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.
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.
After eight years of negotiations, it was reported on Monday, October 5, 2015, that a final agreement to the Trans Pacific Partnership (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) was reached. While a final text of the TPP agreement has yet to be released, and is reported to not be available for at least another month, some TPP member state governments have provided some details concerning the TPP’s IP provisions.
Ars Technica reported that New Zealand government officials announced that the TPP agreement will require New Zealand to extend its copyright protection term from life of the author + 50 years to life of the author + 70 years, thereby requiring New Zealand to adopt copyright protections beyond minimum requirements provided in existing international copyright treaties such as the Berne Convention for the Protection of Literary and Artistic Works and the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Despite the potential expansion of copyright protections under the TPP, such reporting also revealed that the TPP agreement will not require New Zealand to adopt stronger Internet Service Provider (ISP) enforcement provisions against repeat copyright infringers. According to the reporting, New Zealand will not be required to adopt a “six-strike” enforcement program, namely requirements mandating that a New Zealand ISP terminate an infringer’s Internet account after six cases of reported copyright infringement, as established amongst many U.S. ISPs.
It remains unclear whether all TPP member states will be required to adopt these copyright protections, as well as what other mandated IP protections are included in the TPP. Further information about the TPP’s IP chapter and its implications on TPP member states will be reported here once available.
Last month, Russia formally adopted multiple online copyright enforcement reforms to its Anti-Piracy Laws (Federal Law No. 364-FZ; “Reforms”). Including in these Reforms were streamlined Internet Service Provider (ISP) injunction procedures, the establishment of a digital fingerprinting system to allow for the online identification of copyright protected works, and the establishment of Russia’s first statutory notice and takedown procedures—allowing qualifying persons or entities who have rights to copyright-protected work(s) (collectively, “Rights Holders”) the ability to extrajudicially petition Russian-based website owners, and eventually their ISPs, to remove infringing hosted content.
On its face, Russia’s new notice and takedown procedures provide qualifying Rights Holders a highly needed extrajudicial enforcement tool to fight online copyright infringement in one of the world’s most infringing online markets. In April 2015, Russia was listed on the Office of the U.S. Trade Representative’s (USTR) Priority Watch List in the USTR’s 2015 Special 301 Report, identifying countries who do not provide adequate protection for intellectual property. The 2015 301 Report cited Russia for having “persistent” online copyright piracy problems, as well as being the home of several piracy websites that “damage both the market for legitimate content in Russia as well as in other countries.”
While Russia’s new notice and takedown procedures in many ways mirror similar procedures in other jurisdictions, there are some important differences Rights Holders should be aware of concerning the new procedures. To understand these differences, it is important to first look at the actual notification procedures.
Procedures: Based on an unofficial translation of the Reforms, a Rights Holder must provide the operator of an infringing Russian-based website notification of an alleged infringement including:
- Name of the legal owner or authorized agent of the copyright protected work(s), including their location, address, passport information, telephone number, fax number, and email address;
- If an authorized agent, provide an attestation as to his or her representation of the owner(s) of the copyright-protected work(s);
- Identification of the copyright protected work(s);
- Identification of the domain name(s), network address(es), and other identifying information of the infringing website in question;
- Consent to use personal information included in the notification; and
- The Rights Holder’s claim that the copyright-protected work(s) and being used on the identified website(s) without the owner’s of the work(s) permission or any valid legal grounds.
Within 24 hours of receipt of a Rights Holder’s notification, the website’s operator will need to either:
- Request additional information from the Rights Holder concerning their notification;
- Remove the allegedly infringing content; or
- Provide proof that the website operator is authorized to use the allegedly infringing content.
If the website operator does not restrict access to the allegedly infringing content within 24 hours after receiving the Rights Holder’s notice, the website’s ISP will have three days to block access to that website. If the ISP restricts access to the website in question, the ISP must notify Russia’s telecommunication agency (Federal Service for Supervision in the Sphere of Telecom, Information Technologies and Mass Communications (Roskomnadzor)) of the incident, and such data will be placed in a infringement registry.
Ok, now that we know the procedures, what are the main takeaway points?
Additional Steps May Be Needed: Unlike most national notice and takedown procedure systems, notices under Reforms are to be sent to website operators prior to sending to the website’s ISP. While a website operators and ISP can often be one and the same, e.g. Facebook or Google, Russia’s notice and takedown procedures may require submitting an additional notice to an ISP if a website operator fails to remove infringing content identified by a Rights Holder in a notice under the procedures.
Qualifying Content: Prior to passage of the Reforms, the Anti-Piracy Laws only covered “movies, including movies, TV films”, thereby excluding many other works normally qualifying for copyright protection in Russia and other countries. The Reforms expands qualifying works to “objects of copyright and (or) related rights (except photographic works and works obtained by processes similar to photography.” While these changes expand protection under the Anti-Piracy Laws beyond solely movies to songs, written works and other normally copyright-protected works, it expressly excludes “photographic works.” Excluding photographic works from protection under the new notice and takedown procedures means Rights Holders of such works would need to seek a judicial order to remove infringe content hosted by a Russian-based website, subjecting such Rights Holders to potentially substantial enforcement delays and costs.
