Category: India

New USTR and IIPA Reports Describe the Current State of IP Protections for U.S. Businesses Abroad

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.

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.
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A Look Back Over The IP Exporter’s First Year

Photo courtesy of Abdallah Iskandarani.

Earlier this month, I received a message from WordPress notifying me of the one year anniversary of The IP Exporter. As blogging on cross-border and trade-related IP issues over the past year has had results that I never imagined, I thought I would take this opportunity to take a look back at some of my impressions over the past year.

The outpouring of support and feedback I have received from other legal practitioners and those with an interest in the ever-changing world of cross-border IP protection has been the most remarkable aspect of blogging for The IP Exporter. Attorneys and IP specialists from all over the world have not only read my blog (which is a shock in itself!) and shared it with friends and colleagues, but they actually commented on it and told me that it helped in their research and the actual legal issues they were facing. As a relatively young attorney, I have been heartened by this positive feedback. Also, such communication has led to a number of guest writing and professional legal opportunities that I would not have had without blogging.

Another amazing thing I have found about blogging for the The IP Exporter has been seeing which cross-border IP issues have struck accord with my readers. Each time I blog, I am unsure whether an issue I think is interesting is relevant or important to my readers. Some postings I have made on issues that I think are not earth shattering, such as whether to register a trademark in India under the Madrid Protocol or directly through India’s trademark office (The Controller General of Patents Designs and Trademarks), have been the most read postings I have written.

Lastly, the ability to connect with people throughout the world has made blogging an amazing experience. I never thought people from so many different countries would read The IP Exporter. To date, readers from over 90 countries have read The IP Exporter, and much of my readership comes from places I never expected, such as India, Malaysia and Russia. I am also continually amazed about what I blog or tweet about, much of which takes place in countries on the other side of the globe, have resulted in direct feedback from those in such countries. For instance, when I tweeted in July this year about a story on how a hair salon in Dubai, United Arab Emirates was using promotional materials that were alleged to be confusingly similar to Facebook’s protected branding, I received the above photo soon thereafter by a local resident who found it on his car. Although, it is not a complete surprise that I would receive such feedback in this globalized age, I still find it remarkable.

What’s The Takeaway? Blogging over the past year has been an amazing experience. It has made me grow as a writer and as a legal practitioner. More than personal and professional growth, it has made me realize how large a need there is for people to know more about cross-border and trade-related IP issues. The culmination of these experiences has energized me and my efforts to blog on these topics.

What cross-border or trade-related IP issues are you facing?

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).

Some Patent Considerations When Entering into Relationships with Indian Businesses After Novartis AG v. Union of India

Co-Authored by Shreya Ley, Attorney and Owner of Lay Roots

You may have thought that this summer was all about capturing that certain bohemian-chic essence, but the true trendsetters are all talking about recent developments in Indian patent law. In April, the Indian Supreme Court ruled in Novartis AG v. Union of India & Others that Swiss pharmaceutical maker Novartis was not entitled to patent protections for their leukemia treatment drug Gleevec. The Indian Supreme Court’s rationale was heavily based on their efforts to stop pharmaceutical “evergreening” – a practice pharmaceutical companies use to extend the life of a patent by seeking patent protection of subsequent improvements to their drugs or alternative, novel uses for such drugs.

Novartis had been attempting to patent a new and improved version of Gleevec. It had been unable to patent the original version of the drug in India because India did not recognize or grant pharmaceutical patents prior to completing their implementation of their World Trade Organization obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005. Upon discovering an improved version of Gleevec, Novartis sought to gain patent protection in an effort to halt the rampant manufacturing of generic forms of the drug in India. However, the Indian Supreme Court found that Novartis had not created enough of an improvement in the new Gleevec to qualify the drug as a new invention. Since Novartis’ ruling, Indian courts have subsequently invalidated other similar patent applications as seen last Friday with the invalidation of the Glaxo Smith Kline’s cancer drug Tykerb.

