Check out my guest posting for the UK IP blog The IPKat on the Russian publishing house Eksmo’s copyright infringement lawsuit against leading Russian social media website VKontakte, and general online copyright enforcement in the Russian Federation. It is available at: http://ipkitten.blogspot.co.uk/2014/02/fifty-shades-of-grin-and-bear-it-as.html.
Over the last week, the Office of the U.S. Trade Representative (USTR) and the International Intellectual Property Alliance (IIPA) released reports on the current state of intellectual property (IP) protections for U.S. businesses abroad. These reports provide updated insights on foreign countries and foreign retail markets (both physical and online) that have recently caused U.S. businesses the most IP protection difficulties.
Here is a summary of the reports:
IIPA 2014 Special 301 Report Submission
On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”
Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.
What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?
Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.
Priority Watch List and Watch List Countries. The IIPA’s Special 301 Report Submission lists Argentina, Chile, China, Costa Rica, India, Indonesia, Russia, Thailand and Vietnam on the “Priority Watch List,” and Belarus, Brazil, Bulgaria, Canada, Ecuador, Greece, Israel, Kazakhstan, Kuwait, Mexico, Romania, Saudi Arabia, Switzerland, Taiwan, Tajikistan, Turkey, Turkmenistan, United Arab Emirates and Uzbekistan as “Watch List” countries. Although not as a severe rating as a Priority Foreign Country, being listed as a country on the Priority Watch List or simply Watch List means that a country has potential IP protection deficiencies that require varying levels of USTR monitoring.
Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.
Out-of-Cycle Review of Notorious Markets
Also, on Wednesday, the USTR released an Out-of-Cycle Review of Notorious Markets that identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting. The Review includes particular social media and file transferring sites hosted abroad, including sites hosted in Antigua and Barbuda, Bulgaria, Canada, China, Czech Republic, Finland (possibly), Netherlands, Poland, Russian Federation, Spain, Sweden, Ukraine, United Kingdom and Vietnam. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Paraguay, Spain, Thailand and Ukraine were also deemed notorious.
What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.
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.
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, 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. 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.
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:
- The identity, address, telephone number, and electronic mail address of the complaining party (or its authorized agent);
- 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;
- Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) claimed to have been infringed;
- 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;
- A statement that the information in the notice is accurate;
- 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
- 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.
 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).
 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.
Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.
1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.
Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.
2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).
Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.
3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.
Additional Foreign Considerations: None. Additional complaints may need to be filed for foreign trademark ad complaints as well.
4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.
Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.
What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.
The Canadian Parliament reintroduced proposed legislation late last month that will dramatically impact how foreign copyright and trademark owners can protect their rights in Canada, and ultimately around the world. Reported to be enacted by the end of this year, the Combatting Counterfeit Products Act (Bill C-56; CCPA) proposes specific amendments to Canada’s Copyright Act and the Trade-marks Act that will allow foreign rights owners to better control the cross-border flow of counterfeit goods in Canada. The CCPA provides several notable reforms, including the expansion of registerable trademarks and new claims of recovery for trademark counterfeit goods. However, I believe its most important proposed reform is the establishment of a system allowing rights owners to register their copyrighted works and trademarks with Canadian authorities—while gaining help in detaining counterfeit shipments entering and leaving Canada.
The CCPA’s proposed request and detention system is an expansion of legal protections against counterfeit goods under current Canadian law because it introduces non-judicial measures rights owners can use to prevent the import and export of counterfeit goods in Canada. Currently, rights owners must obtain a Canadian court order to halt infringing imports and exports of counterfeit goods in and out of Canada. The CCPA addresses these limitations by allowing copyright and trademark owners to file a request for assistance with the Ministry of Public Safety and Emergency Preparedness (Ministry). This allows Canada’s border authority, the Canadian Border Services Agency (CBSA), to monitor inbound and outbound shipments of counterfeit products for a two-year period, and temporarily detain counterfeit good shipments to allow further investigation.
Although rights owners will be required to provide a security deposit and fees for a detention, the request and detention system will provide a more expedient, inexpensive and overall more effective means for foreign rights owners to prevent the dissemination of counterfeit products, both in Canada and beyond. Filing a request for assistance with the Ministry is a faster and relatively less expensive procedure that seeking a court order. It also allows the CBSA to assist in policing shipments, complementing any monitoring activities conducted by foreign rights owners, and ultimately improving a foreign right owner’s overall global IP enforcement efforts.
Despite these benefits, the proposed request and detention system also has limitations:
Goods for Personal Use: The CCPA’s system does not cover counterfeit goods for personal use, such as those in personal baggage.
