Category: WTO

Interview with IP Fridays on the TPP and Online Copyright Enforcement

Last week, I had the privilege to be interviewed for one of my favorite podcasts, IP or otherwise, IP Fridays about online copyright enforcement implications under the Trans Pacific Partnership (TPP; Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam). Particularly, I discussed the implications of the TPP’s proposed Internet service provider (ISP) safe harbor scheme, and how it will affect TPP member states’ current copyright laws, copyright rights holders, ISPs, and Internet freedoms, as will be further detailed in my article on the same topic for the European Intellectual Property Review to be released in March 2016.

A link to the podcast can be found here.

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Nigeria Proposes Adoption of Notice and Takedown Safe Harbor Scheme

Intellectual Property (IP) Watch reported late last month that Nigeria was in the process of reforming its copyright laws for the digital age, including the adoption of its own notice and takedown Internet service provider (ISP) safe harbor scheme. As detailed in the Nigerian Copyright Commission’s (NCC) draft 2015 Copyright Bill (Draft Bill), the proposed notice and takedown scheme would create extrajudicial legal procedures in which an owner of a copyright protected work can petition a ISP subject to Nigerian jurisdiction to remove content hosted by the ISP that infringes the work. Like in the U.S. under the Digital Millennium Copyright Act (DMCA) and other countries that have notice and takedown safe harbor schemes, such an ISP would be required to remove such hosted content under certain circumstances in order to qualify for a safe harbor form contributory liability for copyright infringement.

If adopted, such procedures would make Nigeria one of the few countries in Africa with a notice and takedown scheme, giving copyright owners greater means of online enforcement of their rights in Nigeria, and potentially beyond. However, Nigeria’s draft notice and takedown scheme varies from its foreign counterparts. Further, it is uncertain whether it will be adopted, and if so, whether it will be adopted in its proposed form. To understand these issues, it is important to first understand the provisions of Nigeria’s proposed notice and takedown scheme.

Proposed Measures

Section 47 of the Draft Bill provides that an owner of a copyright-protected work or their agent (Complainant) may submit a notice of alleged online infringement of their work to an ISP hosting such infringing content. In order for such a notice to be effective, it must include the following information:

  • A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right in a work that is allegedly infringed;
  • Identification of each work claimed to have been infringed;
  • Identification of the content that is claimed to be infringing such work(s), and information reasonably sufficient to permit the ISP to locate such content;
  • Contact information reasonably sufficient to permit the ISP to contact the Complainant, such as an e-mail address, telephone number, and/or physical address;
  • A statement under penalty of perjury that the Complainant has a good faith belief that use of the allegedly infringing content in the manner complained of is not authorized by the copyright owner, their agent, or the law; and
  • A statement that the information in the notice is accurate, and that the Complainant is authorized to act on behalf of a owner of an exclusive right that is allegedly infringed.

Once a notice is submitted to an ISP, the ISP shall promptly notify their subscriber hosting the allegedly infringing content (Subscriber) of receipt of the notice. If the Subscriber fails to provide the ISP with information justifying their use of such content within ten days after the receipt of the ISP’s notification, the ISP must take down or disable access to such content. However, if the Subscriber provides information justifying their legitimate use of the content, or the ISP is convinced that the Complainant’s notice is without merit, the ISP will promptly inform the Complainant of their decision not to takedown or disable such content.

An ISP can restore access to taken down or disabled content if the ISP receives a written counter-notice from the Subscriber, which the ISP has forwarded to the Complainant immediately upon receipt; and the ISP does not receive, within 10 days, a subsequent notice from the Complainant indicating that no authorization has been granted to the Subscriber for use of the content.

Further, the Draft Bill states that an ISP shall not be liable for any action taken under the notice and takedown scheme that is taken in “good faith.” A copyright owner dissatisfied with a determination or action by an ISP may refer their matter to the NCC for further evaluation.

Evaluating The Proposed Scheme

Now that we know the NCC’s proposed notice and takedown scheme under the Draft Bill, what are its strengths and weaknesses?

Mandated Removal: The Draft Bill obligates an ISP to remove infringing content upon receipt of a Complainant’s notice. As such, it ultimately makes the Draft Bill’s notice and takedown scheme more robust than ISP safe harbors without mandated take down or disabling provisions. For example, the NCC’s proposed scheme is more robust that notification systems that solely require an ISP to notify a Subscriber of their infringing acts upon receipt of a Subscriber’s notice as in Canada, or national schemes that require multiple Complainant notifications and/or expedited judicial action in order for a ISP to be mandated to take action as in New Zealand or Chile.

