In recent months, representatives from the Trans Pacific Partnership Agreement (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) member states have been pushing to finalize a final TPP agreement. A particularly contentious issue in these negotiations has been the intellectual property (IP) chapter of the TPP Agreement. A predominant proposed version, the U.S. Draft IP Chapter, has been controversial as it requires TPP member states to adopt IP standards that are in many cases is on par with those under U.S. law, and in some cases, beyond U.S. law and generally-accepted global IP protection standards in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). As a result, several TPP member states have objected to U.S. Draft IP Chapter, thereby stalling progress towards a final TPP agreement.
Of particular importance in these debates is the online copyright enforcement protections procedures the TPP agreement will mandate for its member states. If enacted, the U.S. IP chapter would likely require TPP member states to adopt copyright enforcement measures that would allow copyright owners, rights holders, or agents thereof (collectively, “Authorized Party”) to directly petition Internet Service Providers (ISPs) to remove hosted infringing content. Article 16.3(a) of the U.S. Draft IP Chapter requires that TPP member states provide “legal incentives for [Internet] service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Although ambiguous, adopting such provisions would likely require TPP member states to maintain or enact a form of copyright protection protocols that would allow Authorized Parties to petition ISPs hosting or transmitting infringing content to remove such content.
The main question arising from these potential reforms is whether they would result in TPP member states adopting U.S.-like notice and takedown protocols, or less forceful ISP copyright enforcement measures. Notice and takedown systems generally provide ISPs a safe harbor from liability for hosting or transmitting infringing content if they remove infringing content they host or transmit upon receipt notice from an Authorized Party. In contrast, other TPP member states do not provide copyright owners such a level of protections. Some of these states do not require that a ISP take down allegedly infringing content upon receipt of notice from an Authorized Party to qualify for safe harbors. Others require that Authorized Parties seek judicial copyright enforcement to combat online infringement, which is a more delayed and costly process.
Although not stated in the U.S. Draft IP Chapter, the U.S. may, as it has in previous U.S. free trade agreements (FTAs), negotiate that TPP member states adopt notice and takedown protocols in TPP side letters. In previous U.S. FTAs, the U.S. has executed additional annexed agreements, known as “side letters,” where other countries agreed to adopt U.S.-like notice and takedown protocols. This has had varying degrees of success. Australia, Peru and Singapore, among others, have adopted notice and takedown protocols similar to those under the U.S.’ Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)) in FTA side letters with the U.S., while Chile rejected adopting such a system.
Similar mixed outcomes could result from the TPP as well. Brunei Darussalam, Mexico and Vietnam do not maintain any ISP copyright enforcement protocols short of judicial action. Further, a number of TPP member states including Canada, Chile and New Zealand maintain online copyright enforcement systems that arguably do not provide the same level of direct and expedient enforcement power or protections to Authorized Parties as notice and takedown systems. Lastly, some TPP member states such as Malaysia that do maintain notice and takedown protocols have called for establishing TPP agreement implementation exceptions for existing domestic legislation. This would likely give TPP member states with weaker online copyright enforcement systems such as Canada, Chile and New Zealand the ability to maintain their less forceful online copyright enforcement systems, while still remaining parties to the TPP Agreement.
Despite these limitations, the TPP’s potential adoption of notice and takedown protocols will ultimately impact the ability to which Authorized Parties can more quickly, cheaply and effectively enforce online copyright protections in the TPP member states. Adoption of notice and takedown protocols will enable Authorized Parties to more easily enforce online copyrights in TPP member states, while making such protocols optional would likely make such enforcement more difficult. Only time will tell whether the U.S. and other notice and takedown proponents will persuade other TPP member states to adopt notice and takedown protocols.