The Novartis decision and other similar Indian court rulings that refused to grant patent protections to pharmaceutical improvements have become the major impetus for foreign businesses and governments to denounce the Indian patent system as being broken, unjust, or perhaps just biased against non-Indian inventors. Around the world, India’s stand against pharmaceutical evergreening has led such entities to decry the general state of innovation in India. Here in the U.S., the Pharmaceutical Research and Manufacturers of America commented that the Novartis ruling was a sign of India’s “deteriorating innovation environment” and the Office of the U.S. Trade Representative remarked that recent Indian patent developments have “raised serious questions about the innovation climate in India and risk hindering the country’s progress towards an innovation-focused economy.” Such rhetoric has inevitably led American and other non-Indian businesses to become weary of working with Indian resident companies and inventors, ”hear ye, hear ye, innovators around the world! Take heed of this warning tale!”

Well, “fear not!” Keep in mind that Novartis and the other related Indian court decisions only apply to pharmaceutical patents as such rulings have been based on a specific provision in the Indian Patent Act relating to incremental innovations in pharmaceuticals. So, given the limited applicability of Novartis and related cases, foreign businesses should simply forge ahead with their Indian business relationships, right?

Not quite so fast. Dealing with any foreign business, inventor, or entity comes with its own challenges and those looking to partner with Indian resident businesses should consider the following before getting too involved.

1.     Get a Comprehensive Agreement in Place Beforehand. Many partnering businesses have a difficult time putting a written agreement together prior to beginning their business relationship. THIS. IS. A. MISTAKE. Getting a clear agreement in place beforehand is important for foreign businesses and their Indian counterparts to prevent future misunderstandings that could potentially derail their objectives and result in substantial costs. Such an agreement should not only clearly outline the parties’ rights and obligations with respect to the Intellectual Property (IP) created in their relationship, it should additionally cover business aspects of the relationship. Although a large part of such relationships is based on the IP, the business side encompasses what happens once IP is created and it is equally important.

Specifically, agreements should address the following:

What is being protected? The agreement should clarify for foreign businesses and their Indian counterparts the types of IP their relationship needs to protect. This can be as simple as designating that both patentable and trade secret innovations will be protected and as complicated as describing protections for each and every potential innovation arising out of the relationship, whether a part of the parties’ original intentions or not. This designation process will not only help to define the scope of the parties’ project, it will also help ensure that the parties seek appropriate protections and enforcement measure for their IP. Completing this exercise is especially important in a cross-border context as the enforcement of IP rights abroad may be more difficult than simply making sure everyone is on the same page from the beginning. India in particular has been notorious for lacking the necessary infrastructure to enforce IP rights efficiently.

Who gets ownership? Establishing ownership of resulting IP from an Indian business relationship is important in an initial agreement because countries vary in the rights they give to owners and inventors. For example, Section 2(p) of the Indian Patent Act uses the term “patentee” for patent owners that is defined as “the person for the time being entered on the register as the grantee or proprietor of the patent.” In contrast, the U.S. does not officially use the term “patentee” and most American inventors would probably assume that patentee refers specifically to inventors. As illustrated above however, “patentee” in India is not necessarily limited to inventors. Therefore, making sure that all parties are clear on who will be named inventors and who will own resulting IP is essential to ensuring a good business relationship with an Indian resident business or inventor.

Who gets paid? This, inevitably, is a difficult topic to discuss, and it is inextricably tied to IP ownership rights. When there is no money coming in, everyone wants to split things down the middle. However, once there is money or it looks like there will be no money, businesses start to quibble. In order to avoid costly, drawn out battles that could prevent businesses from furthering an otherwise fruitful relationship, it is important to outline how all parties are to be compensated for their hard work, time and ingenuity once their relationship has taken off as well as when it has reached its conclusion.

Outlining business plans in writing through an agreement not only forces the parties to talk about their innovation strategy, marketing plans, and production plans; it also enables them to have a clearer direction for their relationship.  If anyone is worried that creating a detailed, written plan will inhibit their creativity, then remember that a good agreement should leave some room for flexibility. Allowing such flexibility can lead to great innovation and profitability. Ultimately, however, having a clear outline of where the parties’ want to go, how they want to get there, and what they need to get to that point (the “what” usually being the IP) can lead to a more profitable and innovative business relationship and can prevent costly future litigation.

