Category: USTR

Breaking Down Australia’s Injunctive Online Copyright Enforcement Reforms

As this year comes to a close, I posted my last posting on The IPKat as a guest contributor about updates to Australia’s proposed injunctive online copyright enforcement reforms. This posting discussed recent updates to a blog posting I made on this blog in August concerning these proposed reforms. Particularly, I highlighted recent implementation and freedom of speech concerns about the proposed reforms.

The IPKat posting is available here.

Converse Seeks to Prove it is the One and Only Global All-Star

Co-author Peter Dang, recent graduate of the University of Washington School of Law and admitted member of the Washington State bar.

Imitation may be the sincerest form of flattery, but try telling that to Converse. Last month, Converse filed multiple lawsuits in the U.S. District Court for the Eastern District of New York against 31 alleged infringers including Sketchers, H&M and others, for importing and selling knockoffs of Converse’s iconic shoes, the Chuck Taylor. Converse claimed that such alleged infringers infringed the Chuck Taylor’s distinctive shoe designs (aka trade dress) (15 U.S.C. § 1114), diluted such trade dress’ distinctiveness (15 U.S.C. § 1125(c)), and used such trade dress in a manner that constituted unfair competition (15 U.S.C. § 1125(a)). The trade dress at issue in both cases consists of Chuck Taylor’s federally registered “midsole design” and “outsole design” (collectively, the “Designs”). The midsole design (Reg. No. 4,398,753 – see image above) refers specifically to the Chuck Taylor’s “toe bumper” and “toe cap,” while the outsole design (Reg. No. 1,588,960) refers to the distinct diamond pattern on the sole of the shoe.

Simultaneously to filing its federal lawsuits, Converse filed a parallel complaint at the International Trade Commission (ITC) against the same alleged infringers for unfair trade practices (19 U.S.C. §1337 et seq.) related to importing shoes that infringed the Designs.

So why are these cases important? Beyond the large amount of potential financial recovery at stake, the outcome of these proceedings will have strong implications for cross-border trademark protection. Converse’s victory in its federal lawsuits may provide greater means for U.S. and foreign retail product producers to protect their products’ designs from unauthorized use in the U.S. by potentially expanding U.S. legal protections afforded to clothing and footwear trade dress. Further, an ITC ruling in Converse’s favor provides Converse the means to not only prevent the infringement of their trade dress, it also helps to stem the cross-border flow of shoes infringing their Designs.

Converse’s Challenges

Commentators have reported that Converse faces challenges in its actions because the Designs’ elements may be considered functional, and thus not protectable. Under U.S. trademark law, only distinctive non-functional elements of trade dress are protectable. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992). Since the Designs’ rubber toe bumper and cap, and outside design are arguably used to prevent wear and provide foot protection, they may be considered functional elements of the Chuck Taylor, and thus unprotectable.

In contrast, others believe that footwear trade dress precedent may give Converse the legal basis it needs to succeed in such actions through the Designs’ potential secondary meaning. In Christian Louboutin, S.A. v. Yves Saint Laurent Am. Holding, Inc., 2012 WL 3832285 (2nd Cir. 2012), the Court found that Louboutin’s iconic red sole of its luxury women’s shoe to be distinctive despite being a element of the shoe’s sole due to secondary meaning (aka acquired distinctiveness) that the sole had acquired amongst the general public, thereby granting Louboutin trade dress protection to its shoe’s red sole. As the Chuck Taylor shoes have been widely available in U.S. commerce for decades, Converse may be able to establish that the Designs acquired secondary meaning amongst the U.S. public, and are thus protectable despite their apparent functionality.

Impact of the ITC Action

Although Converse’s victories in its federal court actions would likely result in substantial financial recovery for Converse, a favorable ITC decision would arguably provide Converse greater cross-border benefits. The ITC provides rights holders of U.S. patent, trademark and copyright rights the means to petition the U.S. government under Section 337 of the 1930 Tariff Act to conduct an investigation of unfair trade practices, including the importation of goods infringing such U.S. IP rights. If such infringing importation is found, the ITC may issue a ban on such infringing imports. In Converse’s case, an ITC issued ban would prevent the alleged infringers’ importation of footwear utilizing the Designs into the U.S., and potentially deter transshipments of such footwear to other markets from the U.S. As such a ITC decision impacts the importation and exportation of shoes infringing the Designs, it arguably has more cross-border benefits as it could effectively provide Converse trademark protection across multiple markets through one legal action.

What’s The Takeaway?

If successful in both its federal and ITC actions, Converse may obtain substantial financial recovery and injunctive relief to prevent imitators from selling their shoe designs in the U.S. and potentially other markets. More broadly, a favorable ITC ruling for Converse would provide Converse the tools to protect its Designs and control the flow of goods infringing such Designs across markets, a strategy that commentators have reported is overlooked, but has the potential to provide enhanced cross-border trademark protections.

Enforcing Online Copyright Protection Abroad: Part III – South America

As part of my ambitious plan to provide you with information on online copyright enforcement procedures through all of the countries in the world, I come to you with part III of my ongoing posting series on national notice and takedown provisions—South America. Although few South American countries have adopted full-fledged notice and takedown provisions as provided in the U.S., Australia, and others, many South American countries have or an in the process of adopting national notice and takedown provisions, either through legislative reforms or judicial action, or have adopted other measures owners or rights holders of copyright protected works (collectively, “Rights Holders”) can use to protect their works online.

However, as I have mentioned in previous posts on this topic, determining whether a Rights Holder can enforce rights in their work online and abroad depends on: (1) whether a work qualifies for foreign protection (aka national treatment) under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); (2) whether the Internet service provider (ISP) hosting the infringing use of the work is subject to jurisdiction in the country where online enforcement is sought; and (3) what online copyright enforcement procedures are available in the country of enforcement.

Each of these issues have been previously examined here and those with further questions should consult with a qualified attorney.

Below are the current online copyright enforcement procedures in each South American country. However, a couple of preliminary notes:

Classifications: A South American country that maintain legal protocols for a Rights Holder to directly petition an ISP to remove infringing content in order for the ISP to qualify for safe harbor protection from contributory liability for copyright infringement is identified below as a “Notice and Takedown System.” A country that does not provide legal provisions for a Rights Holder to directly enforce their copyright protections through an ISP notification system, and are instead forced to seek copyright enforcement through legal action are referred to as a “Judicial System.”

