The Renegotiation of NAFTA and impact on Canadian Intellectual Property law

The US gave notice to Canada and Mexico on May 18, 2017 that it wished to renegotiate NAFTA including the provisions on intellectual property rights. ξA summary of the US Objectives can be found in a blog article I wrote on Red Points. ξThe US Objectives ξwould strengthen intellectual property protection and require Canada and Mexico to change its law. ξThe two main US Objectives that would impact intellectual property law in Canada are discussed below. ξEnsuring provisions governing intellectual property rights reflect a standard of protection similar to that found in U.S. law

The US Objectives propose that provisions governing intellectual property rights of the other member states be similar to those found in the U.S. law. ξThis brings a higher onus of intellectual property protection and exceeds the current NAFTA regime of only requiring ξnational treatment. ξξ

These include the notice and takedown procedure for online infringement and extending the term of copyright for Canada to life plus 70 years from the current international standard of life plus 50 years. ξ

While Canada would likely not have an issue with many of the US Objectives regarding intellectual property, Canada may have a dispute with adopting the US äóìnotice and takedownäó system for copyright enforcement which is more aggressive than Canadaäó»s current äóìnotice and noticeäó system. Œæ

A copyright infringement online can be reported pursuant to the Digital Millennium Copyright Act (äóìDMCAäó) in the US or through the Notice and Notice procedure in Canada. ŒæThe DMCA incorporated two 1996 WIPO treaties and was passed in 1998. ŒæIt addresses copyright infringement online through Title II, itäó»s Online Copyright Infringement Liability Limitation Act. Œæ

A copyright owner can provide notice to an internet service provider (äóìISPäó) of a copyright violation who then must forward it to the website owner. ŒæThe website owner must take the infringing work down. ŒæŒæThe online service has a safe harbour and are not liable for the infringement provided they comply with the DMCA notice and takedown regime. ŒæThe website owner in turn may provide a counter-notice and which point, the entity complaining of the infringement must bring a lawsuit within a certain period of time. ŒæOtherwise, the infringing content is put back up. Œæ

In Canada, the notice and notice protections for ISPs are set forth in section 41,25, 41, 26 and 41,27(3) of the Copyright Modernization Act. ξIn Canada, while the ISPs are legally required to pass notices of alleged infringement to the website owner, there is no requirement to actually take the work down as in the US. ξA copyright owner needs a court order to learn the identity of the website owner. ξIt can then pursue legal proceedings for copyright infringement. ξThe US will undoubtedly want Canada to change its current system to be more in line with the US which will only serves to bring greater protection to intellectual property owners and strengthen the process even more. ξ

However, in general, Canadaäó»s copyright term of protection is shorter than the US copyright term of life plus 70 years. ŒæFurther, the USäó»s notice and takedown regime provides stronger protection than Canadaäó»s notice and notice system. ŒæThere is no doubt that if Canada were to bring some aspects of their intellectual property laws more in line with the US, it would bringer stronger intellectual protection but certainly deviates from NAFTAäó»s current obligations of providing national treatment. ŒæŒæ

Provide strong standards enforcement of intellectual property rights, including by requiring accessible, expeditious, and effective civil, administrative, and criminal enforcement mechanisms. ξ

 

The US Objectives if implemented would result in increased criminal penalties and damage awards. ŒæŒæThe criminal penalties provisions would require Canada to change digital lock rules which covers rights management information and technological protection measures. ŒæThe criminal penalties provision would require a change in Canadaäó»s current law that protects Canadians from statutory or significant damages for circumventions for private purposes (such as circumventing the digital locks on private DVD collections). ŒæŒæŒæIt is also argued that such increased protection for technological protection or digital locks could conflict with some data that is in the public domain. ŒæThe NAFTA negotiations pursuit of further protections for IP without providing exceptions may prevent access to data when itäó»s appropriate. Œæ

Canada already prohibits devices and software to break technological protection measures but adding significant penalties would become problematic. ξ

While some of the proposed changes to NAFTA regarding intellectual property provisions are definitely positive and would create a stronger intellectual property regime internationally, others such as those pertaining to criminal sanctions and damages for circumventing digital locks would be onerous.