Parallel Importation: The system excludes copyright grey goods, namely copies of copyright-protected works made in a country outside of Canada where the copies were authorized to be made.
Transshipment: The CCPA’s system does not apply to transshipments. This means that foreign rights owners’ requests to the Ministry will not assist in detaining shipments of counterfeit goods that are only intermediately transiting Canada.
National Treatment: A foreign rights owner’s access to the request and detention system may also be limited depending on the type of IP they wish to enforce. A foreign copyright rights owner can likely access the system regardless if they are Canadian or if their work was created in Canada due to the legal protections provided in the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention). The Berne Convention allows a work from a Berne Convention country (Berne Convention countries) to qualify for protection in another Berne Convention country when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country, 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. This means that if a foreign work becomes attached, and qualifies for protection under Canada’s Copyright Act, a copyright rights owner will have copyright protection for their work in Canada and may utilize the CCPA’s request and detention procedures once the CCPA is enacted.
Trademark rights owners will not be as easily able to utilize the CCPA’s system. Unlike copyrights, trademarks are generally territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. This means that a trademark owner must generally have registered their mark in Canada in order for them to utilize the CCPA’s trademark request and detention system. Further, as Canada is not a member to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (aka the Madrid Protocol), foreign trademark owners need to obtain a Canadian trademark attorney to register their marks in Canada.
What’s The Takeaway?: The CCPA will give foreign copyright and trademark owners more effective and less expensive tools to protect their copyrighted works and trademarks in Canada and beyond. Its request and detention system does this by not only restricting imports of counterfeit goods, but also limiting their dissemination from Canada to other countries. Yet, the CCPA underscores the vigilance that foreign rights owners must have to ensure that they register and re-register requests for assistance for their works and marks. Only copyright and trademark owners (not authorized parties, e.g. licensees) can file requests with the Ministry to utilize the system’s full protections.
Further, the CCPA shows that foreign trademark owners who are serious about protecting their brands in Canada, and ultimately throughout the world, need to consider registering their marks in Canada in order to effectively utilize the CCPA’s request and detention system once it is enacted. Upon doing so, such owners can better insure protection for their marks in Canada and beyond.
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. 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). 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. 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. 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.
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
|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.|
Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))
|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.|
Regulation 20(I-J), 1969 Copyright Regulations, Schedule 10 (Part 1), 1969 Copyright Regulations
|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.|
|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.|
Section 41.25-41.27, The Copyright Act
|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. Instead, Chile requires that Authorized Parties submit an expedited judicial petition to evaluate alleged infringement and be granted a takedown.|
Article 85R, Law No. 20.435 (amending Law No. 17.336 on Intellectual Property
|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.|
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)
|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.|
Article 43H, Copyright (Amendment) Act 2010
|Notice Requirements||As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.|
|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.|
|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.|
Section 92C and 92D, Copyright Act 1994;
Section 4, Copyright (Infringing File Sharing) Regulations 2011
|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)|
|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.|
Section 193C(2)(b) Copyright Act (Chapter 63), Copyright (Network Service Provider) Regulations 2005
|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.|
**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.
 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.
 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.
 Id. at 50.
 Copyright Issues in the TPP: Malaysia, Public Citizen, 2012, available at http://www.citizen.org/TPP-Copyright-Issues-MY#_ftnref.
 See id.
 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.
 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.
 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.
 IIPA 2012 Report: Malaysia, IIPA, 207-08, 2012, available at http://www.iipa.com/rbc/2012/2012SPEC301MALAYSIA.PDF.
 IIPA 2013 Report: Mexico, IIPA, 210, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301MEXICO.PDF.
 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.
 IIPA 2013 Report: Vietnam, IIPA, 289, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301VIETNAM.PDF.
By guest blogger Mark Kusic, President, Founder and Private Investigator, Kusic and Kusic Private Investigators Ltd., Vancouver, British Columbia, Canada.
Obtaining a foreign private investigator (PI) can have a significant impact in foreign intellectual property (IP) litigation. A good and experienced foreign PI understands how to collect evidence in a way that is legally relevant and admissible in the country they are located. The recent Canadian trademark counterfeiting case Guccio Gucci S.p.A. v. Mazzei,  F.C. 404 (Can.) illustrates this point. The famous Italian fashion designer Gucci investigated and brought suit against a Toronto-based seller of counterfeit Gucci products. As a part of their investigative efforts, Gucci worked with three Canadian investigators to investigate and collect evidence on the seller. Initially, one PI working undercover responded to the seller’s online advertisement and set up a meeting with the seller where the investigator purchased the seller’s counterfeit Gucci goods.