To understand how the TPP would impact individual TPP member state online copyright enforcement systems, the following are brief summaries of the TPP member states’ current online copyright enforcement systems. However, there are a few things to note:
- Jurisdiction and National Treatment: In order for an Authorized Party to utilize a notice and takedown in a TPP member state, their content must generally qualify for national copyright protection in that TPP member state, and the particular ISP must be subject to the jurisdiction of that country. Further information about these preliminary issues can be found in my March 25, 2013 posting.
- Enforcement System Legend: As mentioned, online copyright enforcement procedures vary amongst the TPP member states. Countries that maintain a notice and takedown protocols are identified below as a “Notice and Takedown,” while countries that maintain systems that simply require ISPs to notify infringers of their infringing acts without infringing content removal are listed as “Notice and Notice.” Countries that do not have means for Authorized Parties to directly enforce their copyright protections through ISP notices, and are instead forced to seek judicial action are referred to as “Judicial System.”
TPP Member State Online Copyright Enforcement Systems
|Enforcement System||Notice and Takedown|
|Overview and Notes||The U.S. notice and takedown protocols have been implemented in FTAs with Bahrain, Dominican Republic, Morocco, Oman, Peru, Singapore and South Korea.|
Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))
|Enforcement System||Notice and Takedown|
|Overview and Notes||Australia adopted notice and takedown protocols based on a side letter annexed in the U.S-Australia FTA.|
Regulation 20(I-J), 1969 Copyright Regulations, Schedule 10 (Part 1), 1969 Copyright Regulations
|Enforcement System||Judicial System|
|Overview and Notes||Brunei does not currently maintain any legal means for Authorized Parties to directly petition ISPs to takedown infringing content. However, recent reports have indicated that Bruneian authorities are evaluating copyright reforms, which may include ISP notice and takedown protocols.|
|Enforcement System||Notice and Notice|
|Overview and Notes||Although Canada considered adopting a notice and takedown protocols in 2006, they opted for a notice and notice system in 2012 in order to balance the interests of copyright owners and Internet users.|
Section 41.25-41.27, The Copyright Act
|Enforcement System||Judicial System (*notice and takedown variation)|
|Overview and Notes||Chile rejected adopting notice and takedown protocols in both the U.S.-Chile FTA and proposed copyright reforms in 2010. Instead, Chile requires that Authorized Parties submit an expedited judicial petition to evaluate alleged infringement and be granted a takedown.|
Article 85R, Law No. 20.435 (amending Law No. 17.336 on Intellectual Property
|Enforcement System||Notice and Takedown|
|Overview and Notes||Japan’s notice and takedown protocols establishes that allegedly infringing content will be taken down seven days after notice is provided from the ISP to the alleged infringer.|
Article 3(2)(ii), Act No. 137 0f 2001 (Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Senders)
|Enforcement System||Notice and Takedown|
|Overview and Notes||Malaysia enacted copyright reforms in 2010 that permit Authorized Parties to submit infringement notices to ISPs that will remove infringing content within 48 hours of notice to the alleged infringer from the ISP. However, The International Intellectual Property Alliance (IIPA) has criticized Malaysia’s notice and takedown protocols for not providing enough details about notice requirements and enforcement procedures.|
Article 43H, Copyright (Amendment) Act 2010
|Notice Requirements||As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.|
|Enforcement System||Judicial System|
|Overview and Notes||Mexico has no legal procedures for Authorized Parties to remove infringing online content short of seeking judicial action. It is also important to note that Mexican telecommunications laws prohibit ISPs from disclosing their customers’ personal information.|