Notice Limitations: Unfortunately, even if a country maintains a Notice and Takedown System, an ISP may still refuse to disable access to a website or website content upon receipt of a Rights Holder’s infringement notice. In such instances, a Rights Holder may be forced to seek enforcement through that foreign country’s legal system in order to remove such online content.

Time Sensitivity: As several of the listed countries in this posting are evaluating or in the process of implementing copyright reforms, either through legislation or judicial action, there is the possibility that the following information may soon change.

Argentina

Enforcement System: Judicial System (Possible pending judicially-created Notice and Takedown System)

Berne Convention Member: Yes

Overview and Notes: Argentina does not currently provide statutory notice and takedown provisions. However, it was reported in June 2014 that the Argentine Supreme Court (Corte Suprema de Justicia de la Nación) heard oral arguments in Rodríguez v. Google Inc., where a lower appellate court had established a ISP safe harbor test where a Rights Holder couldnotify [a] search engine, identifying the alleged infringing contentand thesearch engine acts expeditiously to block the content via a quick and effective filtering method.” The Argentine Supreme Court has yet to publish a final opinion in Rodríguez, and Argentina’s civil law system makes it unclear whether any such judicial decision will require that all Argentine-based ISPs be subject to notice and takedown provisions upheld in such a decision.

Governing Legislation: Copyright Law (Law No. 11.723)

Notice Requirements: N/A

Bolivia

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Bolivia does not currently maintain any notice and takedown provisions.

Governing Legislation: Law No.1322 on Copyright

Notice Requirements: N/A

Brazil

Enforcement System: Judicial System (*Possible Notice and Takedown System)

Berne Convention Member: Yes

Overview and Notes: Brazil has evaluated notice and takedown reforms, enacted ISP liability legislation, and has even ruled that ISPs are subject to a notice system. However, it is still unclear whether nationwide notice and takedown provisions have been fully established in Brazil.  In 2012, the Brazilian government evaluated the Copyright Law Reform Bill (Bill nº 3133/2012), which commentators had reported was to include U.S.-style notice and takedown provisions. However, the Reform Bill has yet to be implemented. In August 2012, the Brazilian Superior Court of Justice held in a special judiciary opinion in Google Brazil (Special Appeal No. 1323754/RJ) that an ISP was required to temporarily remove infringing content 24 hours upon notice of infringement from a Rights Holder in order to retain immunity from from contributory liability for copyright infringement. However, commentators have questioned Google Brazil’s applicability to other Brazilian-based ISPs, requirements for Rights Holder infringement notices, and the duration of an ISP’s removal obligations, based on Brazil’s civil law system.

In May 2014, the Brazilian government enacted the Internet Bill of Rights (Law No. 12.965) that establishes liability for “Internet intermediaries” for failing to timely comply with a judicial takedown order. However, the Internet Bill of Rights provides no direct Rights Holder infringement notice provisions.

Governing Legislation: Law on Copyright and Neighboring Rights (Law No. 9.610), Internet Bill of Rights (Law No. 12.965)

Notice Requirements: N/A

Chile

Enforcement System: Expedited Judicial System

Berne Convention Member: Yes

Overview and Notes: Chile does not currently possess notice and takedown provisions despite agreeing in the U.S.-Chile Free Trade Agreement (FTA) to provide “legal incentives for [ISPs] to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Chile rejected adopting notice and takedown provisions in its ratification of the U.S.-Chile FTA, as well as in proposed copyright reform legislation in 2010. Instead, Chile implemented an expedited judicial enforcement process where a Rights Holder may submit a judicial petition against a Chilean-based ISP in a Chilean Civil Court to expeditiously evaluate the alleged infringement and obtain an injunctive takedown order.

However, Chile may soon be required to implement notice and takedown provisions if the Trans Pacific Partnership (TPP) is finalized and the U.S. draft chapter is adopted in a final TPP agreement.

Governing Legislation: Article 85R, Law No. 17.336 on Intellectual Property

Judicial Petition Requirements:

-The allegedly infringed rights, with a specific indication of the rights and the infringement procedure;
-The infringing material; and
-The location of the infringing material in the ISP’s respective networks or systems.

Colombia

Enforcement System: Judicial System

Berne Convention Member: Yes

Notes and Overview: Despite multiple reform efforts, Colombia does not currently maintain any notice and takedown provisions. Colombia had agreed to adopt notice and takedown provisions in a side letter to the U.S.-Colombia FTA in 2006. However, Colombia has yet to implement such provisions. In 2011, Colombian legislators introduced copyright reforms in Bill No. 201 (aka Ley Lleras 1.0) that included notice and takedown provisions, but it was not enacted. The Colombian Congress subsequently passed similar reform legislation in 2012, Law No. 1520/2012 (aka Ley Lleras 2.0), but such legislation was largely invalidated by the Colombian Constitutional Court in January 2013 on the grounds that such legislation was not properly implemented. Additional proposed copyright reform legislation, Bill No. 306, was circulated for comments in March 2014, but does not include notice and takedown provisions and has yet to be implemented.

Governing Legislation: Law No. 23 on Copyright

Notice Requirements: N/A

Ecuador

Enforcement System: Minimal Judicial System

Berne Convention Member: Yes

Overview and Notes: Ecuador does not currently maintain any notice and takedown provisions. Further, it was reported in December 2013 that the Ecuadorian National Assembly amended its Penal Code and the Intellectual Property Law to decriminalize all IP rights violations, thereby only allowing administrative actions and fines to enforce copyright in works in Ecuador, online or otherwise.

Governing Legislation: Intellectual Property Law (Consolidation No. 2006-13)

Notice Requirements: N/A

French Guiana

Enforcement System: Notice and Takedown System (*Restricted and Undetermined)

Berne Convention Member: Yes

Overview and Notes: French Guiana is an overseas department of France and is thereby governed by French copyright law. As a European Union (EU) member state, France was required to adopt notice and takedown provisions as provided under Article 14 of the EU Electronic Commerce Directive (Directive 2000/31/EC). However, the EU Directive provides only general recommendations, thereby giving EU member states such as France substantial flexibility to implement their own notice and takedown provisions.

France adopted notice and takedown provisions in its Creation and Internet Law where Rights Holder organizations could submit complaints to France’s online copyright authority, The High Authority for the Dissemination of Works and the Protection of Rights on the Internet (HADOPI), who would then provide notices to online infringers and remove allegedly infringing content under a graduated three-stikes approach. However, it was reported that individual Rights Holders were not allowed submit complaints to HADOPI, as such complaints must be submitted by agents of industry organizations, rights collection agencies, and the French Center of Cinematography.