2.     Be Conscious of Indian Patent Filing Requirements and Tolling Restrictions. Understanding Indian patent application filing requirements and the interplay between them and other foreign patent filing requirements is essential for businesses to ensure the broadest global patent protections for their resulting innovations. The most important thing for non-Indian businesses to realize is that Section 39 of the Indian Patent Act requires that patent applications for any invention created with the help of Indian residents must first be filed in India. Yes, before filing an international application under the Patent Cooperation Treaty, before filing a U.S. patent application with the United States Patent and Trademark Office (USPTO), and before filing a patent application anywhere else, foreign businesses working with Indian inventors must file a patent application with India’s patent office (The Controller General of Patents, Designs, and Trademarks (Controller)).

Does that sound unreasonable? Foreign businesses may be able to apply for special permission from the Controller to initially file abroad, but don’t bet on the Controller bending the rules.  If no special permission is given, a foreign business must wait for approximately six weeks after filing in India to file elsewhere.

So, if a foreign business has applied with the Controller and waited six weeks, they can now submit applications anywhere else…right?  Sure!  Just make sure not to dilly-dally because filing in India limits the amount of time a business has to file their patent application with the USPTO and other national patent offices. Knowing the timelines from start to finish of the Indian patent application system and how filing dates in India affect the requirements for filing applications in other countries can greatly impact business decisions.

Parting Thoughts. Go forth and innovate with Indian resident compatriots! The considerations above and recent Indian pharmaceutical patent decisions should not stop foreign businesses from doing so. Collaboration enables people to create great innovations, but every business relationship, whether down the hallway or across the world, has its own challenges and limitations. It’s good for businesses to be honest about those challenges and to create a plan for overcoming them before they run into them. These general suggestions don’t apply to everyone and it’s always wise to consult with qualified local counsel and persons who can advise on the particulars of a specific business. In the end, it will save businesses a lot of time, headaches, and money to simply invest in the relationship by setting it up correctly.

Also, no matter how overwhelming the planning process may seem, just remember, at least you’re not going up against Bollywood screenwriters who generously “borrow” from American film. In cases like those, it’s best to pop some popcorn, settle onto the couch, and enjoy the results – because the results ARE rather glorious, are they not?

Factors to Consider in Cross-Border Trade Secret Protection

Trade secrets are arguably the most common form of intellectual property transmitted across borders in today’s global market. Any business that seeks to capitalize on foreign market opportunities—either by working with a foreign partner or establishing their own foreign operations—is likely to transmit confidential information abroad. However, such cross-border transmissions directly impact the legal protections afforded to such information as the extent of trade secret protection and enforceability of trade secret rights varies between countries. Examining some of the main differences in trade secret protection and enforceability between countries is important as businesses increasingly must choose how to contractually structure protections for their confidential information abroad. Further, understanding the extent of trade secret protections afforded to confidential information in different markets can help businesses establish effective country-specific trade secret protection strategies that address the strengths and weaknesses of a particular country’s legal protections for trade secrets.Particular factors that should be considered include:

  • Qualifying confidential information
  • Injunctive enforceability of trade secret rights
  • Foreign judicial system effectiveness

Qualifying Confidential Information. A preliminary factor for businesses to consider is the extent to which their confidential information is protected under a country’s trade secret laws. Most countries have adopted a minimum level of legal protections for trade secrets, yet such protections often vary. World Trade Organization (WTO) member states are required to adopt minimum legal protections for trade secrets. Under Article 3 and Article 39(2) of The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), WTO member states must provide persons or entities of their countries and other WTO member states legal rights to prevent the disclosure of lawfully-held information that:

  1. Is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
  2. Has commercial value because it is secret; and
  3. Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

As this widely accepted minimum legal requirement is ambiguous, WTO member states have the ability to establish their own variation, often differing the amount and type of confidential information qualifying for trade secret protection. For example, the U.S.[1] and China[2] provide legal protection for confidential information that has actual (current) or potential commercial value, where TRIPS is silent about the time to which such value must be established.[3] This means that a business that has developed or acquired confidential information that will be commercially valuable at a future date will qualify for legal protection for such information in these countries, subject to protection and secretive requirements.