Next, a second undercover investigator responded to the seller’s online advertisement and scheduled a time to meet the seller at his storage facility. Once at the facility, the investigator witnessed and was able to video record hundreds of counterfeit items, as well as purchase counterfeit Gucci and other luxury brand products.
Lastly, a third investigator accompanied an attorney and a police detective to the seller’s storage facility and served the seller a cease and desist letter. During the process, the investigator saw and discretely recorded the interaction, which also included evidence of a number of counterfeit Gucci products.
Based on these investigations, the team of Canadian investigators was able to assist Gucci in documenting the existence and sale of the seller’s counterfeit Gucci goods, ultimately helping Gucci obtain a summary judgment ruling and compensatory damages for each count of trademark infringement.
So how can IP owners ensure that a foreign PI they hire will be as effective as those hired by Gucci in Guccio Gucci S.p.A? Well, there are few things IP owners should look for when hiring a foreign PI, as well as things to keep in mind once a foreign PI is hired.
Experience. IP owners should make sure that the foreign PI they hire has extensive IP investigation experience. There are several ways to verify such experience. First, an IP owner can check the PI’s online presence by reviewing the PI’s website, and searching their name online in conjunction with terms such as “anti-counterfeiting” and “brand protection” to obtain further information about the PI’s IP investigation experience. They can also check to see if the PI firm is accredited and licensed by regional, national or international PI associations that handle IP investigations (see next point).
It is also good to ensure that a foreign PI has extensive online investigation experience if that is to be the focus of the IP investigation. The foreign PI needs to be able to expertly navigate and research the Internet including websites where potential foreign infringers and counterfeiters are active, such as on Alibaba, Craigslist, Facebook and eBay, among others. As each website and online marketplace has their own rules and processes for handling IP violations, IP owners with a specific website concern should inquire whether the foreign PI they wish to hire has in-depth experience with the particular website in question in order to determine whether the foreign PI can be of assistance.
Licensing. IP owners should make sure the foreign PI they wish to hire is licensed and accredited with governing authorities and industry associations, both regionally, nationally and (preferably) internationally. Any foreign PI firm chosen should be a member of their regional and national professional association, such as the Private Investigators’ Association of British Columbia and the Canadian Association of Private Investigators in the case of my firm respectively. Although not required, a foreign PI firm’s membership with a recognized international investigator association such as the World Association of Detectives and the International Trademark Association (INTA) further solidifies their credentials.
Know Your Ethical and Legal Obligations. IP owners also need to be aware of their legal and ethical obligations once they hire a foreign PI. They should not direct their foreign PI to access information that is not available to the general public, misrepresent themselves, or conduct other illegal practices. Any evidence gathered by a foreign PI under these circumstances is likely inadmissible, and may even result in legal action taken by the subject of the foreign investigation.
Parting Notes. Obtaining a good and experienced foreign PI can significantly benefit a IP owner’s foreign IP litigation efforts. Following these suggestions can help to ensure that the right foreign PI is chosen and effectively utilized.
I had the honor to guest blog about cross-border online copyright enforcement for Vancouver Canada’s Kusic and Kusic Blog. Check out my article at http://kusic.ca/legislation/protecting-online-content-sides-border.
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:
- Can you submit such a notification in a particular country?
- Does the country you wish to enforce your IP rights have an IP customs notification system?
- Does such a country’s national IP customs notification system include the type of IP you wish to protect?
- 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.
Types of IP Covered
|United States||19 C.F.R. 133.1 et seq.
||Copyright and Trademark||Instructions: Copyright and trademark notification (known as e-Recordation) requires:
-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|
||Copyright Act 1968, Subsection 135(2)||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.
|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|
|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.
Understanding the complexities of international copyright law can be confusing. There are several factors for determining whether a work qualifies for copyright protection abroad, what countries a work qualifies for foreign protection in, and what foreign protections are afforded to qualifying works. To understand these complexities (and to show my readers, family, friends and co-workers that I am not an IP robot), I’ve decided to explain how international copyright protections can be understood in practice through the music of my favorite band, The Grateful Dead. The Dead were not only meticulous about recording their live concerts, they also allowed their fans to make concert recordings (FYI, a great examination of the Dead’s recording culture is available in Nick Paumgarten’s recent New Yorker article). Unparalleled in the music world, the Dead permitted their fans to non-commercially record and exchange recordings of their concerts despite such practices generally considered to be copyright infringement.