|Enforcement System||Notice and Takedown-Judicial System Mix (aka Three Strikes)|
|Overview||After enacting notice and takedown protocols in 2008, New Zealand repealed them in February 2010. They were replaced with a Three Strikes System, requiring Authorized Parties to submit multiple notices to an ISP, and a takedown application to the New Zealand Copyright Tribunal in order to obtain the removal of infringing content. The Three Strike System subjects the Authorized Party to fees of NW$25.00 (US$20.00) per notice, and NZ$200.00 (US$208.00) per application.|
Section 92C and 92D, Copyright Act 1994;
Section 4, Copyright (Infringing File Sharing) Regulations 2011
|Enforcement System||Notice and Takedown|
|Overview and Notes||Peru adopted notice and takedown protocols based on a side letter annexed in the U.S-Peru Free Trade Agreement.|
|Governing Legislation||Copyright Law (Legislative Decree No. 822)|
|Enforcement System||Notice and Takedown|
|Overview and Notes||Singapore adopted its notice and takedown protocols in 2006 based on a side letter agreement annexed in the U.S-Singapore FTA.|
Section 193C(2)(b) Copyright Act (Chapter 63), Copyright (Network Service Provider) Regulations 2005
|Enforcement System||Judicial System|
|Overview and Notes||Although Vietnam recently adopted Internet liability reforms under the Internet Laws (Decree No. 72/2013), such reforms were silent on online copyright enforcement. The IIPA has criticized Vietnam for failing to adopt effective procedures to address online piracy administrative complaints.|
**Important Note**: Even if a country maintains notice and takedown protocols, an ISP is generally not obligated to take down infringing content despite legal incentives to do so. Those with further questions about a TPP member state’s online copyright enforcement procedures should seek qualified counsel in that particular country.
 Joint Press Statement TPP Ministerial Meeting Bandar Seri Begawan, Brunei Darussalam, Office of the U.S. Trade Representative, Aug. 2013, available at http://www.ustr.gov/Joint-Press-Statement-TPP-Ministerial-Brunei.
 See Sean Flynn, Margot Kiminski, Brook Baker and Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property: American University Washington College of Law, 3, Dec. 6, 2011, available at http://infojustice.org/tpp-analysis-december2011.
 Id. at 50.
 Copyright Issues in the TPP: Malaysia, Public Citizen, 2012, available at http://www.citizen.org/TPP-Copyright-Issues-MY#_ftnref.
 See id.
 See Calls For Brunei To Carry Tougher Copyright Laws, The Brunei Times, Aug. 10, 2013, available at http://www.bt.com.bn/news-national/2013/08/10/calls-brunei-carry-tougher-copyright-laws.
 Paul Chwelos, Assessing the Economic Impacts of Copyright Reform on Internet Service Providers, Industry Canada, Jan. 2006, available at http://www.ic.gc.ca/eic/site/ippd-dppi.nsf/eng/ip01090.html; Bob Taratino, Online Infringement: Canadian “Notice and Notice” vs US “Notice and Takedown”, Heenan Blaikie LLP, Jun. 27, 2012, available at http://www.lexology.com/library/detail.aspx?g=e0e3ffdb-a96f-4176-add3-92fd2812d4bc.
 Chile’s Notice-and-Takedown System for Copyright Protection: An Alternative Approach, Center for Democracy & Technology, Aug. 28, 2012, available at https://www.cdt.org/files/pdfs/Chile-notice-takedown.pdf.
 IIPA 2012 Report: Malaysia, IIPA, 207-08, 2012, available at http://www.iipa.com/rbc/2012/2012SPEC301MALAYSIA.PDF.
 IIPA 2013 Report: Mexico, IIPA, 210, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301MEXICO.PDF.
 Section 92A Bill Introduced in Parliament Today, Behive.Gov.Nz, Feb. 23, 2010, available at http://www.beehive.govt.nz/release/section-92a-bill-introduced-parliament-today.
 IIPA 2013 Report: Vietnam, IIPA, 289, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301VIETNAM.PDF.
I had the honor to guest blog about cross-border online copyright enforcement for Vancouver Canada’s Kusic and Kusic Blog. Check out my article at http://kusic.ca/legislation/protecting-online-content-sides-border.
In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:
- Can you submit such a notification in a particular country?
- Does the country you wish to enforce your IP rights have an IP customs notification system?