In contrast, several countries are silent on this commercial value issue and maintain other factors for determining trade secret protection. For example, in India, trade secrets have been judicially defined as “formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others.”[4]  Not only is this definition silent on when commercial value must be established, it is also silent on what constitutes sufficiently reasonable protection procedures for such information to qualify for trade secret protection.

As these examples illustrate, countries often maintain different qualifying standards for trade secret protection despite satisfying their TRIPS obligations. Based on these differences, businesses must carefully determine what portions of their confidential information qualifies for trade secret protection in a particular country.

Injunctive Enforceability of Trade Secret Rights. Trade secret owners must also consider their ability to protect their trade secrets through injunctive relief in a particular country. Most countries will grant a permanent injunction against a person or entity after they are found by a Court to have misappropriated a trade secret. However, this often requires initiating and succeeding in a legal action, which is not certain to succeed and may take a substantial amount time before being granted. This could harm the commercial value of the confidential information, and in many cases, the potential success of the trade secret owner’s foreign business operations or strategies. As a result, seeking a preliminary injunction, namely an injunction sought at the onset of a trade secret misappropriation proceeding, is essential to effective trade secret protection.

A business’ ability to seek a preliminary injunction to protect their trade secret varies from country-to-country. In the U.S., a trade secret owner may seek a preliminary injunction against a misappropriating party or parties providing them assistance through an initial motion in a misappropriation proceeding.[5] Although U.S. jurisdictions generally maintain high evidentiary burdens for trade secret owners to obtain preliminary injunctions[6], U.S. courts allow evidentiary exchanges between the parties (known as discovery) and copies of original evidence to be admissible under specific requirements. U.S. courts may also permit discovery proceedings to be expedited based on the sensitivity of the confidential information at issue.[7]

In contrast, other countries make obtaining a preliminary injunction more difficult. For example, preliminary injunctions are rarely granted in Chinese trade secret cases due to the absence of a discovery process and restrictive evidentiary burdens. Chinese trade secret proceedings do not have discovery processes and Chinese Courts will generally only accept original written forms of evidence.[8] This means that trade secret owners in China are forced to gather their own evidence, and can only admit original written evidence, which makes satisfying the evidentiary burden to obtain an preliminary injunction substantially more difficult.

As illustrated with China’s trade secret injunction procedures, trade secret owners need to determine what challenges they will face in enforcing their trade secret protections under a country’s judicial procedures, regardless of the extent of a country’s trade secret protections.

Foreign Judicial System Effectiveness. Even if a country’s injunctive judicial procedures are surmountable, a country must also have an effective judicial system to even allow injunctive enforcement to be brought forward. This requires determining whether a country has an effective judicial system to enforce trade secret protections. There are several resources for businesses to determine the effectiveness of a foreign country’s judicial system, including their national IP offices and trade agencies. In the U.S., the Office of the U.S. Trade Representative (USTR) publishes annual reports (known as Special 301 Reports) that identify IP enforcement concerns for U.S. IP owners by country, including ineffective judicial systems. For example, in the 2013 USTR Special 301 Report, the USTR identified Argentina, Bulgaria, Greece, Guatemala, India, Indonesia, Paraguay, Peru and Turkey as having judicial system inefficiencies for enforcing IP rights.

Parting Notes. Although the above-mentioned factors are important when evaluating cross-border trade secret protections, examining such factors only comprise a portion of an effective foreign trade secret protection strategy. Establishing the best protections for trade secrets abroad should also include other protection measures including the development of internal business protocols to prevent unauthorized information disclosures, among other procedures. Working with qualified counsel can effectively assist with evaluating both the above-mentioned factors and internal business protocols.


