in Internet and E-commerce law, writes in The Tyee that concerns about C-56 fall into two categories: substance and ACTA implementation.

"The substantive concerns start with the decision to grant customs officials broad new powers without court oversight," he says. "Under the bill, customs officials are required to assess whether goods entering or exiting the country infringe any copyright or trademark rights."

But as Geist explains, "These determinations are complex -- courts often struggle with the issue -- yet the bill envisions granting these powers to customs officials with no review by a judge and no limits on the types of goods involved. Should a customs official determine that there is infringement and that no exception applies, the goods may be seized and prevented from entering the country."

There are already provisions in Canada's Trade-marks Act giving rights holders (ex. entertainment, pharmaceutical, food companies, etc) the ability to seek a court order to stop a cross-border shipment, but according to Gary T. Daniel and Tariq Remtulla with Blake Cassels & Graydon LLP, these "have been of little practical benefit because, in most cases, by the time the trade-mark owner had sufficient information regarding the shipment of counterfeit goods to Canada, it was too late to pursue these remedies as the goods had already entered the Canadian market or been exported from Canada."

Loosely, the new process will allow rights owners to file a "request for assistance" from the Canada Border Service Agency, which asks border guards to seize suspected trade-mark- or copyright-infringing goods, share a sample with the firm, and give the rights owner about the importation without identifying the person involved. The rights owner then has maximum ten days to begin legal proceedings against the person or people involved with the cross-border shipment.

Bill C-56 will also create new criminal offences and civil remedies (lawsuits) under the Copyright Act and Trade-marks Act, for example for possessing an infringing good for the purpose of resale, rental or distribution for trade or exhibition, or for importing goods bearing trade-marks without the consent of the rights owner.

Robert D. McDonald with Fraser Milner Casgrain LLP explains one significant change in the counterfeiting legislation to the definition of a trade-mark. Currently Canadian legislation describes it as:

a) mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
b) certification mark,
c) distinguishing guise, or
d) proposed trade‐mark.

Under the new definition, that first part changes to "A sign or combination of signs that is used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others," where "sign" is expanded to mean, "a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three‐dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign."

"This amendment dramatically changes the scope of what can be registered as a trade‐mark and includes many items which were previously considered 'non‐traditional'," writes McDonald. "This provision will provide trade‐mark owners a greater ability to protect and enforce their brand, including the right to register distinguishing features of their brand identity that used to be considered incapable of registration."

A sound? A scent? Enforcing these trade-markable properties will be the responsibility of CBSA officers who also enforce Canada's customs and security measures at the border. Beyond the problem of competence (no offense to CBSA officers, whose competence at what they do now is not questioned here), there's the bigger question of whether it is the government's responsibility to police for the private sector on mere suspicion of copyright or trade-mark infringement.

"While most would agree that officials should have sufficient tools to protect public health and safety," writes Geist, again in The Tyee, "the bill does not confine the broad new powers to those special cases. For example, the government could have limited seizures without court oversight to instances where officials reasonably believe there is a public safety risk, but the bill treats everything from counterfeit pharmaceuticals to a suspect painting in the same manner."

So on the surface, Bill C-56 does look excessive and, considering how few countries have agreed to these measures in ACTA, unnecessary.

Thorough assessment of C-56

The Council of Canadians is demanding a thorough parliamentary and public review of the Harper government's new anti-counterfeiting legislation to make sure it is necessary and proportionate to the government's stated objectives of protecting Canadians from counterfeit products. The organization also joins with international trade justice activists and health advocates in demanding that intellectual property rights be taken off the CETA and TPP negotiating tables.

OpenMedia.ca has re-launched its anti-ACTA petition in light of Bill C-56, which appears to introduce much of the unpopular multinational deal through the back door, just to appease U.S. and EU lawmakers. You can add your voice to that opposition by clicking here. You'll be taken to OpenMedia's No Internet Lockdown petition, which has been signed already by more than 70,000 people.

Photo: greensefa/Flickr

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