The Office of the U.S. Trade Representative (USTR) announced yesterday that it is requesting public comments to assist the USTR in identifying significant barriers to U.S. exports of goods and services, including foreign IP protection deficiencies. The comments are being collected for inclusion in the USTR’s annual National Trade Estimate Report on Foreign Trade Barriers (NTE Report) that identifies barriers to U.S. exports including the “lack of intellectual property protection (e.g., inadequate patent, copyright, and trademark regimes).”
Last year’s NTE Report identified several U.S. export markets as possessing IP protection trade barriers, or at least IP protection concerns, including Angola, Argentina, Australia, Bahrain, Brazil, Cambodia, Canada, Chile, China, Colombia, Dominican Republic, Ecuador, Egypt, El Salvador, Ethiopia, European Union (member states), Ghana, Guatemala, Hong Kong, India, Indonesia, Iraq, Israel, Japan, Kazakhstan, Kenya, Kuwait, Laos, Malaysia, Mexico, Morocco, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Russia, Saudi Arabia, South Africa, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, Uzbekistan and Venezuela.
Public comments for inclusion in this year’s NTE Report are due to the USTR by no later that October 29, 2014. Further instructions on the NTE public comment submission process are available here.
Over the last week, the Office of the U.S. Trade Representative (USTR) and the International Intellectual Property Alliance (IIPA) released reports on the current state of intellectual property (IP) protections for U.S. businesses abroad. These reports provide updated insights on foreign countries and foreign retail markets (both physical and online) that have recently caused U.S. businesses the most IP protection difficulties.
Here is a summary of the reports:
IIPA 2014 Special 301 Report Submission
On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”
Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.
What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?
Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.
Priority Watch List and Watch List Countries. The IIPA’s Special 301 Report Submission lists Argentina, Chile, China, Costa Rica, India, Indonesia, Russia, Thailand and Vietnam on the “Priority Watch List,” and Belarus, Brazil, Bulgaria, Canada, Ecuador, Greece, Israel, Kazakhstan, Kuwait, Mexico, Romania, Saudi Arabia, Switzerland, Taiwan, Tajikistan, Turkey, Turkmenistan, United Arab Emirates and Uzbekistan as “Watch List” countries. Although not as a severe rating as a Priority Foreign Country, being listed as a country on the Priority Watch List or simply Watch List means that a country has potential IP protection deficiencies that require varying levels of USTR monitoring.
Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.
Out-of-Cycle Review of Notorious Markets
Also, on Wednesday, the USTR released an Out-of-Cycle Review of Notorious Markets that identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting. The Review includes particular social media and file transferring sites hosted abroad, including sites hosted in Antigua and Barbuda, Bulgaria, Canada, China, Czech Republic, Finland (possibly), Netherlands, Poland, Russian Federation, Spain, Sweden, Ukraine, United Kingdom and Vietnam. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Paraguay, Spain, Thailand and Ukraine were also deemed notorious.
What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.
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.