Further, the French Ministry of Culture revoked the three-strikes approach on July 9, 2013 (Decree No. 2013-596) due to a perceived lack of effectiveness and public concerns that its enforcement measures were overly punitive.  However, the Decree did not expressly remove the Creation and Internet Law’s ISP penalties or its notice system. However, as mentioned, the HADOPI notice system, if still in effect, can only be utilized by industry organizations, rights collection agencies, and the French Center of Cinematography on behalf of individual Rights Holders.

Governing Legislation: Intellectual Property Code

Authorized Agent Notice Requirements:

-Sworn declaration that the authorized agent of the referral has standing to act in the name of the Rights Holder over the protected work or materials in question;
-Information on the website address(es) and other details of the alleged infringer; and
-Information on the infringing acts including date and time of the acts.

Guyana

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: According to the World Intellectual Property Organization, copyright law in Guyana is governed by its former colonizer, the United Kingdom. However, it does not appear that Guyana has adopted notice and take provisions as required by EU member states such as the United Kingdom under Article 14 of the EU Electronic Commerce Directive (Directive 2000/31/EC).

Governing Legislation: United Kingdom Copyright Act of 1956

Notice Requirements: N/A

Paraguay

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Paraguay does not currently maintain any notice and takedown provisions.

Governing Legislation: Law No.1328/98 on Copyright and Related Rights

Notice Requirements: N/A

Peru

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Despite multiple reform efforts, Peru does not currently maintain any notice and takedown provisions. Peru had agreed to adopt notice and takedown provisions in a side letter to the U.S.-Peru FTA in 2006, and it did adopt several copyright reforms in 2009 in order to implement its U.S.-Peru FTA obligations. However, such reforms do not appear to include notice and takedown provisions as promised in the U.S.-Peru FTA side letter.

However, Peru may soon be required to implement notice and takedown provisions if the TTP is finalized and the U.S. draft chapter is adopted in a final TPP agreement.

Governing Legislation: Copyright Law (Legislative Decree No. 822), and Law Amending, Incorporating and Regulating Miscellaneous Provisions on the Implementation of the Trade Promotion Agreement Signed Between Peru and United States

Notice Requirements: N/A

Suriname

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Suriname does not currently maintain any notice and takedown provisions.

Governing Legislation: Copyright Law of 1913

Notice Requirements: N/A

Uruguay

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Uruguay does not currently maintain any notice and takedown provisions. It is reported that Uruguay is currently considering a number of copyright reforms, yet it does not appear that notice and takedown provisions are included in such reform proposals.

Governing Legislation: Law No. 17.616 Amending Law on CopyrightLaw No. 9.739 on Copyright

Notice Requirements: N/A

Venezuela

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Venezuela does not currently maintain any notice and takedown provisions.

Governing Legislation: Law on Copyright

Notice Requirements: N/A

Special thanks to Sara Parker, recent Seattle University School of Law graduate and new member of the Washington State Bar for her assistance.

Enforcing Online Copyright Protections Abroad: Part II – South and East Asia

One of the most popular posts in The IP Exporter’s history was a posting last year entitled Enforcing Online Copyright Protections Abroad: Understanding Foreign Takedown Notice Requirements, which detailed how copyright owners and certain licensees of works (collectively “Rights Holders”) can directly enforce their rights in their works against foreign hosted websites in some of the world’s major markets (U.S., Australia, China, Japan, South Africa, and the United Kingdom).

Since I published that post, I have received numerous requests to provide information on procedures Rights Holders can take to directly enforce their rights online in several other foreign markets. To meet this demand, I have decided to ambitiously attempt to provide a multi-volume posting on the availability of notice and takedown procures in all countries throughout the world, starting with this post on notice and takedown procedures in South and East Asia.

However, before I delve into each country’s online copyright enforcement procedures, Rights Holders need to first evaluate a few issues before utilizing online copyright enforcement measures abroad.

1. Is the Work Entitled to Foreign Protection? A Rights Holder should not consider utilizing online takedown procedures in a foreign country without first establishing that their work qualifies for copyright protection in that foreign country. Often, this depends on whether their work qualifies for protection under: (1) the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) or other bilateral or multilateral treaties; and (2) the national copyright laws of the foreign country in question.

Berne Convention/Treaties. To qualify for protection under the Berne Convention, a Rights Holder’s work must become what is known as “attached.” Attachment requires that either:

  • the author of the work be a national of a Berne Convention member state (A list of Berne Convention member states is available here);
  • the author is a habitual resident of a Berne Convention member state;
  • the work is first published (made available to the public) in a Berne Convention member state; or
  • the work is published in a Berne Convention member state within thirty (30) days after an initial publishing in a non-Berne Convention member state.

If a work does not qualify for protection under the Berne Convention, it may qualify for copyright protection in a foreign country under a bilateral or multilateral treaty between the author’s home country and the foreign country in question. If the non-Berne Convention country is a member of the World Trade Organization (WTO) and has ratified the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the work may qualify for Berne Convention-like protection in other WTO member states.

Additionally, a work may qualify for protection in a foreign country based on a bilateral or multilateral agreement. A database of IP-related treaties can be found here.

National Copyright Protection Requirements. If a work qualifies for protection under the Berne Convention, TRIPS, or another bilateral or multilateral treaty, it must then qualify for protection under the copyright laws of whatever foreign country the Rights Holder wishes to enforce their rights. Many countries have similar copyright protection requirements, yet they do differ. For example a copyright protected work in the U.S. is an “original work of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). Conversely, a copyright protected work in Japan is “a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain.” Copyright Act. No. 48, Art. 2. Although these requirements end up covering much of the same types of works, there may be divergences depending on the type of work in question. A Rights Holder should consider consulting with qualified attorney in the country they wish to enforce their rights if they are unsure whether their work qualifies for local copyright protection.

2. Where is the Website’s ISP Subject to Jurisdiction? In order to effectively submit a takedown notice against an infringing website, the infringing website’s Internet service provider (ISP) must be subject to a country that has notice and takedown laws. This requires evaluating whether a notice and takedown country has personal jurisdiction over the ISP in question. Generally, a website’s 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 website’s ISP’s location may be completed through conducting a WHOIS database search. However, such a search is a not guarantee that a website ISP’s will be accurately located.