- Does such a country’s national IP customs notification system include the type of IP you wish to protect?
- What are the particular foreign customs agency’s IP notification requirements?
Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:
Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.
Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).
Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.
Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.
Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.
If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.
Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.
Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.
What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.
Below are the IP customs notification submission requirements for some of the worlds’ major markets.
Types of IP Covered
|United States||19 C.F.R. 133.1 et seq.
||Copyright and Trademark||Instructions: Copyright and trademark notification (known as e-Recordation) requires:
-The trademark or copyright’s U.S. registration number
-The name, address and citizenship of the IP rights owner
-The place(s) of manufacture of goods bearing the trademark or copyright
-The name and address of individuals authorized to use the trademark or copyright
-The identity of a parent company or subsidiary authorized to use the trademark or copyright (if any)
Fees: US $190.00 per copyright and trademark (per class of goods and services).
Effective Duration of Notification: 20 years.
|e-Recordation Notification Portal|
||Copyright Act 1968, Subsection 135(2)||Copyright and Trademark||General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.
Duration of Notification: Four years.
|China||Decree of the General Administration of Customs, No. 183||Copyright, Patent and Trademark||Requirements: To file a IP customs notification with the General Administration of Customs (GAC), an application must include:
-a copy of the IP rights holder’s business registration certificate and a Chinese translation
-a copy of the Chinese registration certificate for the copyright, patent or trademark
-Proof of Power of Attorney (if registered by an agent)
-Registration fee (see below)
-Licensing agreements (if any)
-Pictures of the relevant goods and their packaging
Submission: Forms can be filled online or by mail.
Fees:Approximately US $130.00 (800 RMB).
|GAC Online Notification Form (In Chinese)|
|European Union||Council Regulation (EC) No 1383/2003, Article 5.5||Copyright, Geographical Indication, Patent and Trademark||The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.
Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).
|Community Application For Action|
|India||Notification no. 47/2007 – Customs (n.t.)||Copyright, Geographical Indication, Patent and Trademark||Registration: The CBEC requires that copyrighted works be registered with Indian Copyright Office, and geographical indications, patents and trademarks with the Office of the Controller General of Patents, Designs & Trade Marks prior to submitting a CBEC customs notification.
Ports of Entry: The CBEC also requires that notifications be submitted to particular ports of entry.
Duration of Notification: Minimum period of one (1) year.
|Online Notification Submission Portal|
**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.
Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.
Understanding the complexities of international copyright law can be confusing. There are several factors for determining whether a work qualifies for copyright protection abroad, what countries a work qualifies for foreign protection in, and what foreign protections are afforded to qualifying works. To understand these complexities (and to show my readers, family, friends and co-workers that I am not an IP robot), I’ve decided to explain how international copyright protections can be understood in practice through the music of my favorite band, The Grateful Dead. The Dead were not only meticulous about recording their live concerts, they also allowed their fans to make concert recordings (FYI, a great examination of the Dead’s recording culture is available in Nick Paumgarten’s recent New Yorker article). Unparalleled in the music world, the Dead permitted their fans to non-commercially record and exchange recordings of their concerts despite such practices generally considered to be copyright infringement.
Beyond providing a lifetime of amazing improvisational music, the thousands of live concert recordings available highlight important issues to consider in determining a work’s copyright protection abroad. To examine these issues, I intend to share some of my favorite Dead recordings that are available from the Internet Archive and highlight several main issues to keep in mind when determining what copyright and related-legal protections a work qualifies for abroad. So here it goes…
Qualifying Works (Playing in the Band – May 17, 1974, P.N.E. Coliseum, Vancouver, B.C.): The two year period of 1973 and 1974 was a creative high-water mark for the Dead when some of their most inspirational and exploratory music was created. This 1974 version of Playing in the Band exemplifies this period with solid interplay between the band members that delves into space and jazz-themed improvisation before reprising after nearly 20 solid minutes of exploration.