Prosecution Requirements: Like the U.S., Russia does not require prosecution (registration) of copyright-protected works in order to utilize the Anti-Piracy Laws’ new notice and takedown procedures.
Country-Specific Restrictions: Although not identified in the Reforms, notifications sent through the Anti-Piracy Laws’ new notice and takedown procedures will likely need to be sent in Russian. Further, to ensure compliance, foreign Rights Holders will likely need to work with qualified Russian counsel to effectively utilize the new notice and takedown procedures. This can have additional costs and time delays for foreign Rights Holders.
What’s The Takeaway? Absent prior statutory provisions, the Reforms’ notice and takedown procedures do provide Rights Holders greater means to protect their works online in Russia. However, due to limitations on qualifying works, and additional and country-specific procedures beyond similar notice and takedown procedures in other countries, it remains to be seen whether Russia’s statutory notice and takedown procedures will become an effective extrajudicial enforcement tool against cross-border online copyright infringement.
I am happy to announce that I have the honor of publishing an opinion article in the European Intellectual Property Review (EIPR) to be released this month. Titled “Improvement over the Rest or More of the Same? Australia’s Proposed Extraterritorial Online Copyright Injunctive Reforms,” the article examines Australia’s recently-implemented copyright injunctive reforms that will allow a rights holder to obtain an injunction against a foreign-based website, and evaluates the reforms in relation to its foreign counterparts in the United States and Europe.
For those interested in U.S. and Canadian IP protection issues, I will be giving a presentation at the April 2, 2015 King County Bar Association (KCBA) – Intellectual Property Section meeting in Seattle, Washington on U.S. and Canadian cross-border IP protection issues. Particularly, the presentation will cover IP protection issues that U.S. businesses should consider as they expand into Canada, and conversely, IP issues Canadian businesses should consider as they enter the U.S. market.
The April 2nd KCBA IP Section meeting will be held at KCBA’s headquarters at 1200 Fifth Avenue, Suite 700, Seattle, Washington 98101. A webcast of the meeting will be made available to KCBA IP Section members. Further details on the webcast are available here.
Hope you can make it!
For those who did not have a chance to attend my January 20, 2015 presentation Online Copyright and Trademark Enforcement in the U.S. and Abroad, the Washington State Bar Association International Practice Section’s Blog, The Global Gavel, has provided a summary of my presentation. It overviews the main issues discussed and key takeaway points. Those with further questions should feel free to contact me.
A link to the presentation summary can found here.
The United Kingdom Intellectual Property Office (UK IPO) released a report today providing a comprehensive and insightful breakdown of online copyright enforcement regimes in multiple countries. Titled International Comparison of Approaches to Online Copyright Infringement, the report evaluates online enforcement regimes in many of the world’s major markets including Brazil, Canada, France, Italy, The Netherlands, South Korea, Spain, the U.K., and the U.S. Beyond providing in-depth details and statistics on each country’s online enforcement procedures that international IP policy nerds like myself find interesting, the report highlights how each country’s enforcement regimes have dealt with the proliferation of broadband Internet and various online media services. It is also a good primer for practitioners to understand online copyright enforcement procedures across borders. Give it a read!
The New York Times and other news outlets reported last week that The Hershey Company, the global confectionary behemoth, settled its U.S. federal trademark lawsuit against leading U.S. importer of British confectionery products, LBB Imports, LLC (Case 1:14-cv-01655-JEJ), who had allegedly infringed Hershey’s own trademark-protected brands, as well as those it has exclusively licensed, through LBB’s unauthorized importation of popular UK brands and UK versions of existing U.S. brands including CADBURY DAIRY MILK, CARAMELLO, TOFFEE CRISP, YORKIE, MALTESERS, ROLO and KIT KAT.
Although these news reports have largely focused on U.S. consumer dissatisfaction over inaccessibility of these UK chocolate varieties as a result of the settlement, this case also underscores the important role trademark licensees have in the cross-border enforcement of their licensed trademarks. Hershey attested in their complaint that it has produced and promoted Cadbury’s brands in the U.S. for over 25 years, and that it is Cadbury’s exclusive U.S. licensee of several of its U.S. registered trademarks including Cadbury’s logo (U.S. Reg. No. 1,107,458) and its DAIRY MILK brand (U.S. Reg. Nos. 1,403,327, 4,224,494 and 1,460,259) (collectively, the Cadbury Marks).
While it is unclear what contractual obligations Hershey had with Cadbury concerning enforcement of the Cadbury Marks in the U.S., in regards to infringing imports or otherwise, Hershey likely had substantial legal and business incentives to enforce the Cadbury Marks against LBB. Often, foreign distributors, manufacturers, and promoters have licensed rights, and in many cases, contractual obligations, to enforce rights in their licensed trademarks including preventing the importation of infringing goods and parallel importation shipments (aka grey goods). Beyond legal obligations, licensees like Hershey have financial incentives to enforce their licensed trademarks rights as it is often necessary to protect business opportunities, as well as relationships, that accompany cross-border licensing arrangements.
