Info Justice | December 19, 2011
Consistency of Korea-US free trade agreement copyright provisions with US law
By Sean Flynn
Heesob Nam recently requested me to give an opinion on whether the intellectual property provisions of the Korea-US Free Trade Agreement [KORUS] are fully consistent with U.S. law.
The U.S. Congress did not change its intellectual property law in its KORUS implementing legislation. Like other free trade agreements passed by Congress, the approving legislation declares: “No provision of the [KORUS] Agreement, nor the application of any such provision to any person or circumstance, which is inconsistent with any law of the United States shall have effect.” 
This declaration by the Congress does not alter the U.S. obligations to comply with the agreement. As an international agreement made by the President and approved by Congressional legislation, KORUS is binding international law and any inconsistency in U.S. law may be subject to international remedies.
There are at least three major inconsistencies between KORUS and U.S. copyright legislation.
1. Temporary Copies
Article 18.4:1 of KORUS extends copyright protection to “temporary” copies in a manner that appears inconsistent with the scope of U.S. copyright law as interpreted by Federal courts. KORUS states:
Each Party shall provide that authors, performers, and producers of phonograms have the right to authorize or prohibit all reproductions of their works, performances, and phonograms, in any manner or form, permanent or temporary (including temporary storage in electronic form).
This provision is identical to language included in the leaked draft of the U.S. proposal in the Trans-Pacific Partnership agreement (TPP). Margot Kaminski, Brook Baker, Jimmy Koo and I explained with respect to the parallel TPP language:
Section § 106(1) of the Copyright Act does not prohibit reproduction “in any form.” It rather prohibits reproduction of the “copyrighted works in copies or phonorecords.”  Nor does U.S. law include an extension to “temporary storage in electronic form.” U.S. law requires that a copy be “fixed,” meaning “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”  The DMCA recognizes a safe harbor for “system caching,”  which is not included in the U.S. TPP proposal.
The distinctions are particularly important for enforcement of copyright on the internet. Lower courts in the U.S. have, for example, held that copyright does not extend to buffer copies on the internet. 
2. DMCA Anti-Circumvention
The KORUS anti-circumvention provisions are not fully consistent with the Digital Millennium Copyright Act (DMCA). Whereas DMCA § 1201(a)(2)(C) prohibits products “marketed” for use in circumventing a technological protection measure,  KORUS Article 18.4:7 extends to products that are “promoted, advertised” for this purpose.
DMCA § 1201(a)(2)(A) extends anti-circumvention liability only to products designed “for the purpose of circumventing,” while the KORUS Article 18.4 extends to any product “for the purpose of enabling or facilitating the circumvention,” a potentially broader standard.  This also goes beyond ACTA Art. 27.6(a)(ii). 
3. Counterfeit labeling of copyrighted items
The KORUS duty to provide criminal penalties for counterfeit labels is broader than existing U.S. law. Article 18.10:28 of the FTA requires “criminal procedures and penalties” for the trafficking in counterfeit labels for “a phonogram, a copy of a computer program or other literary work, a copy of a motion picture or other audiovisual work, or documentation or packaging for such items.” U.S. law has a similar requirement, but only applies to copyrighted versions of these items. The distinction is important in U.S. law because the presence of copyright is often a key jurisdictional element for application of federal law. 
 United States-Korea Free Trade Agreement Implementation Act, S. 1642, 112th Cong. § 102(a)(1) (2011).
 Copyright Act, 17 U.S.C. § 101 (defining that “[c]opies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.”).
 Digital Millennium Copyright Act, 17 U.S.C. § 512(b) (1998).
 See Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (holding that buffer copies are saved for ‘more than transitory duration’ and are therefore insufficient for a work to be ‘fixed’).
 17 U.S.C. § 1201(a)(2)(C) (prohibiting product, service, device, component, or part thereof that “is marketed by that person or another acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.”).
 See note 2.
 ACTA Art. 27.6(a)(ii) (prohibiting “the offering to the public by marketing of a device or product, including computer programs, or a service, as a means of circumventing an effective technological measure.”).
 Department of Justice, Computer Crime and Intellectual Property Section Criminal Division, PROSECUTING INTELLECTUAL PROPERTY CRIMES, Third Edition, September 2006, 236-7 (explaining the presence of copyright as necessary to establish federal jurisdiction over the offense in many cases).