Category: Australia

Disney and Canadian DJ Spar Over U.S. Mouse-Head Design Trademark

Check out my recent guest post on UK IP blog The IPKat on Disney’s trademark dispute with Canadian DJ and electronic musician Deadmau5 over a U.S. mouse-head design trademark application. It is available at: http://ipkitten.blogspot.com/2014/04/disney-and-canadian-dj-spar-over-us.html.

Don’t Be Scared of Havarti! Geographical Indication Issues Exporting Businesses Should Consider

Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.

So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.

Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.

Below are some GI issues businesses should consider when entering new foreign markets:

Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.

The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.

Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.

Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).

Below are GI registers for some of the world’s major GI jurisdictions.

Country

Governing Agency

National GI Register

Brazil

National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial -INPI)

INPI GI Registry

China

General Administration of Quality Supervision, Inspection and Quarantine

GI Product List

European Union

European Commission

Database of Origin and Registration (DOOR) Database

India

The Controller General of Patents, Designs, and Trade Marks

GI Registry

Russia

Federal Institute of Industrial Property

Register of Appellation of Origin of Goods

What’s the Takeaway? As the nature of GI protections are evolving in many of the world’s major markets such as the EU, businesses need to be even more aware of GIs and how they impact their operations in foreign markets. Due to the significant implications GIs have on the labeling and marketing of exported goods, businesses should work with qualified counsel to ensure that they comply with existing GI registrations to ultimately take advantage of foreign markets opportunities.

The TPP and Its Implications on Online Copyright Enforcement: Part II – Wikileaks

In November, Wikileaks leaked positions papers from the 18th round of Trans Pacific Partnership (TPP) negotiations concerning the intellectual property (IP) chapter of the TPP agreement. The papers including positions held by TTP member states (Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) on all forms of IP protections they will provide to IP rights owners and rights holders from their countries, and in many cases, from abroad under a final TPP agreement. Several IP news outlets have provided good analyses of the position papers including The IPKat and InfoJustice, among others.

These position papers also provide updated positions TPP member states have on online copyright enforcement, and particular, the positions each country has on adopting notice and takedown online copyright enforcement systems. In order to provide an update on my October article on the TPP’s implications on online copyright enforcement, the following are positions TPP member states have adopted in the position papers on crucial issues concerning online copyright enforcement under the TPP.

Exclusive Rights

Article QQ.G.1 of the position papers propose that authors of works and producers of phonographic works will have exclusive rights concerning the reproduction of their works in any manner, including any temporary or permanent electronic reproductions and storage. Canada, New Zealand and Vietnam object to such proposed protections. Additionally, Brunei Darussalam, Chile, Japan, New Zealand and Malaysia suggest in a footnote to the Article (“Article QQ.G.1 Footnote”) that exceptions and limitations to such exclusive rights should be established for:

Temporary acts of reproduction which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable (a) a lawful transmission in a network between third parties by an intermediary; or (b) a lawful use of a work; and which have no independent economic significance.

Alternatively, Vietnam proposes that “it shall be a matter for national legislation [of a TPP member state] to determine exceptions and limitations under which the right may be exercised.”

What’s Does This Mean? Providing authors of works and producers of phonographic works exclusive rights to all reproductions of their works, including electronic reproductions for any duration, gives such persons or entities greater direct ability to enforce rights in their works online because Internet Service Providers (ISPs) would ultimately have less discretion to reject notice complaints. As several commentators have mentioned[1], the text of Article QQ.G.1 effective eliminates fair use copyright exceptions provided under U.S. copyright law and the copyright laws of other TPP member states such as Japan.[2]  By doing so, TPP member state ISPs will have greater incentive to act on any copyright infringement on their networks, including alleged infringement notified through rights owner/holder notices, due to the likely elimination of the ISPs’ own fair use defense to contributory copyright infringement for hosting unauthorized reproductions of protected work. Although notice and takedown and notice and notice systems were adopted in TPP member states to provide ISPs safe harbor from such liability upon complying with submitted notices, many ISPs in practice do not act on such notices, by determining that their users’ unauthorized reproduction of copyright-protected works on their networks is fair use, and therefore permissible. Adoption of Article QQ.G.1 would effectively force ISPs to remove allegedly infringing content or face contributory liability for the copyright infringement of their users.

However, if TPP member states ultimately adopt the Article QQ.G.1 Footnote or Vietnam’s proposal, it is likely that they will be given the option to retain any fair use exceptions provided under their own national laws, potentially impacting the degree to which TPP member state ISPs will feel compelled to act on rights owners/holders notifications of alleged infringement.

ISP Liability

The TPP member states have divergent positions on the liability ISPs should be subject to for hosting content that infringes copyright-protected works. Article QQ.I.1 provides that the U.S., Australia, New Zealand, Peru and Singapore propose (while Malaysia and Vietnam oppose) that each TPP member state provide “legal incentives for [ISPs] to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Similarly, Canada proposes that each TPP member state “provide legal incentives for [ISPs] to comply, or remedies against [ISPs] who fail to comply, with any procedures established in each party’s law for: (a) effective notifications of claimed infringement; or (b) removing or disabling access to infringing material residing on its networks.”

What Does This Mean? The U.S. and Canada’s Article QQ.I.1 proposals likely leave mandating the adoption of notice and takedown systems in all TPP member states in doubt. The U.S. Article QQ.I.1 proposal provides the same ambiguous text as the February 2011 U.S. Draft IP Chapter, and the Canadian proposal goes so far as leaving the type of ISP legal incentive system each TPP member state should adopt up to its own discretion. As a result, both proposals would likely make the adoption of notice and takedown systems in TPP member states optional. For example, less forceful online enforcement systems, such as Canada’s notice and notice system provides legal incentives for ISPs to coordinate with copyright owners despite lacking the forceful effectiveness of notice and takedown systems currently available in other TPP member states such as U.S., Australia and Japan.

Despite the limitations of such proposals, mandating that TPP member states adopt some form of legal incentives for ISPs to enforce online copyright protections may likely compel TPP member states without any rights owner/holder notification systems, including Brunei Darussalam, Mexico and Vietnam, to adopt some form of rights owner/holder ISP notification system.