Delayed Response Time: While the NCC’s proposed scheme mandates an ISP’s removal of hosted content under certain circumstances, it only mandates that an ISP remove infringing content 10 days after receiving a Complainant’s notice and upon receiving no response from a Subscriber. This contrasts from the DMCA that requires an ISP to act “expeditiously” to remove infringing content upon receipt of a Complainant’s notice. See 17 U.S.C. § 512(b)(2)(E). However, the NCC’s proposed scheme still mandates that an ISP eventually remove infringing content after the 10 day period, mirroring similar waiting periods in other countries (Japan (7 day wait period), and Malaysia (48 hours), among others), and without requiring any reposting of such content should no further legal action be taken by the Complainant (as in India).

Ambiguous Exemption: While the Draft Bill obligates an ISP to remove infringing content under qualifying circumstances as described above, its good faith clause may allow an ISP to evade liability for failing to remove infringing content should the ISP’s acts or omissions be considered in good faith. Without any further definition of “good faith” in the Draft Bill, it is uncertain what such a standard would be, nor how it will be interpreted.

What’s The Takeaway? It remains to be seen whether the NCC’s notice and takedown scheme will be adopted, and whether it will be adopted in its current proposed form. Its provisions offer multiple benefits, as well as some drawbacks, for copyright owners compared to its foreign counterparts. Those with current online copyright enforcement concerns in Nigeria should seek qualified Nigerian counsel.

Final TPP Agreement Reached; Full IP Text Yet to Be Released

After eight years of negotiations, it was reported on Monday, October 5, 2015, that a final agreement to the Trans Pacific Partnership (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) was reached. While a final text of the TPP agreement has yet to be released, and is reported to not be available for at least another month, some TPP member state governments have provided some details concerning the TPP’s IP provisions.

Ars Technica reported that New Zealand government officials announced that the TPP agreement will require New Zealand to extend its copyright protection term from life of the author + 50 years to life of the author + 70 years, thereby requiring New Zealand to adopt copyright protections beyond minimum requirements provided in existing international copyright treaties such as the Berne Convention for the Protection of Literary and Artistic Works and the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Despite the potential expansion of copyright protections under the TPP, such reporting also revealed that the TPP agreement will not require New Zealand to adopt stronger Internet Service Provider (ISP) enforcement provisions against repeat copyright infringers. According to the reporting, New Zealand will not be required to adopt a “six-strike” enforcement program, namely requirements mandating that a New Zealand ISP terminate an infringer’s Internet account after six cases of reported copyright infringement, as established amongst many U.S. ISPs.

It remains unclear whether all TPP member states will be required to adopt these copyright protections, as well as what other mandated IP protections are included in the TPP. Further information about the TPP’s IP chapter and its implications on TPP member states will be reported here once available.

A Great Honor in the Trade-Related Twitter World

Today I was recognized by one of my favorite trade and export-related blogs, Shipping SolutionsInternational Trade Blog, as being an Export Thought Leader on Twitter. I was flattered to be listed among other persons and organizations I highly admire in the export world, including Becky Park DeStigter (@IntlEntreprenr), The International Trade Administration (@TradeGov), U.S. Customs & Border Protection (@CustomsBorder), and other distinguished people and organizations.

A link to the blog article can be found here.

Thank you Shipping Solutions for the recognition. It is truly an honor!

Presentation on Cross Border IP Protection for U.S. and Canadian Businesses

For those interested in U.S. and Canadian IP protection issues, I will be giving a presentation at the April 2, 2015 King County Bar Association (KCBA) – Intellectual Property Section meeting in Seattle, Washington on U.S. and Canadian cross-border IP protection issues. Particularly, the presentation will cover IP protection issues that U.S. businesses should consider as they expand into Canada, and conversely, IP issues Canadian businesses should consider as they enter the U.S. market.

The April 2nd KCBA IP Section meeting will be held at KCBA’s headquarters at 1200 Fifth Avenue, Suite 700, Seattle, Washington 98101. A webcast of the meeting will be made available to KCBA IP Section members. Further details on the webcast are available here.

Hope you can make it!

Online Copyright and Trademark Enforcement Seminar

Wanted to let you all know that I will be speaking on cross-border online copyright and trademark enforcement at a Washington State Bar Association – International Practice Section seminar on January 20, 2015 at Noon at Davis Wright Tremaine LLP in Seattle, Washington.

Titled Online Copyright and Trademark Enforcement in the U.S. and Abroad, the seminar will cover issues in obtaining cross-border protection for copyrighted works and trademarks, understanding copyright and trademark enforcement systems in the U.S. and other jurisdictions, and using copyright and trademark enforcement measures on major online social media and retail sites such as Google, Facebook, Amazon, Baidu and others.