This recording also highlights the complexity of determining whether a work qualifies for international copyright protection. In international copyright law, recordings such as this 1974 recording potentially provide international copyright protection to the song’s authors (aka songwriters) and/or composers under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), and its performers (aka musicians) under the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention) and World Intellectual Property Organization Performances and Phonograms Treaty (WPPT).
So not to confuse you too much, in this section I will focus on examining whether this 1974 recording of Playing in the Band qualifies its author and composer, The Grateful Dead’s longtime lyricist Robert Hunter and rhythm guitarist Bob Weir respectively, for international copyright protection under the Berne Convention. For this recording to qualify for potential international copyright protection under the Berne Convention, it must have what is known as “attached.” Attachment requires that either:
- The author of the work is a national of a Berne Convention member state
- The author of the work is a habitual resident of a Berne Convention member state
- The work is first published in a Berne Convention member state or is published in a Berne Convention member state within 30 days after an initial publishing in a non-Berne Convention member state
A list of Berne Convention member states is available here.
Upon attachment and if a qualifying work qualifies for copyright protection under national copyright requirements, it is entitled to protections under that nation’s copyright laws.
Based on these Berne Convention attachment requirements, both Weir and Hunter would likely qualify for international copyright protections in this recording in two ways (*For the sake of analysis, we will assume this 1974 recording was the first publishing of Playing in the Band, although it had been played since 1971). Although this 1974 concert occurred prior to the U.S. becoming a signatory to the Berne Convention and was written/composed by two U.S. nationals, the fact the recording was made in Canada (a Berne Convention member state since 1928) likely means it was first published in a Berne Convention country, qualifying it for attachment under the Berne Convention immediately on May 17, 1974 and potential protections in Berne Convention member states subject to such states’ national copyright protection requirements.
Additionally, the Berne Convention applies retroactively to qualifying works from authors and composers from new member states upon such countries accession to the Convention, subject to national qualifications. This means that once the U.S. became a contracting member of the Berne Convention on March 1, 1989, this recording likely became attached as a qualifying work for protection under the Berne Convention on that date as protections under the Convention began to apply retroactivity to prior published works by U.S. nationals that remain protectable under U.S. copyright terms of protection (see Term of Protections section below for further details). Upon such qualification, Hunter and Weir’s work would then qualify for protection in Berne Convention member states, subject to such countries’ copyright qualifications.
Performers Rights (Fire on the Mountain – October 2, 1977, Paramount Theater, Portland, Oregon): I could have chosen any song to illustrate performers rights, but I chose this recording simply because Fire on The Mountain is one of my favorite Dead songs and this 1977 version from my home state is arguably one of the best ever. Beyond being a first-rate soundboard recording that highlights Keith Godchaux’s rare playing of electric keyboards, it possesses almost psychic interplay between the band members.
This song and its 1977 performance also represent the disparity of copyright protections between authors/composers and performers in a recording. The Berne Convention only extends copyright protections in a work to authors and composers, not performers. Fire on The Mountain was written by Robert Hunter and composed by Dead percussionist Mickey Hart. Despite the entire band’s inspirational playing in this 1977 recording, every band member with the exception of Hart would have little to no international copyright protections in this recording under the Berne Convention based on their non-author/composer status.
However, the Dead members may potentially qualify for international protections in this recording under the Rome Convention or the WPPT. The Rome Convention recognizes performers rights in qualifying performance recordings by providing rights to compensation for broadcasting and reproduction of such recordings, and exclusive rights to prevent unauthorized broadcasting, fixation and reproduction. However, similar to the Berne Convention, recordings must qualify for attachment under the Rome Convention. Such attachment only qualifies for protection for its performers if either:
- The performance takes place in a Rome Convention member state
- It is a qualifying recording (first published or recorded in a Rome Convention member state or the producer is a national of a Rome Convention member state)
- It is a qualifying broadcast (the broadcaster or the transmission was from a Rome Convention member state).