Notice and Takedown Procedures

The U.S., Australia, and Singapore propose in Annex to Article QQ.I.1.3(b)(ix) (while Canada, Malaysia and Mexico reject) adopting notice and takedown procedures as the “legal incentives” identified in Article QQ.I.1. These procedures closely resembles notice and takedown procedures provided under U.S., Australian, and Singaporean law. As a part of these procedures, copyright owners and/or rights holders whose works qualify for copyright protection in a TPP member state would have to submit a notice to an ISP that provides the following information in order to have the ISP examine and remove the infringing content in question:

    1. The identity, address, telephone number, and electronic mail address of the complaining party (or its authorized agent);
    2. Information reasonably sufficient to permit the ISP to identify and locate the material residing on a system or network controlled or operated by it or for it that is claimed to be infringing, or to be the subject of infringing activity, and that is to be removed or disabled;
    3. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) claimed to have been infringed;
    4. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law;
    5. A statement that the information in the notice is accurate;
    6. A statement with sufficient indicia of reliability that the complaining party is the (U.S. propose “holder”) (Australia and Singapore propose “owner”) of an exclusive right that is allegedly infringed, or is authorized to act on the owner’s behalf; and
    7. The signature of the person giving notice.

What Does This Mean? If a final TTP Agreement mandates that TPP member states adopt a notice and takedown system, implementing Annex to Article QQ.I.1.3(b)(ix) would effectively require TPP member states to adopt similar notice and takedown procedures provided under U.S., Australian, Japanese and Singaporean law. Yet, opposition from Canada, Malaysia and Mexico may make the adoption of such requirements more unlikely.

Additionally, as Australia and Singapore propose that the “owner” of the alleged infringed copyright work be the “complaining party” listed in a notice, it is unknown whether an adopted TPP notice and takedown system would allow licensees of copyright-protected works (the “holders”) to utilize notice and takedown procedures in TPP member states. Limiting such a system’s accessibility to copyright owners only may be overly burdensome for such owners, as it would force them to enforce protections in their works on behalf of their licensees.

What’s The Takeaway?

If the U.S.-backed proposals listed above are enacted in a final TPP Agreement, copyright owners and rights holders from TPP member states, and other countries, will qualify for greater online copyright enforcement protections in TPP member states. However, such proposals have multiple obstacles before being effectively implemented. Such proposals must be included in a final TPP agreement, fully implemented as legislation in each TPP member state, and effectively upheld in each TPP member state’s legal system. Time will tell whether such enhanced online copyright enforcement protections will be adopted in the final TPP Agreement and enacted in all TPP member states.


[1] See Sean Flynn, Margot Kaminski, Brook Baker, & Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property, American University Washington College of Law, Dec. 6, 2011, 13, available at http://infojustice.org/wp-content/uploads/2011/12/TPP-Analysis-12062011.pdf (Analysis of the TPP’s fair use exception elimination was based on the U.S.’ leaked IP chapter proposal from Feb. 2011).
[2] Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 140 (2d Cir. 2008). See Saiful Bakri Abdul Aziz, An Assessment of Fair Dealing in Malaysian Copyright Law in Comparison with the Limitation Provisions of Japanese Copyright Law – Within the Current Technology Background, 41 Hosei Riron J. of L. & Pol. 298, 300, 305 (2009), available at http://dspace.lib.niigata-u.ac.jp:8080/dspace/bitstream/10191/12583/1/41(3.4)_298-327.pdf.

The Trans Pacific Partnership and Its Implications on Online Copyright Enforcement

In recent months, representatives from the Trans Pacific Partnership Agreement (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) member states have been pushing to finalize a final TPP agreement.[1] A particularly contentious issue in these negotiations has been the intellectual property (IP) chapter of the TPP Agreement. A predominant proposed version, the U.S. Draft IP Chapter, has been controversial as it requires TPP member states to adopt IP standards that are in many cases is on par with those under U.S. law, and in some cases, beyond U.S. law and generally-accepted global IP protection standards in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).[2] As a result, several TPP member states have objected to U.S. Draft IP Chapter, thereby stalling progress towards a final TPP agreement.

Of particular importance in these debates is the online copyright enforcement protections procedures the TPP agreement will mandate for its member states. If enacted, the U.S. IP chapter would likely require TPP member states to adopt copyright enforcement measures that would allow copyright owners, rights holders, or agents thereof (collectively, “Authorized Party”) to directly petition Internet Service Providers (ISPs) to remove hosted infringing content. Article 16.3(a) of the U.S. Draft IP Chapter requires that TPP member states provide “legal incentives for [Internet] service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Although ambiguous, adopting such provisions would likely require TPP member states to maintain or enact a form of copyright protection protocols that would allow Authorized Parties to petition ISPs hosting or transmitting infringing content to remove such content.

The main question arising from these potential reforms is whether they would result in TPP member states adopting U.S.-like notice and takedown protocols, or less forceful ISP copyright enforcement measures. Notice and takedown systems generally provide ISPs a safe harbor from liability for hosting or transmitting infringing content if they remove infringing content they host or transmit upon receipt notice from an Authorized Party. In contrast, other TPP member states do not provide copyright owners such a level of protections. Some of these states do not require that a ISP take down allegedly infringing content upon receipt of notice from an Authorized Party to qualify for safe harbors. Others require that Authorized Parties seek judicial copyright enforcement to combat online infringement, which is a more delayed and costly process.

Although not stated in the U.S. Draft IP Chapter, the U.S. may, as it has in previous U.S. free trade agreements (FTAs), negotiate that TPP member states adopt notice and takedown protocols in TPP side letters.[3] In previous U.S. FTAs, the U.S. has executed additional annexed agreements, known as “side letters,” where other countries agreed to adopt U.S.-like notice and takedown protocols. This has had varying degrees of success. Australia, Peru and Singapore, among others, have adopted notice and takedown protocols similar to those under the U.S.’ Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)) in FTA side letters with the U.S., while Chile rejected adopting such a system.