As these licensed rights and obligations have substantial legal and business implications, it is important for licensing businesses to know and understand such rights and obligations, and develop enforcement strategies based on the same. So how do licensees do this? Well, here are a few things licensees should consider:
Evaluate and Understand Contractual Rights and Obligations. The first and most important thing a licensee should do when entering a cross-border licensing arrangement and considering enforcement measures based on that arrangement is to evaluate and understand their rights and obligations of enforcement. This requires that a licensee read and evaluate whatever agreement(s) acknowledge their licensing arrangement to identify such rights and obligations. Such rights and obligations may be detailed in a stand-alone trademark licensing agreement, they may be included in a more comprehensive distribution or service agreement, or they may be covered multiple agreements.
Regardless of what type of agreement(s) such rights and obligations are acknowledged, licensees need to identify three things:
(1) their rights to enforce rights in licensed mark(s);
(2) their obligations to enforce rights in licensed mark(s); and
(3) the extent and territoriality of such rights and obligations.
Licensed rights include a licensee’s optional ability to enforce rights in licensed mark(s), while obligations are a licensee’s contractual duty to enforce rights such mark(s). The extent and territoriality of such rights and obligations is particular important in cross-border IP protection as it is needed for a licensee to establish both the subject and geographic scope of their rights and obligations. In Hershey’s case, being Cadbury’s exclusive U.S. licensee of the Cadbury Marks likely gave Hershey rights and obligations of enforcement for such Marks in the U.S. However, Hershey was likely not given rights of enforcement for all Cadbury brands, nor rights of enforcement for the Cadbury Marks outside the U.S. as Hershey is identified as having only licensed certain Cadbury brand lines, and only in the U.S.
In any instance, a licensee needs to know their licensed rights and obligations, as well as its scope and territoriality.
Develop Tailored Strategies to Fulfill Licensing Obligations. Once particular licensed enforcement rights and obligations are identified, a licensee must evaluate what such obligations mean for their business. If a licensee is obligated to enforce rights in licensed mark(s) under their particular licensing arrangement, they may be required to monitor use of the marks in commerce, register (aka prosecute) the marks with national trademark authorities, record trademark registration(s) with national customs agencies to monitor and detain infringing imports, and/or conduct litigation enforcement.
In Hershey’s case, Cadbury had already registered the Cadbury Marks with the U.S. Patent and Trademark Office, and it remains unclear what Hershey’s obligations were under their licensing agreement(s) with Cadbury to record such registrations, monitor commercial use of the Marks, or even litigate their rights against potential infringers such as LBB. However, if Hershey’s did have monitoring and enforcement obligations in their licensing agreement(s) with Cadbury, their lawsuit against LBB would likely have been fulfilling these obligations as Hershey went after an allegedly unauthorized importer of Cadbury’s brands in the U.S., which it would have not otherwise known without attaining monitoring services and potentially other enforcement measures.
In short, licensees, like Hershey, have to find ways to fulfill their licensing obligations that are tailored to their particular obligations and business. As such, licensees should establish a budget to conduct such enforcement services, and consider retaining qualified counsel to ensure effective execution of obligated enforcement activities.
Consider Business Implications of Optional Licensed Rights. A licensee’s fulfilling of their licensed legal obligations is relatively straightforward, yet determining when and how to enforce licensed optional rights of enforcement is more complex, and often has more business than legal implications. Although a licensee may have optional rights of enforcement, the nature of the licensing arrangement and business relationships may obligate a licensee to adopt trademark enforcement measures. This is because the success of a licensing arrangement often depends on a licensee’s exclusive use of their licensed mark(s) in a particular country, requiring enforcement measures if such exclusivity is jeopardized. Further, licensors often urge their foreign licensees to enforce their licensed trademark rights regardless of contractual obligations, making such acts the basis for continuing their licensing arrangements. As such, a licensee may wish to adopt enforcement measures for their licensed marks despite having no obligations to do so to ensure profitability and continuation of their licensing arrangement, and to protect their existing business relationship with their licensor.
In Hershey’s case, they have been Cadbury’s exclusive U.S. licensee of the Cadbury Marks for over 25 years. Even if their rights of enforcement were optional, Hershey likely had substantial incentive to enforce rights in the Cadbury Marks as LBB’s imports jeopardized their exclusive use of such brands, and Hershey’s failure to enforce such rights may have harmed their long existing relationship with Cadbury.
Like Hershey, any licensee with optional rights of enforcement needs to consider the impact of non-enforcement on the business opportunities available in their licensing arrangement, as well as its impact on their relationship with their licensor.
What’s The Takeaway? As more and more businesses seek local foreign businesses to assist them with promoting their brands abroad, licensee businesses will be increasingly required to understand what rights and obligations they have in their trademark arrangements, and what measures they should take to fulfill those obligations, especially in deterring infringing imports. As these enforcement rights and obligations have substantial legal and business implications, licensees should work with their licensors and qualified counsel to determine how to best fulfill their enforcement obligations.