Further, determining whether a website’s ISP is subject to a foreign country’s jurisdiction is a complex legal evaluation that differs from country to country based on each country’s own personal jurisdiction requirements. Again, a Rights Holder should consider consulting with qualified counsel in the country where they wish to submit a takedown notice to determine whether the ISP in question is subject to that country’s jurisdiction.

3. What is the Country’s National Online Copyright Enforcement System? If a work qualifies for copyright protection in a foreign country where an infringing website’s ISP is subject to personal jurisdiction, a Rights Holder then needs to establish whether that country has a notice and takedown system, and if available, such country’s specific takedown procedures.

Below is a brief overview of each South and East Asian country’s copyright enforcement system. However, there are few things to first consider:

Enforcement System Legend: Countries that maintain legal protocols for Rights Holders to directly petition ISPs to remove infringing content are identified below as a “Notice and Takedown Systems.” Countries that do not have means for Rights Holders to directly enforce their copyright protections through ISP notification systems, and are instead forced to seek copyright enforcement action through the Courts are referred to as “Judicial Systems.”

Notice Limitations: Unfortunately, even if a country maintains a Notice and Takedown System, an ISP may still refuse to disable a website or website content upon receipt of a takedown notice from a Right Holder. In such instances, a Rights Holder may be forced to seek enforcement through that foreign country’s judicial system in order to remove such content.

Time Sensitivity: As many of the listed countries in this posting are either evaluating or in the process of implementing copyright reforms, either on a national level or through bilateral or multilateral trade agreements, there is the possibility that the following information may soon change.

Here are each country’s online copyright enforcement system:

Afghanistan

Enforcement System: Judicial System

Berne Convention Member: No

Overview and Notes: Afghanistan is not a Berne Convention or TRIPS member state, meaning that foreign works may not qualify for copyright protection under Afghan Law. However, works from the U.S. may be entitled to certain legal protections in Afghanistan under the Joint Statement of Commercial Cooperation between U.S. and Afghan governments as both governments agreed to “establish a forum for the exchange of information on commercial matters . . . including intellectual property rights protection and enforcement.” However, the Joint Statement provides no specific details on what rights U.S. Rights Holders are entitled to under Afghan law.

Governing Legislation: Law Supporting the Rights of Authors, Composers, Artists and Researchers (Copyright Law)

Notice Requirements: N/A

Bangladesh

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Bangladesh does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Copyright Act, 2000 (Act No. 28 of 2000 – Amended 2005)

Notice Requirements: N/A

Bhutan

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Bhutan does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Copyright Act and Industrial Property Act of 2001

Notice Requirements: N/A

Brunei Darussalam

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Brunei does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders. Particularly, Article 10 of the Electronic Transactions Order (2000) eliminates an ISP’s liability for hosting infringing third party content. However, Brunei may adopt a Notice and Takedown System in the future if the U.S.’ Proposed IPR Chapter of the Trans Pacific Partnership Agreement (TPP) is adopted.

Governing Legislation: Emergency Copyright Ordinance (2000)

Notice Requirements: N/A

Cambodia

Enforcement System: Judicial System

Berne Convention Member: Yes*

Overview and Notes: Cambodia is not a Berne Convention member state but is a TRIPS signatory, which requires upholding much of the Berne Convention’s protections. However, Cambodia does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Law on Copyright and Related Rights

Notice Requirements: N/A

China (PRC)

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: Although China maintains and a Notice and Takedown System, there has been reports that many of China’s major ISPs fail to takedown hosted content upon receipt of legitimate takedown notices. For example, the International Intellectual Property Alliance (IIPA) has criticized Baidu for its 42% takedown rate.

Governing Legislation: Article 14, Regulations on the Protection of the Right to Network Dissemination of Information Networks

Notice Requirements:

-The Rights Holder’s name, address and contact information;
-The title(s) and website address(es) of the infringing content which is requested to be removed or disconnected;
-Preliminary evidence of the work(s)’ infringement; and
-A request that the ISP remove the infringing content.

East Timor (Timor Leste)

Enforcement System: Judicial System

Berne Convention Member: No

Overview and Notes: By not being a Berne Convention or TRIPS member state, foreign works may not qualify for copyright protection under East Timorese law. Further, East Timor has not passed any specific copyright legislation since its independence in 2002.

Governing Legislation: N/A

Notice Requirements: N/A

Hong Kong

Enforcement System: Voluntary Notice and Takedown System/Judicial System.

Berne Convention Member: Yes

Overview and Notes: Although the Hong Kong Commerce and Economic Development Bureau drafted a proposed Notice and Takedown system in the Code of Conduct for Online Service Providers, Hong Kong has yet to formally enact a Notice and Takedown system. The Code of Conduct’s notice and takedown provisions have since become voluntary guidelines for Rights Holders and ISPs to manage online copyright infringement complaints.

Governing Legislation: Section 3.5, Form A, Code of Conduct for Online Service Providers (voluntary guidelines), Copyright Ordinance (Cap. 528) (mandatory)

Notice Requirements (from the Code of Conduct):

-The Rights Holder’s name, address for service in Hong Kong, contact telephone number, and any other relevant contact information;
-Particulars of the copyright work(s) alleged to be infringed including the name or description of the copyright work(s), type of work(s), date of creation or first publication of the copyright work(s), and name of the current owner of the work;
-A statement confirming that the Rights Holder submitting the complaint is the copyright owner or authorized representative of the copyright owner;
-Identification and online location of the material and/or activity which is the subject of the alleged infringement;
-In cases of information location tools, identification of the reference or link to the material or activity in question and its location;
-Description of how the material or activity in question infringes the copyright owner’s rights in the copyright work(s);
-A statement that the submitting Rights Holder believes in good faith that use of the material, or conduct of the activity in the manner complained of is not authorized by the law of Hong Kong, the copyright owner or its authorized representative(s);
-A request that the ISP send a copy of the notice to its subscriber whose account for online services has been used or involved in the alleged infringement;
-A request that the ISP remove the allegedly infringing material, disable access to the infringing material/activity;
-A declaration that the submitting Rights Holder declares that the information contained in this notice is true and accurate to the best of his knowledge and belief;
-A declaration that the submitting Rights Holder understands that it is an offence to make any false statement in this notice (the maximum penalty of which is a fine of HK$5,000 and imprisonment of 2 years), and that he or she is also liable to pay compensation by way of damages to any person who suffers loss or damage as a result of the false statement; and
-Signature and date of the submitting Rights Holder.