Similar mixed outcomes could result from the TPP as well. Brunei Darussalam, Mexico and Vietnam do not maintain any ISP copyright enforcement protocols short of judicial action. Further, a number of TPP member states including Canada, Chile and New Zealand maintain online copyright enforcement systems that arguably do not provide the same level of direct and expedient enforcement power or protections to Authorized Parties as notice and takedown systems. Lastly, some TPP member states such as Malaysia that do maintain notice and takedown protocols have called for establishing TPP agreement implementation exceptions for existing domestic legislation.[4] This would likely give TPP member states with weaker online copyright enforcement systems such as Canada, Chile and New Zealand the ability to maintain their less forceful online copyright enforcement systems, while still remaining parties to the TPP Agreement.[5]

Despite these limitations, the TPP’s potential adoption of notice and takedown protocols will ultimately impact the ability to which Authorized Parties can more quickly, cheaply and effectively enforce online copyright protections in the TPP member states. Adoption of notice and takedown protocols will enable Authorized Parties to more easily enforce online copyrights in TPP member states, while making such protocols optional would likely make such enforcement more difficult. Only time will tell whether the U.S. and other notice and takedown proponents will persuade other TPP member states to adopt notice and takedown protocols.

To understand how the TPP would impact individual TPP member state online copyright enforcement systems, the following are brief summaries of the TPP member states’ current online copyright enforcement systems. However, there are a few things to note:

  • Jurisdiction and National Treatment: In order for an Authorized Party to utilize a notice and takedown in a TPP member state, their content must generally qualify for national copyright protection in that TPP member state, and the particular ISP must be subject to the jurisdiction of that country. Further information about these preliminary issues can be found in my March 25, 2013 posting.
  • Enforcement System Legend: As mentioned, online copyright enforcement procedures vary amongst the TPP member states. Countries that maintain a notice and takedown protocols are identified below as a “Notice and Takedown,” while countries that maintain systems that simply require ISPs to notify infringers of their infringing acts without infringing content removal are listed as “Notice and Notice.” Countries that do not have means for Authorized Parties to directly enforce their copyright protections through ISP notices, and are instead forced to seek judicial action are referred to as “Judicial System.”

TPP Member State Online Copyright Enforcement Systems

United States
Enforcement System Notice and Takedown
Overview and Notes The U.S. notice and takedown protocols have been implemented in FTAs with Bahrain, Dominican Republic, Morocco, Oman, Peru, Singapore and South Korea.
Governing Legislation
Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))
Notice Requirements

  1. A physical or electronic signature of a person authorized to act on behalf of the content owner alleging infringement;
  2. Identification of the copyrighted work(s) claimed to have been infringed;
  3. Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);
  4. Information reasonably sufficient to permit the ISP to contact the copyright owner (i.e. address, telephone number, e-mail, etc.);
  5. A statement that the copyright owner has a good faith belief that the use of their content is not authorized by the copyright owner; and
  6. A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner of an exclusive right that is allegedly infringed.
Australia
Enforcement System Notice and Takedown
Overview and Notes Australia adopted notice and takedown protocols based on a side letter annexed in the U.S-Australia FTA.
Governing Legislation
Regulation 20(I-J), 1969 Copyright Regulations
, Schedule 10 (Part 1), 1969 Copyright Regulations
Notice Requirements

  1. The statement: “I, the person whose name is stated below, issue this notification for the purposes of condition 3 of item 4 of the table in subsection 116AH(1) of the Copyright Act 1968 and regulation 20(I) of the Copyright Regulations 1969.”
  2. The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7 below], being copyright material residing on your system or network.”
  3. (If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;
  4. (If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;
  5. (If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;
  6. The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and
  7. An attached schedule to the notice including a description of the copyright material and the location of the infringing content.
Brunei Darussalam
Enforcement System Judicial System
Overview and Notes Brunei does not currently maintain any legal means for Authorized Parties to directly petition ISPs to takedown infringing content. However, recent reports have indicated that Bruneian authorities are evaluating copyright reforms, which may include ISP notice and takedown protocols.[6]
Governing Legislation N/A
Notice Requirements N/A

Canada
Enforcement System Notice and Notice
Overview and Notes Although Canada considered adopting a notice and takedown protocols in 2006, they opted for a notice and notice system in 2012 in order to balance the interests of copyright owners and Internet users.[7]
Governing Legislation
Section 41.25-41.27, The Copyright Act
Notice Requirements

  1. Must be in writing;
  2. State the claimant’s name, address and other relevant communication information;
  3. Identify the work or other subject-matter to which the claimed infringement relates;
  4. State the claimant’s interest or right with respect to the copyright in the work or other subject-matter;
  5. Specify the location data for the electronic location to which the claimed infringement relates;
  6. Specify the infringement that is claimed;
  7. Specify the date and time of the commission of the claimed infringement; and
  8. Provide any other information or as provided by other regulations.

Chile
Enforcement System Judicial System (*notice and takedown variation)
Overview and Notes Chile rejected adopting notice and takedown protocols in both the U.S.-Chile FTA and proposed copyright reforms in 2010.[8] Instead, Chile requires that Authorized Parties submit an expedited judicial petition to evaluate alleged infringement and be granted a takedown.
Governing Legislation
Article 85R, Law No. 20.435 (amending Law No. 17.336 on Intellectual Property
Judicial Petition
Requirements

  1. The allegedly infringed rights, with a specific indication of the rights and the infringement procedure;
  2. The infringing material; and
  3. The location of the infringing material in the respective ISP network or system.

Japan
Enforcement System Notice and Takedown
Overview and Notes Japan’s notice and takedown protocols establishes that allegedly infringing content will be taken down seven days after notice is provided from the ISP to the alleged infringer.
Governing Legislation
Article 3(2)(ii), Act No. 137 0f 2001 (Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Senders)
Notice Requirements

  1. Information and location of the particular alleged infringement;
  2. Suggested enforcement actions to be taken by the ISP;
  3. The rights in the work that are allegedly being infringed;
  4. The reasoning why the copyright owner/rights holder believes that an infringement has taken place; and
  5. The copyright owner/rights holder’s contact information.

