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By Michael A. Carrier

The Anti-Counterfeiting Trade Agreement (ACTA) has caused concern for many reasons, such as secret negotiations and controversial provisions.  Today, more than 70 law professors sent a letter to President Obama asking that he “direct the [U.S. Trade Representative] to halt its public endorsement of ACTA and subject the text to a meaningful participation process that can influence the shape of the agreement going forward.”

Despite this beneficial attention, one clause has slipped under the radar.  Article 2.14 of ACTA would require participating nations to “ensure that criminal liability for aiding and abetting is available.”

This liability would apply to parties that assist others in engaging in “willful . . . copyright . . . piracy on a commercial scale.”  Such scale includes “commercial activities for direct or indirect economic or commercial advantage.”  These terms are not defined in the agreement.  As a result, it would appear that any activity that would give an “indirect” commercial advantage (including the downloading of a single copyrighted song) could lead to criminal liability.

While such a consequence would appear severe, it is not even the most concerning part of Article 2.14.  That distinction is reserved for the “aiding and abetting” basis for liability.  Any party that plays a role in assisting infringement could be liable for criminal liability.  The identity of such parties is worrisome:  Personal computer manufacturers.  Electronic device makers.  Search engine operators.  Each of these entities could play a role, however indirect, in contributing to copyright infringement.

Although copyright’s secondary liability law is not a model of clarity, courts have sought to ground its elements in balanced policies.  Judicial tests have asked if devices have noninfringing uses (Sony).  If the party has knowledge and materially contributed to the activity (contributory infringement).  If it has a financial interest and the right to control (vicarious liability).  If it has an intent to induce infringement (Grokster).

Aiding-and-abetting liability lacks such nuance.  It is borrowed from criminal law.  And it is used to punish those who assisted in the crime.  The getaway driver.  The fraudulent check presenter.  The cocaine distributor.  In the criminal law arena, such liability reaches broadly to deter true criminal conduct.

In the context of secondary copyright liability, in contrast, such a standard is not appropriate.  Not when copyright is subject to competing public policies.  Not when technologies could be held criminally liable for allowing search, performance, or retrieval.  Not when these monumentally significant issues—which would dramatically expand U.S. liability—were never even debated.

In 2004, Congress considered adding “aiding and abetting” liability to copyright law.  Its attempt, the Induce Act, failed.  The secretive ACTA is not an appropriate vehicle to circumvent this failure and dramatically expand secondary liability.

Michael A. Carrier is a Professor of Law at Rutgers Law School-Camden who teaches and writes in the areas of antitrust, intellectual property, and property law. He is the author of Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law and editor of the forthcoming volume, Critical Concepts in Intellectual Property Law: Competition.

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Michael A. Carrier is a Professor of Law at Rutgers University School of Law, Camden. He has published and spoken widely on the antitrust and intellectual property laws, and is one of the leading authorities in the country on the intersection of these laws. His new book, Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law, looks at how innovation has been threatened by the United States legal system and seeks to reverse the trend, offering ten revolutionary proposals, from pharmaceuticals to peer-to-peer software, to help foster innovation. In the post below Carrier reports on today’s decision in the Cipro case.  Read Carrier’s previous post here.

A tidal wave of high drug prices has recently crashed across the U.S. economy. One of the primary culprits: agreements by which brand-name drug manufacturers pay generic firms to stay off the market. This issue has been raging in the halls of Congress, the courts, and the government agencies.

And now, perhaps, the first full appellate court. This morning, a panel of three Second Circuit judges upheld a settlement involving the antibiotic ciprofloxacin hydrochloride (Cipro), the blockbuster drug used to treat bacterial illnesses. In a nutshell, Bayer paid firms interested in making generic versions of Cipro $398 million in return for the generics agreeing not to enter the market during the term of Bayer’s patent.

This type of settlement, which is becoming more common by the day, includes a “reverse payment.” Such a payment differs from typical licensing payments that flow from challengers to patentees by preventing competition and by paying the generic more than it could have earned by entering the market. This is possible because, by delaying generic entry, the brand firm dramatically increases its monopoly profits and uses a portion of these profits to lavish windfalls on generics.

Agreements like these have been blessed by most courts in recent years. Courts have explained that the agreements reduce costs and increase innovation. They have referred to settlements as “natural by-products” of the Hatch-Waxman Act (the 1984 law designed to foster generic competition and drug innovation). And they have pointed to patents’ presumption of validity in demonstrating the agreements’ reasonableness. In fact, the Second Circuit had previously made these very arguments in upholding an agreement involving the breast-cancer drug Tamoxifen.

The court today relied on the Tamoxifen case in upholding the Cipro settlement. But the most interesting aspect of the decision was the panel’s recommendation that “because of the ‘exceptional importance’ of the antitrust implications of reverse exclusionary payment settlements of patent infringement suits, we invite plaintiffs-appellants to petition for rehearing in banc.” The panel could not overturn its earlier decision absent an intervening decision by the U.S. Supreme Court or an in banc proceeding involving the entire Second Circuit. But it offered four reasons for rehearing:
(1) “The United States has itself urged us to repudiate Tamoxifen” (in a brief filed by the DOJ by invitation last summer);
(2) “There is evidence that the practice of entering into reverse exclusionary payment settlements has increased since we decided Tamoxifen”;
(3) The principal drafters of the Hatch-Waxman Act have criticized settlements after Tamoxifen was decided; and
(4) “Tamoxifen relied on an unambiguous mischaracterization of the Hat