India

Enforcement System: Notice and Takedown System (temporary)

Berne Convention Member: Yes

Overview and Notes: India’s notice and takedown protocols establish that allegedly infringing content will be taken down 36 hours after a Rights Holder submits a takedown notice to an ISP, and the ISP provides notice of the Rights Holder’s notice submission to the alleged infringer. If the Rights Holder’s notice is satisfactory to the ISP, the ISP will restrict access to the infringing website(s) for 21 days from the date of receipt of the Rights Holder’s notice or until the ISP receives a Court order restricting public access to the alleged infringing website(s), whichever is earlier.

It is important to note that only an owner or an exclusive licensee of a copyright-protected work may submit a notice pursuant to India’s notice and takedown protocols.

Governing Legislation: Rule 75, The Copyright Rules, 2013

Notice Requirements:

-The description of the work infringed with adequate information to identify the work;
-Details establishing that the submitting Rights Holder is the owner or exclusive licensee of copyright in the work;
-Details establishing that the copy of the work which is the subject matter of transient or incidental storage is an infringing copy of the work owned or exclusively licensed by the submitting Rights Holder and that the allegedly infringing act is not covered under section 52 or any other act that is permitted under the Copyright Act (1957);
-Details of the location where transient or incidental storage of the work is taking place;
-Details of the person, if known, who is responsible for uploading the work infringing the copyright of the submitting Rights Holder; and
-Signature and date of the submitting Rights Holder.

Indonesia

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Indonesia does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders. The Indonesian Parliament is reported to be evaluating amendments to its copyright laws that will create a Rights Holder Internet copyright notification system through the Ministry of Communications and Informatics that will evaluate alleged infringements and order that ISPs takedown infringing content. The IIPA has criticized this proposed copyright enforcement system as it does not provide injunctive relief against non-compliant ISPs, nor a repeat infringer policy, or allow Rights Holders to submit complaint notices directly to ISPs.

Governing Legislation: Law No. 19 of July 29, 2002 on Copyright

Notice Requirements: N/A

Japan

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: Japan’s notice and takedown protocols establish that allegedly infringing content will be taken down seven (7) days after a Rights Holder submit a notice to an ISP, and the ISP provides notice to the alleged infringer.

Governing Legislation: 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)

Notice Requirements:

-Information and location of the particular alleged infringement;
-Suggested enforcement actions to be taken by the ISP;
-The rights in the work that are allegedly being infringed;
-The reasoning why the Rights Holder believes that an infringement has taken place; and
-The Rights Holder’s contact information.

Laos

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Laos does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Law No. 01/NA of December 20, 2011, on Intellectual Property

Notice Requirements: N/A

Macau

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Macau does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Decree-Law no. 43/99/M (Regime of Copyright and Related Rights)

Notice Requirements: N/A

Malaysia

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: Malaysia recently enacted copyright reforms that permit Rights Holders to submit infringement notices to ISPs that will remove hosted infringing content within 48 hours of notice of the alleged infringement to the ISP. However, Malaysia’s notice and takedown protocols do not providing specific notice requirements.

Governing Legislation: Article 43H – Copyright (Amendment) Act 2012

Notice Requirements: As mentioned, Malaysia does not provide specific requirements for ISP takedown notices.

Maldives

Enforcement System: Judicial System

Berne Convention Member: Yes*

Overview and Notes: Maldives is not a Berne Convention member state, yet is a TRIPS signatory that requires that  Maldives uphold much of the Berne Convention’s protections. Maldives does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Copyright and Related Rights Act 2010

Notice Requirements: N/A

Mongolia

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: Mongolia’s copyright legislation requires that ISPs prevent any copyright violation on websites they host and provide Right Holders the ability to enforce their rights through submitting reports to the ISPs of such violations. However, the legislation provides no specific requirements for such “reports.”

Governing Legislation: Article 25, Law of Mongolia on Copyright and Related Rights

Notice Requirements: Unspecified

Myanmar

Enforcement System: Judicial System

Berne Convention Member: Yes*

Overview and Notes: Myanmar is not a Berne Convention member state, yet is a TRIPS signatory. However, according to the World Intellectual Property Organization, Myanmar’s current copyright laws “do not prescribe copyright of other countr[ies] to be recorded in Myanmar and copyright obtained in other countries can not be enforced in [Myanmar].”

Further, Myanmar does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Copyright Act of 1914

Notice Requirements: N/A

Nepal

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Nepal does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Copyright Act, 2059 (2002)

Notice Requirements: N/A

North Korea

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: North Korea does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing LegislationCopyright Law of the DPPK (Amended by Decree No. 1532 of February 1, 2006)

Notice Requirements: N/A

Pakistan

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Pakistan does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing LegislationCopyright (Amendment) Act, 1992

Notice Requirements: N/A

Philippines

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Philippines does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: E-Commerce Act (Republic Act. No. 8792)

Notice Requirements: N/A

Taiwan

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: Taiwan’s notice and takedown protocols establish that allegedly infringing content will be taken down five days after notice is provided from a Rights Holder to an ISP, and from the ISP to the alleged infringer.

Governing Legislation: Article 3 – Regulations Governing Implementation of ISP Civil Liability Exemption, Article 90terdecies – the Copyright Act

Notice Requirements:

-The Rights Holder’s name, address, and telephone number (or fax number or e-mail address);
-The name(s) of the copyrighted work(s) being infringed;
-A statement requesting the removal of, or disabling of access to, the content that allegedly infringes the identified copyrighted work(s);
-Access or relevant information sufficient to enable the notified ISP to identify the allegedly infringing content;
-A statement that the Rights Holder or the agent thereof is acting in good faith and in the belief that the allegedly infringing content lacks lawful licensing or is otherwise in violation of the Copyright Act; and
-A declaration that the Rights Holder is willing to bear legal liability in the event there is misrepresentation with resultant injury to another.

Thailand

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Prior to its dissolution in December 2013, Thailand’s Parliament had evaluated copyright law reforms to enhance online copyright enforcement. However, such proposed reforms would only allow Thai Courts to issue takedown orders against ISPs hosting infringing content and provided no direct notice and takedown procedures for Rights Holders to directly petition ISPs to remove infringing content.

Governing Legislation: Copyright Act B.E. 2537 (1994)

Notice Requirements: N/A

South Korea

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: South Korea adopted notice and takedown protocols mirroring measures under U.S. copyright law (DMCA – 17 U.S.C. § 512) based on a side letter annexed in the U.S.-South Korea Free Trade Agreement.