Malaysia
Enforcement System Notice and Takedown
Overview and Notes Malaysia enacted copyright reforms in 2010 that permit Authorized Parties to submit infringement notices to ISPs that will remove infringing content within 48 hours of notice to the alleged infringer from the ISP. However, The International Intellectual Property Alliance (IIPA) has criticized Malaysia’s notice and takedown protocols for not providing enough details about notice requirements and enforcement procedures.[9]
Governing Legislation
Article 43H, Copyright (Amendment) Act 2010
Notice Requirements As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.

Mexico
Enforcement System Judicial System
Overview and Notes Mexico has no legal procedures for Authorized Parties to remove infringing online content short of seeking judicial action. It is also important to note that Mexican telecommunications laws prohibit ISPs from disclosing their customers’ personal information.[10]
Governing Legislation N/A
Notice Requirements N/A

New Zealand
Enforcement System Notice and Takedown-Judicial System Mix (aka Three Strikes)
Overview After enacting notice and takedown protocols in 2008, New Zealand repealed them in February 2010. They were replaced with a Three Strikes System, requiring Authorized Parties to submit multiple notices to an ISP, and a takedown application to the New Zealand Copyright Tribunal in order to obtain the removal of infringing content. The Three Strike System subjects the Authorized Party to fees of NW$25.00 (US$20.00) per notice, and NZ$200.00 (US$208.00) per application.[11]
Governing Legislation
Section 92C and 92D, Copyright Act 1994
;
Section 4, Copyright (Infringing File Sharing) Regulations 2011
Notice Requirements

  1. Copyright owner’s name;
  2. Copyright owner’s contact details (e-mail address, telephone number, physical address, mailing address in New Zealand (if no physical address);
  3. (If a rights owner is acting as an agent for the copyright owner) Evidence of the rights owner’s authority to act as agent for the copyright owner;
  4. Identify the IP address at which the infringements are alleged to have occurred;
  5. The date on which the infringements are alleged to have occurred at that IP address;
  6. For each copyright work in which copyright is alleged to have been infringed: (i) the name of the copyright owner in the work; (ii) the name of the work, along with any unique identifiers by which it can be identified; (iii)
 the type of work it is (in terms of section 14(1) of the Act); (iv) 
the restricted act or acts (in terms of section 16(1) of the Act) by which copyright in the work is alleged to have been infringed; (v) the New Zealand date and time when the alleged infringement occurred or commenced, which must specify the hour, minute, and second; and (vi)  the file sharing application or network used in the alleged infringement; and
  7. A statement that, to the best of the rights owner/copyright owner’s knowledge, the information provided in the notice is true and correct; and that statement must be verified by a signature (physical or digital) of the rights owner/copyright owner or a person authorized to sign on behalf of the rights owner/copyright owner.

Peru
Enforcement System Notice and Takedown
Overview and Notes Peru adopted notice and takedown protocols based on a side letter annexed in the U.S-Peru Free Trade Agreement.
Governing Legislation Copyright Law (Legislative Decree No. 822)
Notice Requirements

  1. Statement that the information in the notice is accurate;
  2. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) appeared to have been infringed;
  3. The identity, address, telephone number and electronic mail address of the complaining party (or its authorized agent);
  4. Statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its owner, its agent or the law;
  5. Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the complaining party is the owner of an exclusive right that is allegedly infringed or is authorized to act on the owner’s behalf; and
  6. Signature of the person giving notice.
Singapore
Enforcement System Notice and Takedown
Overview and Notes Singapore adopted its notice and takedown protocols in 2006 based on a side letter agreement annexed in the U.S-Singapore FTA.
Governing Legislation
Section 193C(2)(b) Copyright Act (Chapter 63)
, Copyright (Network Service Provider) Regulations 2005
Notice Requirements

  1. Name and address of the complainant (if acting on the copyright owner’s behalf);
  2. Complainant address for service in Singapore (if a non-Singapore resident);
  3. Complainant’s telephone number, fax number and e-mail address;
  4. Identification of copyright material and location of allegedly infringing content;
  5. A statement that the information in the notice is accurate;
  6. A statement that the complainant is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;
  7. A statement that the complainant requires the network service provider to remove or disable access to the allegedly infringing content;
  8. A statement that the complainant or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;
  9. A statement that the complainant is the owner, exclusive licensee, or agent thereof of the copyrighted content; and
  10. A statement that the complainant submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

Vietnam
Enforcement System Judicial System
Overview and Notes Although Vietnam recently adopted Internet liability reforms under the Internet Laws (Decree No. 72/2013), such reforms were silent on online copyright enforcement. The IIPA has criticized Vietnam for failing to adopt effective procedures to address online piracy administrative complaints.[12]
Governing Legislation N/A
Notice Requirements N/A


**Important Note**
: Even if a country maintains notice and takedown protocols, an ISP is generally not obligated to take down infringing content despite legal incentives to do so. Those with further questions about a TPP member state’s online copyright enforcement procedures should seek qualified counsel in that particular country.