Beyond providing a lifetime of amazing improvisational music, the thousands of live concert recordings available highlight important issues to consider in determining a work’s copyright protection abroad. To examine these issues, I intend to share some of my favorite Dead recordings that are available from the Internet Archive and highlight several main issues to keep in mind when determining what copyright and related-legal protections a work qualifies for abroad. So here it goes…
Qualifying Works (Playing in the Band – May 17, 1974, P.N.E. Coliseum, Vancouver, B.C.): The two year period of 1973 and 1974 was a creative high-water mark for the Dead when some of their most inspirational and exploratory music was created. This 1974 version of Playing in the Band exemplifies this period with solid interplay between the band members that delves into space and jazz-themed improvisation before reprising after nearly 20 solid minutes of exploration.
This recording also highlights the complexity of determining whether a work qualifies for international copyright protection. In international copyright law, recordings such as this 1974 recording potentially provide international copyright protection to the song’s authors (aka songwriters) and/or composers under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), and its performers (aka musicians) under the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention) and World Intellectual Property Organization Performances and Phonograms Treaty (WPPT).
So not to confuse you too much, in this section I will focus on examining whether this 1974 recording of Playing in the Band qualifies its author and composer, The Grateful Dead’s longtime lyricist Robert Hunter and rhythm guitarist Bob Weir respectively, for international copyright protection under the Berne Convention. For this recording to qualify for potential international copyright protection under the Berne Convention, it must have what is known as “attached.” Attachment requires that either:
- The author of the work is a national of a Berne Convention member state
- The author of the work is a habitual resident of a Berne Convention member state
- The work is first published in a Berne Convention member state or is published in a Berne Convention member state within 30 days after an initial publishing in a non-Berne Convention member state
A list of Berne Convention member states is available here.
Upon attachment and if a qualifying work qualifies for copyright protection under national copyright requirements, it is entitled to protections under that nation’s copyright laws.
Based on these Berne Convention attachment requirements, both Weir and Hunter would likely qualify for international copyright protections in this recording in two ways (*For the sake of analysis, we will assume this 1974 recording was the first publishing of Playing in the Band, although it had been played since 1971). Although this 1974 concert occurred prior to the U.S. becoming a signatory to the Berne Convention and was written/composed by two U.S. nationals, the fact the recording was made in Canada (a Berne Convention member state since 1928) likely means it was first published in a Berne Convention country, qualifying it for attachment under the Berne Convention immediately on May 17, 1974 and potential protections in Berne Convention member states subject to such states’ national copyright protection requirements.
Additionally, the Berne Convention applies retroactively to qualifying works from authors and composers from new member states upon such countries accession to the Convention, subject to national qualifications. This means that once the U.S. became a contracting member of the Berne Convention on March 1, 1989, this recording likely became attached as a qualifying work for protection under the Berne Convention on that date as protections under the Convention began to apply retroactivity to prior published works by U.S. nationals that remain protectable under U.S. copyright terms of protection (see Term of Protections section below for further details). Upon such qualification, Hunter and Weir’s work would then qualify for protection in Berne Convention member states, subject to such countries’ copyright qualifications.
Performers Rights (Fire on the Mountain – October 2, 1977, Paramount Theater, Portland, Oregon): I could have chosen any song to illustrate performers rights, but I chose this recording simply because Fire on The Mountain is one of my favorite Dead songs and this 1977 version from my home state is arguably one of the best ever. Beyond being a first-rate soundboard recording that highlights Keith Godchaux’s rare playing of electric keyboards, it possesses almost psychic interplay between the band members.
This song and its 1977 performance also represent the disparity of copyright protections between authors/composers and performers in a recording. The Berne Convention only extends copyright protections in a work to authors and composers, not performers. Fire on The Mountain was written by Robert Hunter and composed by Dead percussionist Mickey Hart. Despite the entire band’s inspirational playing in this 1977 recording, every band member with the exception of Hart would have little to no international copyright protections in this recording under the Berne Convention based on their non-author/composer status.
However, the Dead members may potentially qualify for international protections in this recording under the Rome Convention or the WPPT. The Rome Convention recognizes performers rights in qualifying performance recordings by providing rights to compensation for broadcasting and reproduction of such recordings, and exclusive rights to prevent unauthorized broadcasting, fixation and reproduction. However, similar to the Berne Convention, recordings must qualify for attachment under the Rome Convention. Such attachment only qualifies for protection for its performers if either:
- The performance takes place in a Rome Convention member state
- It is a qualifying recording (first published or recorded in a Rome Convention member state or the producer is a national of a Rome Convention member state)
- It is a qualifying broadcast (the broadcaster or the transmission was from a Rome Convention member state).
