Last month, I had the privilege of being quoted in Bloomberg BNA‘s article on ongoing North American Free Trade Agreement (NAFTA) talks on copyright and digital trade. Particularly, I discussed the current status of Mexico’s online copyright environment, and the problems faced by rights holders in seeking extrajudicial online enforcement of rights in their works under existing Mexican copyright law.
*Note* The Meeting below has been cancelled. Further information is available here.
The U.S. Patent and Trademark Office (USPTO) announced late last week that it will hold a public meeting on July 17, 2017 at its Alexandria, Virginia headquarters on measuring the impact of voluntary initiatives to reduce online intellectual property infringement.
As private online retail and social media platforms such as Amazon and Facebook are becoming the main channels in which people shop and socialize respectively, voluntary IP enforcement measures taken by these and other online parties are increasingly shaping how IP is enforced online—with both positive and negative reception. Google is a perfect example of this phenomenon. Google currently handles millions of online copyright and trademark takedown requests a day, up from merely dozens a day just a decade ago. Based on its heightened role as one of the Internet’s main search engines and online service providers, Google has developed its own voluntary initiatives to deter trademark and copyright infringement including removal of listings that have received repeated notices of IP infringement. While arguably taken to protect against any contributory liability (see 17 U.S.C. § 512(i)(1)(A)), Google’s voluntary enforcement measures such as its removal of repeat infringers is shaping how IP is protected online and how content rights holders address online IP protection. Despite such influence, Google has in the past also faced scorn by such rights holders for not going far enough with other voluntary measures, such as demoting search results of known infringers.
The July 17th meeting is a part of the USPTO’s recent outreach efforts to such interested parties concerning their voluntary online IP enforcement regimes, and is intended to evaluate how such private parties are addressing online IP enforcement—both and home and abroad. Topics to be discussed at the meeting include (among others) evaluating the effectiveness of self-regulatory regimes, presenting case studies of certain private sector initiatives, discussing the role of voluntary undertakings in raising consumer awareness and stemming revenue flows to bad actors (i.e. infringers), as well as others.
Further information about the meeting is available here.
A recent story out of Ireland highlights the importance of understanding territorial trademark protection requirements when registering trademarks—both at home and abroad.
Techdirt and The Spirits Business recently reported about Leo Mansfield, an entrepreneur from Northwestern Ireland who opened a retail outlet in Clifden, Ireland in 2009 called Conn O’Mara, a play on the name of the geographical region where the store is located (CONNEMARA). Since opening his store, Mansfield has decided to produce and sell beer under the store’s name, and filed a trademark application for CONN O’MARA at the Irish Patent Office for beer and alcohol beverages including whisky in Class 32 and 33 (Trademark No. 253618).
U.S.-based Beam Suntory, a subsidiary of Japan beverage behemoth Suntory, filed a notice of opposition at the Irish Patent Office against Mansfield’s CONN O’MARA trademark application citing his trademark’s likelihood of confusion with its CONNEMARA trademark for whisky owned by its locally-owned distillery, Cooley Distillery. Mr. Mansfield has since begun a public relations and petition campaign to contest Beam Suntory’s trademark opposition. Specifically, Mansfield has made statements that CONNEMARA is the name of the geographical region in which his store and the Cooley Distillery are located, and as such, Beam Suntory cannot monopolize use of a geographical region name as a trademark. He has even gone so far as starting a public petition against Bean Suntory’s opposition proceeding.
Mr. Mansfield defense of his store is admirable. However, his story drives home the importance of brand owners understanding differences between trademark protection requirements from country-to-country.
If Mr. Mansfield case had occurred in the U.S., he may have been able to defend against Beam Suntory’s opposition and obtain registration for his trademark. With limited exceptions, the U.S.’ federal trademark act (Lanham Act; 15 U.S.C. § 1052(e)(2)) prohibits registration of a trademark that is “primarily geographically descriptive” of the goods of its owner. As such, Beam Suntory’s CONNEMARA trademark, as used by Cooley Distillery, would not be entitled to protection in the U.S., meaning Beam Suntory likely could not have brought forth an opposition.
Unfortunately, Ireland provides no similar registration restrictions on geographically descriptive trademarks. Ireland’s trademark legislation, the 1996 Trade Marks Act, does not bar registration of a trademark for being primarily geographically descriptive. As such, Bean Suntory’s trademark rights to CONNEMARA in Ireland are not only valid, but will likely prevent Mr. Mansfield from successfully defending against Bean Suntory’s opposition.
What’s The Takeaway? Brand owners wishing to seek trademark protection for their brands in multiple countries need to consider whether their brand names and logos would be entitled to trademark protection not only in their own country, but also in their expected foreign markets of expansion. Working with a qualified trademark attorney with multi-jurisdictional strategizing experience can help to ensure differences in trademark protection across jurisdictions are taken into consideration.