[1] Joint Press Statement TPP Ministerial Meeting Bandar Seri Begawan, Brunei Darussalam, Office of the U.S. Trade Representative, Aug. 2013, available at http://www.ustr.gov/Joint-Press-Statement-TPP-Ministerial-Brunei.
[2] See Sean Flynn, Margot Kiminski, Brook Baker and Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property: American University Washington College of Law, 3, Dec. 6, 2011, available at http://infojustice.org/tpp-analysis-december2011.
[3] Id. at 50.
[4] Copyright Issues in the TPP: Malaysia, Public Citizen, 2012, available at http://www.citizen.org/TPP-Copyright-Issues-MY#_ftnref.
[5] See id.
[6] See Calls For Brunei To Carry Tougher Copyright Laws, The Brunei Times, Aug. 10, 2013, available at http://www.bt.com.bn/news-national/2013/08/10/calls-brunei-carry-tougher-copyright-laws.
[7] Paul Chwelos, Assessing the Economic Impacts of Copyright Reform on Internet Service Providers, Industry Canada, Jan. 2006, available at http://www.ic.gc.ca/eic/site/ippd-dppi.nsf/eng/ip01090.html; Bob Taratino, Online Infringement: Canadian “Notice and Notice” vs US “Notice and Takedown”, Heenan Blaikie LLP, Jun. 27, 2012, available at http://www.lexology.com/library/detail.aspx?g=e0e3ffdb-a96f-4176-add3-92fd2812d4bc.
[8] Chile’s Notice-and-Takedown System for Copyright Protection: An Alternative Approach, Center for Democracy & Technology, Aug. 28, 2012, available at https://www.cdt.org/files/pdfs/Chile-notice-takedown.pdf.
[9] IIPA 2012 Report: Malaysia, IIPA, 207-08, 2012, available at http://www.iipa.com/rbc/2012/2012SPEC301MALAYSIA.PDF.
[10] IIPA 2013 Report: Mexico, IIPA, 210, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301MEXICO.PDF.
[11] Section 92A Bill Introduced in Parliament Today, Behive.Gov.Nz, Feb. 23, 2010, available at http://www.beehive.govt.nz/release/section-92a-bill-introduced-parliament-today.
[12] IIPA 2013 Report: Vietnam, IIPA, 289, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301VIETNAM.PDF.

The Colonel and Hitler: How KFC Could Have Handled Trademark Tarnishment in Thailand

Earlier this summer, several news outlets reported that U.S. fast food conglomerate Yum! Brands, the operator of Kentucky Fried Chicken (KFC), was considering taking legal action against a fast food restaurant in Bangkok, Thailand shockingly called “Hitler.” The Hitler restaurant was selling fast food under a logo similar to KFC’s iconic logo, replacing the face of Colonel Harland Sanders, KFC’s founder with his signature white suit and string tie, with the face of Adolph Hitler, former German Chancellor, warmonger and mass-murderer.

Despite the Hitler restaurant’s subsequent removal of their offensive interpretation of the KFC logo, the incident highlighted legal issues businesses may face in foreign markets beyond the unauthorized use of their marks (aka infringement). I’m talking about foreign trademark tarnishment. Trademark tarnishment is the unauthorized use of a well-known mark that degrades consumers’ positive associations with such mark, thereby harming the mark’s overall reputation.[1]

What does this mean in an international context? Foreign trademark tarnishment can result in reduced foreign demand for a business’ goods or services, and hinder their ability to take advantage of foreign market opportunities. Although protecting against trademark tarnishment is generally difficult, KFC’s recent altercation with the Hitler restaurant shows ways in which foreign businesses can take advantage of foreign national trademark laws to protect their marks against tarnishment—even if such countries do not main specific protections against tarnishment.

Thai trademark law does not providing express protections against tarnishment. However, KFC’s logo likely qualifies for tarnishment-like protections in Thailand because it would qualify as a “well-known mark.” Unlike the U.S. and other common law countries (Australia, Canada, India, South Africa and the United Kingdom, among others), Thailand is a “first to file” country, meaning that a mark can normally only obtain full protection under Thai law through registration with the Thai Department of Intellectual Property (DIP). However, Section 8(10) of the Thai Trademark Act (“Act”) acknowledges rights for unregistered well-known marks.  Since 2005, an unregistered mark can be designated as a well-known mark under Thai trademark law if it meets several evidentiary criteria upon petition to the DIP’s Board of Well-Known Marks.[2]

Similar to most countries, meeting such criteria in Thailand generally requires that a mark possess nationwide recognition. Article 16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and Article 16bis of the Paris Convention for the Protection of Industrial Property require that a mark have nationwide recognition among consumers to qualify as a well-known mark.[3] Likewise, Thailand requires that a mark have nationwide consumer recognition, yet this recognition can be established through predominant use of the mark abroad.[4] Once established, a well-known mark is granted protections in all classes of goods and services.[5]

In the case of KFC, it is likely that their logo qualifies as a well-known mark in Thailand based on KFC’s global and national recognition. KFC has more than 450 outlets in Thailand and approximately 15,000 outlets worldwide—not to mention extensive global advertising and promotional campaigns.[6] These facts likely qualify the KFC logo for well-known mark protection in Thailand (upon petition), giving KFC broad protection under the Act for its logo among multiple if not all classes of goods and services.

By obtaining trademark protection, a trademark owner can normally prevent others from most forms of unauthorized use of such mark. Yet, you might asking yourself, o.k., while supplanting Adolf Hitler for Colonel Sanders is detestable, isn’t it permitted as free speech? The answer varies from country-to-country and from case-to-case. Several major markets including the U.S., the European Union and India, recognize that unauthorized users of a mark may defend against infringement or tarnishment claims through fair use, namely the ability to use a registered mark for legitimate free speech purposes such as parody. In the U.S., such a defense is upheld sometimes in a confusing way. For example, a U.S. Court found that the unauthorized noncommercial use of marks from a L.L. Bean catalogue can be parodied in an adult magazine, but the unauthorized use of the Dallas Cowboys football cheerleading team’s trademark in a pornographic film did not.[7] In terms of Nazis and terrorists, a U.S. Court did allow an unauthorized user to conjure up Nazi and Al-Qaeda themes in their use of Wal-Mart’s well-known mark when such use was non-commercial.[8]

Fortunately for KFC, Thailand does not appear to afford such a fair use defense. Section 109 of the Act prohibits any person who “imitates” a registered mark to mislead the public as to its true ownership, subjecting such user to fines up to 200,000 Baht (approx. US$ 6,250.00) and/or two years imprisonment. Due to the inherent broadness of “imitates” without any express fair use defenses provided under the Act, Thailand appears to possess little to no trademark fair use exceptions for parody or other recognized fair uses. Based on these facts, KFC would likely be able to seek enforcement of their trademark rights in their logo as a well-known mark against the Hitler restaurant.

What’s the takeaway? The moral of this story is that understanding foreign national IP laws can help businesses to find effective solutions to protect against tarnishment and other unauthorized uses abroad, even if such protections are not expressly provided in foreign national legislation. Although few business maintain as well-known marks as KFC’s logo, most businesses can adopt tailored foreign trademark protection strategies to prevent tarnishment or infringement of their marks. Businesses who have tarnishment issues in a particular market should consult with qualified local counsel to understand what protections can be afforded to their marks.