A list of Rome Convention member states is available here.
Unfortunately, the Rome Convention would likely not provide international copyright protections for the band members in this 1977 recording. The U.S. is not a signatory to the Rome Convention (FYI, it is mainly because the U.S. does not recognize a performer’s copyright in a recording). As this 1977 performance was performed in the U.S., by U.S. performers and not broadcasted, it does not qualify as an attached work under the Rome Convention, thereby not requiring any Rome Convention member state to recognize its copyright protection.
It is important to note that even if this recording had qualified for Rome Convention protection, it would have provided less international protections than the Berne Convention. The Rome Convention’s exclusive rights for performers in a work are optional, not required. Additionally, the Rome Convention has fewer signatories than the Berne Convention (91 Rome signatories to 166 Berne signatories). These limitations mean that fewer countries will acknowledge a performer’s rights in a qualifying recording under the Rome Convention than an author’s rights in a qualifying recording under the Berne Convention, and even if countries are Rome Convention member states, they have the ability to limit their recognition of performers’ rights in foreign recordings.
The WPPT (A list of WPPT member states is available here) may provide the band members performance rights in the 1977 recording, yet these international protections are also less comprehensive than those provided under the Berne Convention. The WPPT requires its signatories to extend rights in a recording to performers of other WPPT member states. Provided rights to performers under the WPPT include the right to compensation and exclusive rights including reproduction, distribution and performance, among others. However, like the Rome Convention, the WPPT has a smaller number of signatories (currently 91 countries) than the Berne Convention and member states can withhold implementing the WPPT’s performer rights and protections. The U.S. in particular has elected such limitations. This means all Dead band members do likely qualify for WPPT rights in this 1977 recording as performers, but they only qualify for such protections in the 91 countries, and even in those countries, their rights may be subject to limitations or exclusion, as seen in the U.S.’ non-recognition of the WPPT’s performer rights.
As a result of analyzing protection qualifications in these three treaties, only Hunter and Hart, as an author and composer respectively, qualify for potentially effective international copyright protections in this recording based on their Berne Convention protections. Unfortunately, the other members may only potentially qualify for certain rights in a limited amount of countries under the WPPT.
Term of Protections (Not Fade Away – November 2, 1979, Nassau Coliseum, Uniondale, N.Y.): A staple at Dead concerts, Buddy Holly and Norman Petty’s Not Fade Away was a testament to the strength and size of love (“bigger than a Cadillac” for example) and an excellent springboard into some intense jams. Late 70’s versions of Not Fade Away, such as this 1979 recording, are particularly exceptional due to their extended improvisations.
Works such as Not Fade Away also highlight an important issue in international copyright law, namely the duration to which a work is granted copyright protection. Under the Berne Convention, member states must afford copyright protection to qualifying works for the life of the author and for 50 years after their death. Contrastingly, the WPPT grants protection for performers in recordings for 50 years from when the recording was made, while the Rome Convention only affords 20 years of protection for performers from when a recording is made.
As with rights in the Fire on the Mountain recording above, the protection terms given to the authors/composers and performers in this 1979 recording are disproportionate. As widely known, Buddy Holly died in a horrific plane crash in 1959 (which also killed Richie Vallens and J. P. “The Big Bopper” Richardson). Petty died in 1984. Based on the date of their deaths, Holly’s copyright protections as an author of Not Fade Away under the Berne Convention expired in 2009, while Petty’s rights will continue to remain active until 2034. For all of the Dead band members, their protections under the Rome Convention as performers expired in 1999 (FYI, they would not have had any rights under the Rome Convention anyway – see Performers Rights section above) and their rights in this recording under the WPPT are set to expire in 2029.
However, it is important to note that some Berne Convention member states may provide extended copyright protection terms for authors. For example, the U.S. and Australia extend copyright protection rights for the life of the author plus 70 years after their death. If qualifying as protectable works under the Berne Convention and both U.S. and Australian copyright law, Holly and Petty’s copyright protections in Not Fade Away will remain active in the U.S. and Australia until 2029 and 2054 respectively.
Conclusion: Besides providing some spectacular recordings, I hope this short analysis helps to understand some main issues in international copyright law that can assist in determining the extent of foreign protections in a particular work.
What are your favorite Dead shows? What international copyright issues are you facing?
**Important Note**: The legal issues highlighted herein are hypothetical. Additionally, this article is neither approved nor endorsed by The Grateful Dead, Nick Paumgarten, the New Yorker magazine, the Internet Achieve or any related parties.