As reported in multiple news outlets, the U.S. Copyright Office (USCO) published a Notice of Inquiry concerning a USCO study to review current U.S. laws protecting moral rights of creators of original works—namely the rights of attribution and rights of integrity, as well as evaluate reforms to provide additional protections for such rights. Separate from copyright protections, moral rights are intended to preserve the relationship between an artist and their work, regardless of the expiration of copyright protections under applicable law and any transfer(s) of copyright title. While recognized in many foreign jurisdictions as rights available to creators of all forms of copyright-protected works, the U.S. only recognizes moral rights for creators of visual art works under specific conditions codified in the Visual Artists Rights Act (17 U.S.C. § 106A) (VARA).
In this inquiry, USCO is seeking public comment on: (1) availability of rights of attribution under state and federal unfair competition laws—which was largely restricted by the U.S. Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 34-35 (2003); (2) expansion of rights of attribution and rights of integrity under VARA to musical and audiovisual performers—thereby bringing the U.S. into compliance with the WIPO Copyright Treaty, WIPO Performances and Phonograms Treaty, and recent international legal trends; (3) new and trending means to license rights of attribution and rights of integrity (e.g. Creative Commons licenses); and (4) changes in technology to improve identification and attribution of licensed works.
Comments are being accepted until March 30, 2017 via USCO’s online portal here.
I am honored to announce that I will be returning to my alma mater—Gonzaga University School of Law to speak on state, federal and foreign trademark prosecution and licensing for cannabis businesses at the Second Annual Gonzaga Intellectual Property Merit Scholarship CLE on September 23, 2016 in Spokane, Washington. We have an amazing panel with speakers on a number of interesting IP issues. Hope you can make it, and if you cannot, it will be webcasted so watch it online. See you there!
It was reported in several news outlets this week that Singapore’s Ministry of Law and Intellectual Property Office of Singapore (IPOS) are commencing a public consultation concerning reforms to Singapore’s Copyright Act. As detailed in a Consultation Paper released by both agencies, the consultation intends to obtain public feedback concerning multiple proposed reforms to the Copyright Act that will have a direct impact on rights holders and interested parties in Singapore and abroad including the establishment of a voluntary copyright registration system, expansion of copyright fair use exceptions and allowable technological protection measures, amending rights of attribution requirements, as well as several others.
The consultation will run from August 23, 2016 to October, 24 2016 and rights holders, impacted businesses, as well as the general public, are encouraged to submit feedback via designated online forms available here.
I am happy to announce that I have the honor of publishing an article in the European Intellectual Property Review (EIPR) to be released this month. Titled “The Effectiveness of the Trans Pacific Partnership’s Internet Service Provider Copyright Safe Harbour Scheme,” the article examines the Trans Pacific Partnership’s (TPP) proposed copyright safe harbor provisions for Internet Service Providers (ISP), its implications on existing TPP member state ISP safe harbor regimes, and rights holders’ abilities to enforce rights in their works online in such states.
Earlier this month, the Office of the U.S. Trade Representative (USTR) announced it had concluded a Work Plan with the Honduran Government to strengthen intellectual property (IP) protection and enforcement. Included in the Work Plan are commitments by the Honduran government to increase criminal IP prosecutions, improve IP enforcement coordination efforts with U.S. authorities, evaluate the adoption of trademark customs recordation procedures, and enhance and clarify the Honduran geographical indication (GI) protection registration process.
The adoption of the Work Plan is a positive step in U.S.-Honduran IP relations. Honduras was identified in the USTR’s 2015 Special 301 Report as being subject to an out-of-cycle review to determine whether Honduras should be included in the USTR’s Special 301 Report Watch List, namely countries considered by the USTR to have inadequate IP protections. While the 2016 Special 301 Report will not be released until April 2016, the conclusion of the Work Plan should assist Honduras in remaining off of the 2016 Special 301 Report Watch List.
Last week, I had the privilege to be interviewed for one of my favorite podcasts, IP or otherwise, IP Fridays about online copyright enforcement implications under the Trans Pacific Partnership (TPP; Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam). Particularly, I discussed the implications of the TPP’s proposed Internet service provider (ISP) safe harbor scheme, and how it will affect TPP member states’ current copyright laws, copyright rights holders, ISPs, and Internet freedoms, as will be further detailed in my article on the same topic for the European Intellectual Property Review to be released in March 2016.
A link to the podcast can be found here.
Intellectual Property (IP) Watch reported late last month that Nigeria was in the process of reforming its copyright laws for the digital age, including the adoption of its own notice and takedown Internet service provider (ISP) safe harbor scheme. As detailed in the Nigerian Copyright Commission’s (NCC) draft 2015 Copyright Bill (Draft Bill), the proposed notice and takedown scheme would create extrajudicial legal procedures in which an owner of a copyright protected work can petition a ISP subject to Nigerian jurisdiction to remove content hosted by the ISP that infringes the work. Like in the U.S. under the Digital Millennium Copyright Act (DMCA) and other countries that have notice and takedown safe harbor schemes, such an ISP would be required to remove such hosted content under certain circumstances in order to qualify for a safe harbor form contributory liability for copyright infringement.