[1] Uniform Trade Secrets Act, § 1.4; 18 U.S.C. § 1839(3)(b).
[2] J. Benjamin Bai and Guoping Da, Strategies for Trade Secrets Protection in China, 9 Nw. J. Tech. & Intell. Prop. 351, 359 (2011) available at http://scholarlycommons.law.northwestern.edu/njtip/vol9/iss7/1  (citing Zui Gao Ren Min Fa Yuan Guan Yu Shen Li Bu Zheng Dang Jing Zheng Min Shi An Jian Ying Yong Fa Lv Ruo Gan Wen Ti De Jie Shi, Interpretation of Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition, art. 10, Fashi 2/2007 (Sup. People’s Ct. 2007) (China)).
[3] Pedro A. Padilla Torres, Overview of International Trade Secret Protection, National Law Center for Inter-American Free Trade, (2001) available at http://db.natlaw.com/interam/mx/ip/sp/spmxip14.htm.
[4] Zafar Mahfooz Nomani and Faizanur Rahman, Intellection of Trade Secret and Innovation Laws in India, J Intell. Prop Rights, 341, 346, (Jul. 2011) (citing American Express Bank Ltd. v Priya Puri (2006) III LLJ 540 (Del) (India)).
[5] Ronald S. Wynn, Trade Secret Litigation: TROs, Preliminary Injunctions, and Some Things to Think About First, HansonBridgett, 2-3, Mar. 2012 available at http://www.hansonbridgett.com/Our-Attorneys/~/media/Files/Publications/IP_alert_trade_secret_litigation_2012.pdf.
[6] Id. at 2 (burden generally includes “(1) probable success on the merits, (2) irreparable harm without the requested injunction, and (3) a balance of hardships between the trade secret claimant and the alleged misappropriator that favors the injunction”).
[7] Id. at 3.
[8] J. Benjamin Bai and Guoping Da, supra note 2, at 362-63.

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.

Determining Whether to Register a Trademark in India Under the Madrid Protocol

Last month, India officially acceded to The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). This will allow trademark owners from Madrid Protocol countries the ability after July 8, 2013 to register their trademarks in India based on their registrations in their home Madrid Protocol country. From an initial observation, registering a mark in India under the Madrid Protocol offers several advantages over a direct registration at India’s trademark office, The Controller General of Patents Designs and Trademarks (CGPDTM). Reduced filing fees and a uniform registration process are among these advantages. However, there are several issues trademark owners should evaluate when considering whether to a file a mark in India under the Madrid Protocol. First, it is important to understand how the Madrid Protocol works.

How Does the Madrid Protocol Work? The Madrid Protocol allows trademark owners to file an international trademark application based on a national trademark registration in a Madrid Protocol country (known as the “basic application” or “basic registration”) to obtain trademark protection in other Madrid Protocol countries. Once filed, an international application is submitted to the International Bureau at the World Intellectual Property Organization (WIPO) and evaluated based on international requirements. If approved, the trademark is registered for protection in countries designated in the international application (subject to such countries’ potential opposition). Once successfully registered, the trademark is treated as if it were filed in each of the foreign countries identified in the international application, subject to specific restrictions.

Central Attack. Determining whether an international registration is subject to central attack is the most crucial issue in determining whether to consider filing a trademark in India under the Madrid Protocol or directly with the CGPDTM. Central attack occurs when a basic application or its resulting registration of a mark is withdrawn, lapsed or renounced within five years of the international registration of the mark under the Madrid Protocol. When this occurs, all Madrid Protocol international trademark registrations filed under the basic application are invalidated. However, after this five year period, a trademark owner’s Madrid Protocol international registration becomes independent of its basic application. This allows a trademark to qualify for national registration in the foreign countries identified in the international registration regardless of its invalidation in its native Madrid Protocol country.

Based on these circumstances, a trademark owner who can ensure that their mark’s basic application or resulting registration will not be invalidated within five years after international registration under the Madrid Protocol may find registering their mark in India under the Madrid Protocol more advantageous. However, if a trademark owner knows that their basic application or resulting registration will likely face potential invalidation within five years of filing a Madrid Protocol international registration in India, a direct filing with the CGPDTM would likely be a more prudent choice.

**Important Note**: A trademark owner whose basic application or resulting registration is subject to potential central attack in their home country may seek national registration in another Madrid Protocol country as their basic application, and then file a international registration in India through the Madrid Protocol. This can be done if the owner has enough presence in that Madrid Protocol country to qualify as a “real and effective industrial or commercial establishment.”