Governing Legislation: Article 102-103 – Copyright Act

Notice Requirements:

-Statement that the information in the notice is accurate;
-Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) that appear to have been infringed;
-The identity, address, telephone number and electronic mail address of the submitting Rights Holder;
-Statement that the submitting Rights Holder has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its agent, or the law;
-Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the submitting Rights Holder is the owner of an exclusive right that is allegedly infringed or is authorized to act on the Rights Holder’s behalf; and
-Signature of the submitting Rights Holder.

Singapore

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: Singapore adopted its notice and takedown protocols in 2006 based on a side letter agreement annexed in the U.S-Singapore Free Trade Agreement.

Governing Legislation: Section 193(2)(b) – Copyright Act (Chapter 63), Copyright (Network Service Provider) Regulations 2005

Notice Requirements:

-Name and address of the submitting Rights Holder;
-Submitting Rights Holder address for service in Singapore (if a non-Singapore resident);
-Submitting Rights Holder’s telephone number, fax number and e-mail address;
-Identification of copyright material and location of allegedly infringing content;
-A statement that the information in the notice is accurate;
-A statement that the submitting Rights Holder is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;
-A statement that the submitting Rights Holder requires the ISP to remove or disable access to the allegedly infringing content;
-A statement that the submitting Rights Holder or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;
-A statement that the submitting Rights Holder is the owner, exclusive licensee, or agent thereof of the copyrighted content; and
-A statement that the submitting Rights Holder submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

Sri Lanka

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Sri Lanka does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Governing Legislation: Intellectual Property Act, No. 36 of 2003

Notice Requirements: N/A

Vietnam

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Although Vietnam recently considered Internet liability reforms as detailed in the proposed Stipulations on the Responsibilities for Intermediary Service Providers in the Protection of Copyright and Related Rights on the Internet and Telecommunications Networks (Joint Circular No. 07/2012/TTLT-BTTTT-BVHTTDL), such reforms have yet to be enacted and do not contain any specific notice and takedown provisions. However, Vietnam may adopt notice and takedown procedures in the future if the U.S.’ draft IPR provisions of the TPP are adopted.

Governing Legislation: Law No. 50/2005

Notice Requirements: N/A

USTR Requesting Public Comments to Assist in Identifying Foreign IP Protection Barriers for U.S. Exports

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.

Whac-A-Mole Trademark Litigation: Using U.S. Trademark Litigation to Combat Foreign Counterfeiters

Check out my post today on The IPKat about a number of similar recent U.S. trademark cases brought by well-known U.S. and Canadian brands against foreign (predominately Chinese) counterfeiters in order to stem the flow of inbound online counterfeit sales into the U.S.

It is available at: http://ipkitten.blogspot.com/2014/07/whac-mole-trade-mark-litigation-using.html.

Current Lawsuit Exposes Limitations in Russia’s New Online Copyright Laws

Check out my guest posting for the UK IP blog The IPKat on the Russian publishing house Eksmo’s copyright infringement lawsuit against leading Russian social media website VKontakte, and general online copyright enforcement in the Russian Federation. It is available at: http://ipkitten.blogspot.co.uk/2014/02/fifty-shades-of-grin-and-bear-it-as.html.

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

Over the last week, the Office of the U.S. Trade Representative (USTR) and the International Intellectual Property Alliance (IIPA) released reports on the current state of intellectual property (IP) protections for U.S. businesses abroad. These reports provide updated insights on foreign countries and foreign retail markets (both physical and online) that have recently caused U.S. businesses the most IP protection difficulties.

Here is a summary of the reports:

IIPA 2014 Special 301 Report Submission

On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”

Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.

What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?

Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.

Priority Watch List and Watch List Countries. The IIPA’s Special 301 Report Submission lists Argentina, Chile, China, Costa Rica, India, Indonesia, Russia, Thailand and Vietnam on the “Priority Watch List,” and Belarus, Brazil, Bulgaria, Canada, Ecuador, Greece, Israel, Kazakhstan, Kuwait, Mexico, Romania, Saudi Arabia, Switzerland, Taiwan, Tajikistan, Turkey, Turkmenistan, United Arab Emirates and Uzbekistan as “Watch List” countries. Although not as a severe rating as a Priority Foreign Country, being listed as a country on the Priority Watch List or simply Watch List means that a country has potential IP protection deficiencies that require varying levels of USTR monitoring.

Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.

Out-of-Cycle Review of Notorious Markets

Also, on Wednesday, the USTR released an Out-of-Cycle Review of Notorious Markets that identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting. The Review includes particular social media and file transferring sites hosted abroad, including sites hosted in Antigua and Barbuda, Bulgaria, Canada, China, Czech Republic, Finland (possibly), Netherlands, Poland, Russian Federation, Spain, Sweden, Ukraine, United Kingdom and Vietnam. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Paraguay, Spain, Thailand and Ukraine were also deemed notorious.

What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.

The TPP and Its Implications on Online Copyright Enforcement: Part II – Wikileaks

In November, Wikileaks leaked positions papers from the 18th round of Trans Pacific Partnership (TPP) negotiations concerning the intellectual property (IP) chapter of the TPP agreement. The papers including positions held by TTP member states (Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) on all forms of IP protections they will provide to IP rights owners and rights holders from their countries, and in many cases, from abroad under a final TPP agreement. Several IP news outlets have provided good analyses of the position papers including The IPKat and InfoJustice, among others.

These position papers also provide updated positions TPP member states have on online copyright enforcement, and particular, the positions each country has on adopting notice and takedown online copyright enforcement systems. In order to provide an update on my October article on the TPP’s implications on online copyright enforcement, the following are positions TPP member states have adopted in the position papers on crucial issues concerning online copyright enforcement under the TPP.

Exclusive Rights

Article QQ.G.1 of the position papers propose that authors of works and producers of phonographic works will have exclusive rights concerning the reproduction of their works in any manner, including any temporary or permanent electronic reproductions and storage. Canada, New Zealand and Vietnam object to such proposed protections. Additionally, Brunei Darussalam, Chile, Japan, New Zealand and Malaysia suggest in a footnote to the Article (“Article QQ.G.1 Footnote”) that exceptions and limitations to such exclusive rights should be established for:

Temporary acts of reproduction which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable (a) a lawful transmission in a network between third parties by an intermediary; or (b) a lawful use of a work; and which have no independent economic significance.

Alternatively, Vietnam proposes that “it shall be a matter for national legislation [of a TPP member state] to determine exceptions and limitations under which the right may be exercised.”