[1] Britt N. Lovejoy, Tarnishing The Dilution by Tarnishment Cause of Action: Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. and V Secret Catalogue, Inc. v. Moseley, Compared, 26 Berkeley Tech. L. J. 623, 626 (2011) (citing J. Thomas McCarthy, 4 McCarthy On  Trademarks & Unfair Competition § 24:89 (4th ed.)).
[2] See Somboon Earterasarun, Criteria In Determining Well-Known Trademarks in Thailand, Tilleke & Gibbins, (2010), available at http://www.tilleke.com/sites/default/files/2010-AsiaIP-Criteria-Well-Known-TM_0.pdf.
[3] See Keola R. Whittaker, Trademark Dilution in a Global Age, 27 U. Pa. J. Int’l Econ. L. 907, 937 (2006).
[4] Department of Intellectual Property Regulations on Recordal of Well-Known Marks B.E. 2548 (AD 2005), Ch. 7, 11.
[5] Say Sujintaya and Jomjai Jintasuwon, Well-known Trademarks in Thailand – A Bump in the Road, Baker & McKenzie, Mar. 23, 2012, available at http://www.lexology.com/library/detail.aspx?g=ce280c13-d28e-45f6-8a45-e45a9af8a74e.
[6] About KFC, KFC.com, available at www.kfc.com/about; Yum! Brands, Yum! Financial Data, Restaurant Counts (2012), available at http://yum.com/investors/restcounts.asp.
[7] See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st. Cir. 1987); compare Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 376 (S.D.N.Y. 1979).
[8] See Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1339-40 (N.D. Ga. 2008) (Use of the terms WAL★OCAUST and WAL-QAEDA in referencing Wal-Mart’s trademarks in tee-shirts was held to be protected parodic noncommercial speech).

Understanding Foreign IP Customs Notification Registration Procedures

In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:

  1. Can you submit such a notification in a particular country?
  2. Does the country you wish to enforce your IP rights have an IP customs notification system?
  3. Does such a country’s national IP customs notification system include the type of IP you wish to protect?
  4. What are the particular foreign customs agency’s IP notification requirements?

Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:

Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.

Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).

Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.

Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.

Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.

If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.

Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.

Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.

What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.

Below are the IP customs notification submission requirements for some of the worlds’ major markets.

Governing Law

Types of IP Covered

Notes

Forms/Links

United States 19 C.F.R. 133.1 et seq.
Copyright and Trademark Instructions: Copyright and trademark notification (known as e-Recordation) requires:

-Registering a trademark with the U.S. Patent and Trademark Office or a copyright with the U.S. Copyright Office

-The trademark or copyright’s U.S. registration number

-The name, address and citizenship of the IP rights owner

-The place(s) of manufacture of goods bearing the trademark or copyright

-The name and address of individuals authorized to use the trademark or copyright

-The identity of a parent company or subsidiary authorized to use the trademark or copyright (if any)

Fees: US $190.00 per copyright and trademark (per class of goods and services).

Effective Duration of Notification: 20 years.

e-Recordation Notification Portal
Australia
Copyright Act 1968, Subsection 135(2)

Trade Marks Act 1995, Section 132

Copyright and   Trademark General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.

Duration of Notification: Four years.

Copyright

Copyright Notice Instructions

Copyright Notice Form

Copyright Deed of Undertaking

Trademarks

Trademark Notice Instructions

Trademark Notice Form

Trademark Deed of Undertaking

China Decree of the General Administration of Customs, No. 183 Copyright, Patent and Trademark Requirements: To file a IP customs notification with the General Administration of Customs (GAC), an application must include:

-a copy of the IP rights holder’s business registration certificate and a Chinese translation

-a copy of the Chinese registration certificate for the copyright, patent or trademark

-Proof of Power of Attorney (if registered by an agent)

-Registration fee (see below)

-Licensing agreements (if any)

-Pictures of the relevant goods and their packaging

Submission: Forms can be filled online or by mail.

Fees:Approximately US $130.00 (800 RMB).

GAC Online Notification Form (In Chinese)
European Union Council Regulation (EC) No 1383/2003, Article 5.5 Copyright, Geographical Indication, Patent and Trademark The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.

Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).

Community Application For Action

Community Article 6 Declaration

India  Notification no. 47/2007 – Customs (n.t.) Copyright, Geographical Indication, Patent and Trademark Registration: The CBEC requires that copyrighted works be registered with Indian Copyright Office, and geographical indications, patents and trademarks with the Office of the Controller General of Patents, Designs & Trade Marks prior to submitting a CBEC customs notification.

Ports of Entry: The CBEC also requires that notifications be submitted to particular ports of entry.

Duration of Notification: Minimum period of one (1) year.

Online Notification Submission Portal

**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.

Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.

Enforcing Online Copyright Protections Abroad: Understanding Foreign Takedown Notice Requirements

Establishing methods for enforcing copyright protections online has become increasingly important to protecting a content owner’s rights in their works—as demonstrated by the recent launch of the Copyright Alert System (CAS) in the U.S. Most content owners do not have the same resources for online copyright enforcement as the Media and Internet service provider industries (two central sponsors of CAS). However, nearly all owners of protected works can take advantage of relatively inexpensive online copyright enforcement methods to protect their works in many of the world’s major markets. The most commonly used means of enforcement are takedown notices—demands sent from content owners to Internet Service Providers (ISPs) or website hosts to remove infringing content hosted on websites under their control. Depending on the circumstances, an ISP may be compelled upon receiving a takedown notice to remove infringing content from a hosted website, or in some cases, an entire website, for a temporary or extended amount of time.

Takedown notices can have substantial implications on an infringer’s online presence. A takedown can interrupt access to a infringer’s site, potential disrupt or halt their business, and can possibly result in the deletion of their site’s user comments and feedback. With these potentially serious consequences in mind, a rights holder should consider exhausting all alternatives before submitting a takedown notice against an infringing website.