A list of Rome Convention member states is available here.
Unfortunately, the Rome Convention would likely not provide international copyright protections for the band members in this 1977 recording. The U.S. is not a signatory to the Rome Convention (FYI, it is mainly because the U.S. does not recognize a performer’s copyright in a recording). As this 1977 performance was performed in the U.S., by U.S. performers and not broadcasted, it does not qualify as an attached work under the Rome Convention, thereby not requiring any Rome Convention member state to recognize its copyright protection.
It is important to note that even if this recording had qualified for Rome Convention protection, it would have provided less international protections than the Berne Convention. The Rome Convention’s exclusive rights for performers in a work are optional, not required. Additionally, the Rome Convention has fewer signatories than the Berne Convention (91 Rome signatories to 166 Berne signatories). These limitations mean that fewer countries will acknowledge a performer’s rights in a qualifying recording under the Rome Convention than an author’s rights in a qualifying recording under the Berne Convention, and even if countries are Rome Convention member states, they have the ability to limit their recognition of performers’ rights in foreign recordings.
The WPPT (A list of WPPT member states is available here) may provide the band members performance rights in the 1977 recording, yet these international protections are also less comprehensive than those provided under the Berne Convention. The WPPT requires its signatories to extend rights in a recording to performers of other WPPT member states. Provided rights to performers under the WPPT include the right to compensation and exclusive rights including reproduction, distribution and performance, among others. However, like the Rome Convention, the WPPT has a smaller number of signatories (currently 91 countries) than the Berne Convention and member states can withhold implementing the WPPT’s performer rights and protections. The U.S. in particular has elected such limitations. This means all Dead band members do likely qualify for WPPT rights in this 1977 recording as performers, but they only qualify for such protections in the 91 countries, and even in those countries, their rights may be subject to limitations or exclusion, as seen in the U.S.’ non-recognition of the WPPT’s performer rights.
As a result of analyzing protection qualifications in these three treaties, only Hunter and Hart, as an author and composer respectively, qualify for potentially effective international copyright protections in this recording based on their Berne Convention protections. Unfortunately, the other members may only potentially qualify for certain rights in a limited amount of countries under the WPPT.
Term of Protections (Not Fade Away – November 2, 1979, Nassau Coliseum, Uniondale, N.Y.): A staple at Dead concerts, Buddy Holly and Norman Petty’s Not Fade Away was a testament to the strength and size of love (“bigger than a Cadillac” for example) and an excellent springboard into some intense jams. Late 70’s versions of Not Fade Away, such as this 1979 recording, are particularly exceptional due to their extended improvisations.
Works such as Not Fade Away also highlight an important issue in international copyright law, namely the duration to which a work is granted copyright protection. Under the Berne Convention, member states must afford copyright protection to qualifying works for the life of the author and for 50 years after their death. Contrastingly, the WPPT grants protection for performers in recordings for 50 years from when the recording was made, while the Rome Convention only affords 20 years of protection for performers from when a recording is made.
As with rights in the Fire on the Mountain recording above, the protection terms given to the authors/composers and performers in this 1979 recording are disproportionate. As widely known, Buddy Holly died in a horrific plane crash in 1959 (which also killed Richie Vallens and J. P. “The Big Bopper” Richardson). Petty died in 1984. Based on the date of their deaths, Holly’s copyright protections as an author of Not Fade Away under the Berne Convention expired in 2009, while Petty’s rights will continue to remain active until 2034. For all of the Dead band members, their protections under the Rome Convention as performers expired in 1999 (FYI, they would not have had any rights under the Rome Convention anyway – see Performers Rights section above) and their rights in this recording under the WPPT are set to expire in 2029.