What’s Does This Mean? Providing authors of works and producers of phonographic works exclusive rights to all reproductions of their works, including electronic reproductions for any duration, gives such persons or entities greater direct ability to enforce rights in their works online because Internet Service Providers (ISPs) would ultimately have less discretion to reject notice complaints. As several commentators have mentioned[1], the text of Article QQ.G.1 effective eliminates fair use copyright exceptions provided under U.S. copyright law and the copyright laws of other TPP member states such as Japan.[2]  By doing so, TPP member state ISPs will have greater incentive to act on any copyright infringement on their networks, including alleged infringement notified through rights owner/holder notices, due to the likely elimination of the ISPs’ own fair use defense to contributory copyright infringement for hosting unauthorized reproductions of protected work. Although notice and takedown and notice and notice systems were adopted in TPP member states to provide ISPs safe harbor from such liability upon complying with submitted notices, many ISPs in practice do not act on such notices, by determining that their users’ unauthorized reproduction of copyright-protected works on their networks is fair use, and therefore permissible. Adoption of Article QQ.G.1 would effectively force ISPs to remove allegedly infringing content or face contributory liability for the copyright infringement of their users.

However, if TPP member states ultimately adopt the Article QQ.G.1 Footnote or Vietnam’s proposal, it is likely that they will be given the option to retain any fair use exceptions provided under their own national laws, potentially impacting the degree to which TPP member state ISPs will feel compelled to act on rights owners/holders notifications of alleged infringement.

ISP Liability

The TPP member states have divergent positions on the liability ISPs should be subject to for hosting content that infringes copyright-protected works. Article QQ.I.1 provides that the U.S., Australia, New Zealand, Peru and Singapore propose (while Malaysia and Vietnam oppose) that each TPP member state provide “legal incentives for [ISPs] to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Similarly, Canada proposes that each TPP member state “provide legal incentives for [ISPs] to comply, or remedies against [ISPs] who fail to comply, with any procedures established in each party’s law for: (a) effective notifications of claimed infringement; or (b) removing or disabling access to infringing material residing on its networks.”

What Does This Mean? The U.S. and Canada’s Article QQ.I.1 proposals likely leave mandating the adoption of notice and takedown systems in all TPP member states in doubt. The U.S. Article QQ.I.1 proposal provides the same ambiguous text as the February 2011 U.S. Draft IP Chapter, and the Canadian proposal goes so far as leaving the type of ISP legal incentive system each TPP member state should adopt up to its own discretion. As a result, both proposals would likely make the adoption of notice and takedown systems in TPP member states optional. For example, less forceful online enforcement systems, such as Canada’s notice and notice system provides legal incentives for ISPs to coordinate with copyright owners despite lacking the forceful effectiveness of notice and takedown systems currently available in other TPP member states such as U.S., Australia and Japan.

Despite the limitations of such proposals, mandating that TPP member states adopt some form of legal incentives for ISPs to enforce online copyright protections may likely compel TPP member states without any rights owner/holder notification systems, including Brunei Darussalam, Mexico and Vietnam, to adopt some form of rights owner/holder ISP notification system.

Notice and Takedown Procedures

The U.S., Australia, and Singapore propose in Annex to Article QQ.I.1.3(b)(ix) (while Canada, Malaysia and Mexico reject) adopting notice and takedown procedures as the “legal incentives” identified in Article QQ.I.1. These procedures closely resembles notice and takedown procedures provided under U.S., Australian, and Singaporean law. As a part of these procedures, copyright owners and/or rights holders whose works qualify for copyright protection in a TPP member state would have to submit a notice to an ISP that provides the following information in order to have the ISP examine and remove the infringing content in question:

    1. The identity, address, telephone number, and electronic mail address of the complaining party (or its authorized agent);
    2. Information reasonably sufficient to permit the ISP to identify and locate the material residing on a system or network controlled or operated by it or for it that is claimed to be infringing, or to be the subject of infringing activity, and that is to be removed or disabled;
    3. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) claimed to have been infringed;
    4. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law;
    5. A statement that the information in the notice is accurate;
    6. A statement with sufficient indicia of reliability that the complaining party is the (U.S. propose “holder”) (Australia and Singapore propose “owner”) of an exclusive right that is allegedly infringed, or is authorized to act on the owner’s behalf; and
    7. The signature of the person giving notice.

What Does This Mean? If a final TTP Agreement mandates that TPP member states adopt a notice and takedown system, implementing Annex to Article QQ.I.1.3(b)(ix) would effectively require TPP member states to adopt similar notice and takedown procedures provided under U.S., Australian, Japanese and Singaporean law. Yet, opposition from Canada, Malaysia and Mexico may make the adoption of such requirements more unlikely.

Additionally, as Australia and Singapore propose that the “owner” of the alleged infringed copyright work be the “complaining party” listed in a notice, it is unknown whether an adopted TPP notice and takedown system would allow licensees of copyright-protected works (the “holders”) to utilize notice and takedown procedures in TPP member states. Limiting such a system’s accessibility to copyright owners only may be overly burdensome for such owners, as it would force them to enforce protections in their works on behalf of their licensees.

What’s The Takeaway?

If the U.S.-backed proposals listed above are enacted in a final TPP Agreement, copyright owners and rights holders from TPP member states, and other countries, will qualify for greater online copyright enforcement protections in TPP member states. However, such proposals have multiple obstacles before being effectively implemented. Such proposals must be included in a final TPP agreement, fully implemented as legislation in each TPP member state, and effectively upheld in each TPP member state’s legal system. Time will tell whether such enhanced online copyright enforcement protections will be adopted in the final TPP Agreement and enacted in all TPP member states.


[1] See Sean Flynn, Margot Kaminski, Brook Baker, & 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, Dec. 6, 2011, 13, available at http://infojustice.org/wp-content/uploads/2011/12/TPP-Analysis-12062011.pdf (Analysis of the TPP’s fair use exception elimination was based on the U.S.’ leaked IP chapter proposal from Feb. 2011).
[2] Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 140 (2d Cir. 2008). See Saiful Bakri Abdul Aziz, An Assessment of Fair Dealing in Malaysian Copyright Law in Comparison with the Limitation Provisions of Japanese Copyright Law – Within the Current Technology Background, 41 Hosei Riron J. of L. & Pol. 298, 300, 305 (2009), available at http://dspace.lib.niigata-u.ac.jp:8080/dspace/bitstream/10191/12583/1/41(3.4)_298-327.pdf.