Determining whether to and how to utilize takedown notices as a international copyright enforcement tool requires understanding a few things:

  • What international legal protections does a rights owner have in their works
  • Where are works being infringed online
  • Where is an ISP subject to jurisdiction
  • What countries have national takedown procedures and what are such countries’ requirements
  • Further issues after a takedown notice is submitted

Let’s break these down a little further:

What International Legal Protections Does a Rights Owner Have in Their Works? A rights owner cannot consider utilizing takedown procedures abroad without first establishing that their works qualify for international copyright protection. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (A list of Berne Convention countries is available here), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.

If a content owner has questions about whether their content qualifies for international copyright protection, they should consider consulting with their national copyright office or a qualified attorney.

Where are Works Being Infringed Online? To determine if any enforcement measure can be utilized, it is essential to know where in the world a work is being infringed online. If a work is being used without authorization and is available on the Internet in a particular country, it is likely being infringed in that particular country. For example, if a song by a Spanish artist, that qualifies as a protected work under the Berne Convention, is uploaded without authorization by a Malaysian file sharer to their website and is accessible throughout the entire world, it is being infringed in both Malaysia and Spain, as well as potentially in the other 164 Berne Convention countries.

Where is an ISP Subject to Jurisdiction? In order to effectively submit a takedown notice in a country where a protected work is infringed online, the ISP of the infringing website must be subject to that country’s laws in order for the ISP to be potentially compelled to comply with a takedown request. Generally, an ISP is only subject to the laws of a country where it is physically located or countries where it is engaged in enough commercial activity to establish personal jurisdiction. Determining an infringing site’s ISP can be completed through conducting a WHOIS database search. Such a search may also help identify the ISP’s host country by providing details about the ISP. However, this is not always a certainty.

If an ISP is located in the country where a work is infringed online, a rights owner only needs to establish whether that country has takedown procedures (see next section) to determine whether they can utilize takedown notices. However, determining whether an ISP is subject to the copyright laws of a country where it is not physically located is more difficult. In the U.S., a foreign ISP must at least have sufficient “minimum contacts” with the U.S. for the foreign-based ISP to be subject to U.S. law, and potential liability under the Digital Millennium Copyright Act (DMCA). Int’l Shoe Co. v. Wash., 326 U.S. 310, 316 (1945). Generally, such contacts have required purposeful interactions with U.S. citizens and commerce, such as marketing its services in the U.S. that would foreseeably bring the ISP under U.S. jurisdiction. Asahi Metal Indus. v. Superior Court, 480 U.S. 102, 112 (1987). It must also be “reasonable” to bring the ISP under U.S. jurisdiction, based on multiple factors. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980).

To illustrate these requirements using the previous example of the Spanish musician: Let’s assume that an Australian ISP hosts the Malaysian file-sharer website whose infringing content is available in the U.S., but the ISP does not market or make its services available in the U.S. In this case, the ISP would likely not be subject to U.S. law. Therefore, it is likely that the ISP is only subject to Australian law due to its location in Australia—and possibly Malaysian law if qualifying under Malaysian personal jurisdiction requirements. Alternatively, if the Australian ISP actively markets its services to U.S. citizens and businesses, the ISP may be subject to U.S. jurisdiction, and thereby potential liability under the DMCA. This would give the Spanish artist the ability to submit a U.S. takedown notice against the Australian ISP that would subject the ISP to potential liability under the DMCA if is fails to take action on the takedown notice.

Two important things to note:

  • Failing to qualify for jurisdiction does not mean a rights holder is barred from demanding an ISP to takedown content that infringes a protected work. It simply means that an ISP may not be compelled or have incentive to remove infringing content because they are unlikely to face liability.
  • Many content submission sites like YouTube and Facebook, as well as search engines such as Google and Bing, maintain their own takedown submissions procedures that are generally available to users regardless of their geographical location or where a protected work is infringed online.

What Countries Have National Takedown Procedures and What are Such Countries’ Requirements? To effectively utilize takedown procedure against an ISP, the ISP’s host country or country to which it is brought under personal jurisdiction must possess takedown procedures for rights holders, and such rights holders must comply with such procedural requirements. This requires understanding:

  • Whether the country to which the ISP is subject to jurisdiction has takedown notice legislation
  • If so, what are the country’s takedown notice requirements and procedures.

National Takedown Notice Legislation. Surprisingly, not all countries maintain takedown notice legislation for rights holders. Major markets including Argentina, Brazil, Canada, India, Israel, Mexico and Russia are among those that don’t currently have takedown notice procedures. Despite such gaps, a large number of Berne Convention countries have enacted takedown notice legislation including the U.S., Australia, China, France, Italy, Germany, Japan, New Zealand, Singapore, South Africa, South Korea, Taiwan and the United Kingdom, to name a few.

National Takedown Notice Requirements: Below are the requirements for takedown notices in a number of major markets that have notice and takedown legislation.