However, it is important to note that some Berne Convention member states may provide extended copyright protection terms for authors. For example, the U.S. and Australia extend copyright protection rights for the life of the author plus 70 years after their death. If qualifying as protectable works under the Berne Convention and both U.S. and Australian copyright law, Holly and Petty’s copyright protections in Not Fade Away will remain active in the U.S. and Australia until 2029 and 2054 respectively.
Conclusion: Besides providing some spectacular recordings, I hope this short analysis helps to understand some main issues in international copyright law that can assist in determining the extent of foreign protections in a particular work.
What are your favorite Dead shows? What international copyright issues are you facing?
**Important Note**: The legal issues highlighted herein are hypothetical. Additionally, this article is neither approved nor endorsed by The Grateful Dead, Nick Paumgarten, the New Yorker magazine, the Internet Achieve or any related parties.
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.
Takedown Notice Requirements
|United States||DMCA (17 U.S.C. § 512(c)(3)(A))||
|Australia||Regulation 20I, Schedule 10, 1969 Copyright Regulations||
|China||Article 14, Regulations on the Protection of the Right to Network Dissemination of Information Networks||
|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||
|South Africa||Section 77(1), The Electronic Communications and Transactions Act||
|United Kingdom||Section 124(a)(3), Communications Act 2003||
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.
The ongoing trade dispute between the U.S. and the Caribbean island nation of Antigua and Barbuda has produced unexpected and potentially harmful consequences for U.S. copyright owners. Antigua announced last week its plans to establish a website selling media and software protected under U.S. copyright law—and will do so without obtaining permission of its copyright owners or paying any form of royalties.
Surprisingly, Antigua has the right to establish this pirating website under international law. It won a 2007 World Trade Organization (WTO) dispute settlement against the U.S. (Dispute Settlement 25 – DS 25), where the U.S.’ blocking of Antiguan online gambling sites from U.S. customers was found to be a violation of the U.S.’ General Agreement on Tariffs and Trade (GATT) commitments. Consequently, Antigua was granted the right to suspend its WTO obligations to the U.S. under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This has allowed Antigua to legally sell pirated U.S. copyright content in amounts not exceeding $21 million annually until the U.S. removes its blockade of Antiguan gambling websites or pays compensation. As of yet, the U.S. has done neither.
To Antigua’s credit, it has yet to enforce its entitled remedies in the six years since DS 25’s ruling. According to reports, Antigua’s main goal is not to become a copyright pirate—it simply wants the U.S. to comply with DS 25. Yet, the U.S.’ continued failure to do so has made Antigua feel that it has no other choice but to open the pirating website to pressure the U.S. into compliance.
Ultimately, U.S. copyright owners will pay the price for the U.S. government’s failure to comply with DS 25. Reports are that the U.S. government will compensate U.S. copyright owners for lost royalties who are infringed from Antigua’s pirate website. However, international copyright law gives U.S. copyright owners legal protections beyond mere royalties. Qualifying U.S. copyright owners have the right under both U.S. copyright law (17 U.S.C. § 602(a)(2)) and Antiguan copyright law (2003 Copyright Act) to restrict movements of their works across borders for commercial use, namely to prevent the unauthorized trade in protected works known as parallel importation or grey goods. As controlling the availability and flow of protected content is crucial to capitalizing on foreign markets opportunities, U.S. copyright owners whose works are infringed through the Antiguan pirate website will be harmed by their inability to control the flow or distribution of their works, with no apparent recourse or compensation under international, U.S., or Antiguan law.
As any business who has foreign IP protection concerns know, protecting IP rights abroad is hard enough even with protections under international law. The developments in the U.S.-Antiguan trade dispute are harmful beyond mere infringement as they act to undermine what minimum protections U.S. copyrighted works enjoy abroad under international law, and according to commentators, they help to establish a negative precedent that could lead to similar outcomes in larger trade disputes with potentially more severe damages for U.S. copyright owners. Time will tell whether this will come true.
What do you think of the U.S.-Antiguan trade dispute? Will you be affected by it and how?