If adopted, such procedures would make Nigeria one of the few countries in Africa with a notice and takedown scheme, giving copyright owners greater means of online enforcement of their rights in Nigeria, and potentially beyond. However, Nigeria’s draft notice and takedown scheme varies from its foreign counterparts. Further, it is uncertain whether it will be adopted, and if so, whether it will be adopted in its proposed form. To understand these issues, it is important to first understand the provisions of Nigeria’s proposed notice and takedown scheme.
Section 47 of the Draft Bill provides that an owner of a copyright-protected work or their agent (Complainant) may submit a notice of alleged online infringement of their work to an ISP hosting such infringing content. In order for such a notice to be effective, it must include the following information:
- A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right in a work that is allegedly infringed;
- Identification of each work claimed to have been infringed;
- Identification of the content that is claimed to be infringing such work(s), and information reasonably sufficient to permit the ISP to locate such content;
- Contact information reasonably sufficient to permit the ISP to contact the Complainant, such as an e-mail address, telephone number, and/or physical address;
- A statement under penalty of perjury that the Complainant has a good faith belief that use of the allegedly infringing content in the manner complained of is not authorized by the copyright owner, their agent, or the law; and
- A statement that the information in the notice is accurate, and that the Complainant is authorized to act on behalf of a owner of an exclusive right that is allegedly infringed.
Once a notice is submitted to an ISP, the ISP shall promptly notify their subscriber hosting the allegedly infringing content (Subscriber) of receipt of the notice. If the Subscriber fails to provide the ISP with information justifying their use of such content within ten days after the receipt of the ISP’s notification, the ISP must take down or disable access to such content. However, if the Subscriber provides information justifying their legitimate use of the content, or the ISP is convinced that the Complainant’s notice is without merit, the ISP will promptly inform the Complainant of their decision not to takedown or disable such content.
An ISP can restore access to taken down or disabled content if the ISP receives a written counter-notice from the Subscriber, which the ISP has forwarded to the Complainant immediately upon receipt; and the ISP does not receive, within 10 days, a subsequent notice from the Complainant indicating that no authorization has been granted to the Subscriber for use of the content.
Further, the Draft Bill states that an ISP shall not be liable for any action taken under the notice and takedown scheme that is taken in “good faith.” A copyright owner dissatisfied with a determination or action by an ISP may refer their matter to the NCC for further evaluation.
Evaluating The Proposed Scheme
Now that we know the NCC’s proposed notice and takedown scheme under the Draft Bill, what are its strengths and weaknesses?
Mandated Removal: The Draft Bill obligates an ISP to remove infringing content upon receipt of a Complainant’s notice. As such, it ultimately makes the Draft Bill’s notice and takedown scheme more robust than ISP safe harbors without mandated take down or disabling provisions. For example, the NCC’s proposed scheme is more robust that notification systems that solely require an ISP to notify a Subscriber of their infringing acts upon receipt of a Subscriber’s notice as in Canada, or national schemes that require multiple Complainant notifications and/or expedited judicial action in order for a ISP to be mandated to take action as in New Zealand or Chile.
Delayed Response Time: While the NCC’s proposed scheme mandates an ISP’s removal of hosted content under certain circumstances, it only mandates that an ISP remove infringing content 10 days after receiving a Complainant’s notice and upon receiving no response from a Subscriber. This contrasts from the DMCA that requires an ISP to act “expeditiously” to remove infringing content upon receipt of a Complainant’s notice. See 17 U.S.C. § 512(b)(2)(E). However, the NCC’s proposed scheme still mandates that an ISP eventually remove infringing content after the 10 day period, mirroring similar waiting periods in other countries (Japan (7 day wait period), and Malaysia (48 hours), among others), and without requiring any reposting of such content should no further legal action be taken by the Complainant (as in India).
Ambiguous Exemption: While the Draft Bill obligates an ISP to remove infringing content under qualifying circumstances as described above, its good faith clause may allow an ISP to evade liability for failing to remove infringing content should the ISP’s acts or omissions be considered in good faith. Without any further definition of “good faith” in the Draft Bill, it is uncertain what such a standard would be, nor how it will be interpreted.
What’s The Takeaway? It remains to be seen whether the NCC’s notice and takedown scheme will be adopted, and whether it will be adopted in its current proposed form. Its provisions offer multiple benefits, as well as some drawbacks, for copyright owners compared to its foreign counterparts. Those with current online copyright enforcement concerns in Nigeria should seek qualified Nigerian counsel.