Country

Legislation

Takedown Notice Requirements

United States DMCA (17 U.S.C. § 512(c)(3)(A))
  1. A physical or electronic signature of a person authorized to act on behalf of the rights holder alleging infringement;
  2. Identification of the copyrighted work(s) claimed to have been infringed;
  3. Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);
  4. Information reasonably sufficient to allow the ISP to contact the rights holder (i.e. address, telephone number, e-mail, etc.);
  5. A statement that the rights holder has a good faith belief that the use of their content is not authorized by the rights holder; and
  6. A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
Australia Regulation 20I, Schedule 10, 1969 Copyright Regulations
  1. The statement: “I, the person whose name is stated below, issue this notification for the purposes of condition 3 of item 4 of the table in subsection 116AH(1) of the Copyright Act 1968 and regulation 20(I) of the Copyright Regulations 1969.”
  2. The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7], being copyright material residing on your system or network.”
  3. (If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by me or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;
  4. (If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;
  5. (If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;
  6. The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and
  7. An attached schedule to the notice including a description of the copyright material and the location of the infringing content.
China Article 14, Regulations on the Protection of the Right to Network Dissemination of Information Networks
  1. The rights holder’s name, contact information and address;
  2. The titles and website addresses of the infringing content which is requested to be removed or disconnected;
  3. Preliminary evidence of the works’ infringement; and
  4. A request that the service provider remove the infringing content.
Japan Article 3(2)(ii), Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to DemandDisclosure of Identification Information of the Senders
  1. Information on the particular infringement;
  2. Suggested actions to be taken by the ISP;
  3. The rights in the work that are allegedly being infringed;
  4. The reasoning why the rights holder believes that an infringement has taken place; and
  5. The rights holder’s contact information.
South Africa Section 77(1), The Electronic Communications and Transactions Act
  1. The rights owner’s full name, address, telephone and e-mail address (if any);
  2. Identification of the right of the protected work that has been allegedly infringed;
  3. Identification of the material or activity that is claimed to be the subject of the infringement;
  4. The requested remedial action to be taken by the ISP;
  5. A statement that the rights holder is acting in good faith;
  6. A statement by the rights holder that the information in the notification is true and correct to their knowledge; and
  7. The copyright owner’s electronic signature.
United Kingdom Section 124(a)(3), Communications Act 2003
  1. A statement that there appears to have been an infringement of the owner’s copyright in the protected work;
  2. A description of the apparent infringement;
  3. Evidence of the apparent infringement that shows the infringer’s IP address and the time at which the evidence of infringement was gathered;
  4. Notice must be sent to the ISP within one (1) month of when evidence of the infringement; and
  5. The notice complies with any other requirement of the initial obligations code.

Note: Some of these national take down requirements are derived from translations. Rights holders should consult with National Copyright Offices or qualified attorneys in the jurisdictions they wish to enforce their rights in order to confirm these and other take down notice requirements.

Further Issues After a Takedown Notice is Submitted. Finally, it is important to note that there are issues to consider after a takedown notice has been submitted. First, an infringer may respond to a takedown notice by submitting a counter notice attesting to their rights in a protected work, even after their online content or website has been blocked or removed. Also, an ISP may refuse to act after a takedown notice has been submitted. If these circumstances arise, one should consider contacting a qualified attorney to discuss further actions.

Special thanks to co-author Kenneth Louis Strocsher, J.D. Candidate, 2014, Seattle University School of Law.

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Proposed Reforms Will Expand Enforcement Protections in Thailand For Foreign Copyright Owners

The Thai government recently pursued two IP reforms that will provide qualifying foreign copyright owners enhanced enforcement protections for their works in Thailand. This will happen through strengthened government enforcement efforts, as well as improved Internet enforcement procedures. These efforts could not have come at more crucial time—for both Thailand and foreign copyright owners. The U.S. Trade Representative’s Office (USTR) placed Thailand on its 2012 Priority Watch List of countries with IP enforcement concerns, and the International Intellectual Property Alliance (IIPA) has reported that foreign industries lose several hundreds of millions dollars annually in Thailand due to IP infringement, with the latest statistics available showing that the U.S. software industry in particular lost a staggering $427 million in 2010 due to unlicensed sharing.

So what are the specific Thai reforms and which foreign works qualify for enhanced protection?

New Enforcement Office: Last week, the Thai Department of Intellectual Property announced the opening of the Operations Centre for the Suppression of Intellectual Property. It was established to monitor suspected infringer movements, distribution channels, tax payments, cash flows, and money laundering activities. The formation of the Centre will also assist Thai authorities in increasing prosecutions of IP infringers, which the IIPA identified as being a priority action needed to combat IP infringement.

Proposed Legislation: The Thai cabinet finalized the Copyright Act (Draft Act) late last year, a proposed amendment to Thai copyright law that provides several copyright enforcement reforms, particularly by improving Internet enforcement procedures.  According to analysis by Nuttaphol Arammuang, attorney at the law firm Tilleke & Gibbins, the Draft Act provides a copyright owner the ability to petition a Thai Court to compel an online service provider, namely a person hosting or storing data on behalf of a user who infringes the copyright owner’s work, to take down infringing online content. To do so, a copyright owner must submit a petition to a Thai Court. This will be followed by an investigation, and if found sufficient, will compel the Court to order the service provider to temporarily or permanently remove the infringing content.

These judicial takedown provisions will potentially provide foreign copyright owners expanded enforcement rights, yet they may be not as directly efficient or inexpensive as in other countries. The Draft Act’s petition system provides similar means for copyright owners to enforce their rights online against infringers and service providers as found in the U.S. under the Digital Millennium Copyright Act (DMCA) and Australia under the 1969 Copyright Regulations. However unlike those laws, the Draft Act appears to not create a notice and takedown system, specifically the ability for copyright owners to directly petition service providers to take down infringing content. Without a notice and takedown system, copyright owners under the Draft Act are less able to quickly remove infringing online content, and instead are required to submit a Court petition prior to obtaining online content removal. The absence of such a system could also potentially burden copyright owners with additional legal costs by requiring them to seek a judicial order rather than submitting a potentially less-expensive extrajudicial take down notice.

Despite these potential concerns, Thailand’s recent entrance into the Trans Pacific Partnership (TPP) negotiations may ultimately result in the Thai government adopting notice and takedown system laws for protected works from other TPP member states. Leaked TPP agreement IP chapter drafts have included requirements for TPP member states to limit liability safe harbor protections for service providers, which may compel Thailand to adopt notice and takedown systems for works from other TPP member states. This may at least provide copyright owners from other TPP member states (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, U.S., and Vietnam) the ability to utilize notice and takedown enforcement protections in Thailand in the future.

Qualifying Foreign Works: To obtain protections provided by these reforms, as well as all other legal protections currently provided under Thai copyright law, a foreign work must qualify as a protected work under the Berne Convention for the Protection of Literary and Artistic Works. A foreign work obtains protection under the Berne Convention when such a work becomes attached, meaning that the author of the work is a national of a Berne Convention country, a habitual resident in a Berne Convention country, or that the author publishes their work first in Berne Convention country or within a Berne Convention country 30 days after an initial publishing in a non-Berne Convention country. A list of Berne Convention countries is available here.

What do you think of these reforms? What IP enforcement issues are you facing in Thailand?

Special thanks to Jessica Taback for her assistance!