As it is difficult to determine the threat of central attack or if a trademark owner can register their mark in a foreign Madrid Protocol member state, obtaining qualified counsel to assess such issues is always suggested.

Registration Costs. If costs are a trademark owner’s main concerns, the Madrid Protocol provides upfront cost savings. Yet, additional expenses may arise if an international registration is opposed. Although varying based on currency rates, legal fees and the number of registration classes, registering a trademark in India through the CGPDTM costs roughly between US$300.00-$500.00. In comparison, filing an international application under the Madrid Protocol can be substantially less. For example, a Madrid Protocol filing fee in the U.S. is US$100.00-$150.00 per class (excluding fees for the basic application and associated legal costs).

However, as Madrid Protocol registrations are subject to opposition from national trademark offices, a trademark owner’s Madrid Protocol registration that becomes subject to opposition by the CGPDTM may have to spend additional funds to overcome such an opposition. Under Article 5(1) of the Madrid Protocol, any Madrid Protocol member state trademark office may object to a Madrid Protocol international registration based on international criteria provided in Paris Convention for the Protection of Industrial Property. Defending against such an opposition may negate any cost savings obtained from a Madrid Protocol registration as a trademark owner would likely have to hire counsel to assist with such a defense. Although registering the same mark under a direct CGPDTM filing may also subject its owner to a CGPDTM action, working with qualified Indian counsel in registering a trademark directly with the CGPDTM may help to mitigate the risk of such an action, or at least provide immediate and knowledgeable assistance in the defense of a potential CGPDTM action.

Assignments and Amendments. Determining whether the Madrid Protocol should be utilized to register a mark in India also depends if the trademark owner intends to amend or assign the mark’s international registration. Article 9 of the Madrid Protocol only permits a Madrid Protocol international registration to be assigned to a person or entity who is a national, domiciled, or has a substantial business presence in a Madrid Protocol member state. This potentially limits the economic desirability of a Madrid Protocol international registration as it prohibits its assignability. For example, Canada and Brazil, two major world economies, are currently not Madrid Protocol members, meaning that their citizens or businesses may not likely become assignees to an Indian Madrid Protocol registration. If a trademark owner knows that they are likely to quickly assign their Madrid Protocol registration in India after registration, as a part of a sale of a business or otherwise, such foreign assignment restrictions should be considered when choosing how to register their mark.

Additionally, the Madrid Protocol restricts amendments to international registrations. An international trademark application filed under the Madrid Protocol cannot be amended once it is submitted for examination to the International Bureau at WIPO. These restrictions appear to run contrary to rights provided under Indian trademark law. Under Article 22 of India’s Trade Marks Act, the CGPDTM Registrar may allow a trademark application, either before or after registration, to be amended under “just” circumstances. If a trademark owner knows or believes that they will likely need to amend their Indian trademark application or registration, they should consider a direct registration with the CGPDTM over a Madrid Protocol registration because a direct registration will allow greater registration flexibility.

Parting Issues to Consider Regardless of Registration. Regardless of which Indian trademark registration process a trademark owners chooses, enforcing trademark protections in India remains challenging. In the 2013 Special 301 Report by the Office of the U.S. Trade Representative, India was identified as having judicial inefficiencies and insufficient criminal enforcement against IP infringers. These problems can make any type of trademark enforcement efforts in India difficult. Based on these concerns, trademark owners should work with qualified local counsel to ensure effective enforcement of their marks in India.

What does India’s Madrid Protocol accession mean for your business? 

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.

USTR Releases Review of Notorious IP Infringement Markets

The Office of the U.S. Trade Representative (USTR) released an Out-of-Cycle Review of Notorious Markets on Thursday, December 13, 2012, which identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial intellectual property piracy and counterfeiting. The Review included particular social media, multi-platform, deeplinking, cyberlocker, business-to-business, business-to-consumer, bit torrent indexing, bit torrent tracking, and pay-per-download websites. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Pakistan, Paraguay, Thailand, and Ukraine were also deemed notorious.

Other notable changes in the Review included the removal of Chinese websites Taobao and Sogou as notorious markets, for their efforts to work with rights-holders to identify infringing content on their websites.

A copy of the Review is available here.