The Trans Pacific Partnership and Its Implications on Online Copyright Enforcement

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.[1] 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).[2] 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.[3] 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.[4] 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.[5]

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

United States
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.
Governing Legislation
Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))
Notice Requirements

  1. A physical or electronic signature of a person authorized to act on behalf of the content owner alleging infringement;
  2. Identification of the copyrighted work(s) claimed to have been infringed;
  3. Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);
  4. Information reasonably sufficient to permit the ISP to contact the copyright owner (i.e. address, telephone number, e-mail, etc.);
  5. A statement that the copyright owner has a good faith belief that the use of their content is not authorized by the copyright owner; and
  6. A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner of an exclusive right that is allegedly infringed.
Australia
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.
Governing Legislation
Regulation 20(I-J), 1969 Copyright Regulations
, Schedule 10 (Part 1), 1969 Copyright Regulations
Notice Requirements

  1. The statement: “I, the person whose name is stated below, issue this notification for the purposes of condition 3 of item 4 of the table in subsection 116AH(1) of the Copyright Act 1968 and regulation 20(I) of the Copyright Regulations 1969.”
  2. The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7 below], being copyright material residing on your system or network.”
  3. (If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;
  4. (If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;
  5. (If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;
  6. The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and
  7. An attached schedule to the notice including a description of the copyright material and the location of the infringing content.
Brunei Darussalam
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.[6]
Governing Legislation N/A
Notice Requirements N/A

Canada
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.[7]
Governing Legislation
Section 41.25-41.27, The Copyright Act
Notice Requirements

  1. Must be in writing;
  2. State the claimant’s name, address and other relevant communication information;
  3. Identify the work or other subject-matter to which the claimed infringement relates;
  4. State the claimant’s interest or right with respect to the copyright in the work or other subject-matter;
  5. Specify the location data for the electronic location to which the claimed infringement relates;
  6. Specify the infringement that is claimed;
  7. Specify the date and time of the commission of the claimed infringement; and
  8. Provide any other information or as provided by other regulations.

Chile
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.[8] Instead, Chile requires that Authorized Parties submit an expedited judicial petition to evaluate alleged infringement and be granted a takedown.
Governing Legislation
Article 85R, Law No. 20.435 (amending Law No. 17.336 on Intellectual Property
Judicial Petition
Requirements

  1. The allegedly infringed rights, with a specific indication of the rights and the infringement procedure;
  2. The infringing material; and
  3. The location of the infringing material in the respective ISP network or system.

Japan
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.
Governing Legislation
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)
Notice Requirements

  1. Information and location of the particular alleged infringement;
  2. Suggested enforcement actions to be taken by the ISP;
  3. The rights in the work that are allegedly being infringed;
  4. The reasoning why the copyright owner/rights holder believes that an infringement has taken place; and
  5. The copyright owner/rights holder’s contact information.

Malaysia
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.[9]
Governing Legislation
Article 43H, Copyright (Amendment) Act 2010
Notice Requirements As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.

Mexico
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.[10]
Governing Legislation N/A
Notice Requirements N/A

New Zealand
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.[11]
Governing Legislation
Section 92C and 92D, Copyright Act 1994
;
Section 4, Copyright (Infringing File Sharing) Regulations 2011
Notice Requirements

  1. Copyright owner’s name;
  2. Copyright owner’s contact details (e-mail address, telephone number, physical address, mailing address in New Zealand (if no physical address);
  3. (If a rights owner is acting as an agent for the copyright owner) Evidence of the rights owner’s authority to act as agent for the copyright owner;
  4. Identify the IP address at which the infringements are alleged to have occurred;
  5. The date on which the infringements are alleged to have occurred at that IP address;
  6. For each copyright work in which copyright is alleged to have been infringed: (i) the name of the copyright owner in the work; (ii) the name of the work, along with any unique identifiers by which it can be identified; (iii)
 the type of work it is (in terms of section 14(1) of the Act); (iv) 
the restricted act or acts (in terms of section 16(1) of the Act) by which copyright in the work is alleged to have been infringed; (v) the New Zealand date and time when the alleged infringement occurred or commenced, which must specify the hour, minute, and second; and (vi)  the file sharing application or network used in the alleged infringement; and
  7. A statement that, to the best of the rights owner/copyright owner’s knowledge, the information provided in the notice is true and correct; and that statement must be verified by a signature (physical or digital) of the rights owner/copyright owner or a person authorized to sign on behalf of the rights owner/copyright owner.

Peru
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)
Notice Requirements

  1. Statement that the information in the notice is accurate;
  2. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) appeared to have been infringed;
  3. The identity, address, telephone number and electronic mail address of the complaining party (or its authorized agent);
  4. Statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its owner, its agent or the law;
  5. Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the complaining party is the owner of an exclusive right that is allegedly infringed or is authorized to act on the owner’s behalf; and
  6. Signature of the person giving notice.
Singapore
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.
Governing Legislation
Section 193C(2)(b) Copyright Act (Chapter 63)
, Copyright (Network Service Provider) Regulations 2005
Notice Requirements

  1. Name and address of the complainant (if acting on the copyright owner’s behalf);
  2. Complainant address for service in Singapore (if a non-Singapore resident);
  3. Complainant’s telephone number, fax number and e-mail address;
  4. Identification of copyright material and location of allegedly infringing content;
  5. A statement that the information in the notice is accurate;
  6. A statement that the complainant is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;
  7. A statement that the complainant requires the network service provider to remove or disable access to the allegedly infringing content;
  8. A statement that the complainant or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;
  9. A statement that the complainant is the owner, exclusive licensee, or agent thereof of the copyrighted content; and
  10. A statement that the complainant submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

Vietnam
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.[12]
Governing Legislation N/A
Notice Requirements N/A


**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.


[1] 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.
[2] 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.
[3] Id. at 50.
[4] Copyright Issues in the TPP: Malaysia, Public Citizen, 2012, available at http://www.citizen.org/TPP-Copyright-Issues-MY#_ftnref.
[5] See id.
[6] 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.
[7] 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.
[8] 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.
[9] IIPA 2012 Report: Malaysia, IIPA, 207-08, 2012, available at http://www.iipa.com/rbc/2012/2012SPEC301MALAYSIA.PDF.
[10] IIPA 2013 Report: Mexico, IIPA, 210, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301MEXICO.PDF.
[11] 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.
[12] IIPA 2013 Report: Vietnam, IIPA, 289, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301VIETNAM.PDF.