Further information on attending the seminar can be found here.

Hope you can make it. It should be fun!

Part IV: Enforcing Online Copyright Protection Abroad: North and Central America

I come back to you again with part IV of my plan to cover online copyright enforcement procedures throughout the world—this time North and Central America. Although several Central American countries agreed to adopt notice and takedown procedures under the Dominican Republic-Central American Free Trade Agreement (DR-CAFTA; U.S., Costa Rica, Dominican Republic, El Salvador, Honduras, Guatemala, and Nicaragua), such countries are at varying levels of adopting such provisions.

Determining whether owners or rights holders of a copyright-protected work (collectively, “Rights Holders”) can enforce rights in their work online and abroad depends on multiple factors. This includes: (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) and/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 North and Central American country. However, a couple of preliminary notes:

Classifications: A North and Central American country that maintains 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” country. A country that maintain systems that simply require ISPs to notify infringing subscribers of their allegedly infringing acts without removal requirements for safe harbor protection are identified as a “Notice and Notice System” country. 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 that country’s judicial system are referred to as a “Judicial System” country.

Notice Limitations: Unfortunately, even if a country listed below maintains a Notice and Takedown System, an ISP may still refuse to disable access to an allegedly infringing 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 are in the process of implementing copyright reforms, either through legislation or judicial action, there is the possibility that the following online copyright enforcement information may soon change.

United States

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: The Digital Millennium Copyright Act establishes the notice and takedown procedure for a Rights Holder to inform ISPs of infringing content. Once a ISP has received a Rights Holder’s notice, an ISP has to prevent access to such infringing content in order to qualify for safe harbor protection from contributory copyright infringement. The U.S. has pushed for such  requirements to be implemented in a number of countries to whom its has concluded free trade agreements (FTAs) including Australia, Colombia, Peru, DR-CAFTA, and others.

Governing Legislation: Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))

Notice Requirements:

-Identification of the copyrighted work(s) claimed to have been infringed;
-Identification of the online 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);
-Information reasonably sufficient to permit the ISP to contact the Rights Holder (address, telephone number, e-mail, etc.);
-A statement that the Rights Holder has a good faith belief that the use of their content in the identified online material is not authorized by the copyright owner, its agent, or the law;
-A statement that the information provided in the notice is accurate, and under penalty of perjury, that the Rights Holder is authorized to act on behalf of the Rights Holder of an exclusive right that is allegedly infringed; and
-A Rights Holder’s physical or electronic signature.

Belize

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Belize 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 – Cap. 252

Notice Requirements: N/A

Canada

Enforcement System: Notice and Notice System

Berne Convention Member: Yes

Overview and Notes: Canada adopted the Copyright Modernization Act in June 2012, which included a formal notice and notice system. Although the adoption of such a system provides some means for Rights Holders to directly enforce rights in their works, the International Intellectual Property Alliance (IIPA) had questioned whether Canada’s notice and notice system provides sufficient legal incentives for Canada-based ISPs to removing infringing content upon request, and ultimately whether it is an effective means for Rights Holders to directly enforce rights in their works.

It is important to note that Canada 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: Section 41.25-41.27, Copyright Modernization ActCopyright Act.

Notice Requirements:

-Must be in writing;
-The Rights Holder’s name, address and other relevant communication information;
-Identify the work or other subject-matter to which the claimed infringement relates;
-State the Rights Holder’s interest or right to the work or other subject-matter;
-Specify the online location where the claimed infringement occurs;
-Specify the claimed infringement;
-Specify the date and time of the claimed infringement; and
-Provide any other information or as provided by other Canadian regulations.

Costa Rica

Enforcement System: Notice and Notice System (Minimal)

Berne Convention Member: Yes

Overview and Notes: Costa Rica is a DR-CAFTA signatory country, yet it has not fully adopted notice and takedown provisions as provided under Ch. 15, Section 15.11.27(ix) of the agreement. In 2011, Costa Rica adopt notice and notice provisions in Decree No. 36,880 COMEX-JP. However, the IIPA has criticized these legislative reforms as the Decree only mandates that an ISP notify an infringing subscriber of their alleged infringing act upon notice from a Rights Holder, and that such notification only needs to be communicated to the subscriber in question within 45 days of a Rights Holder’s notification to an ISP.

Governing Legislation: Law No. 8863 on Copyright and Related Rights, Decree No. 36,880 COMEX-JP

Notice Requirements (derived from an unofficial translation):

-Expressly and accurately identify the rights allegedly infringed;
-Provide an in-country address or location to receive notifications concerning the notice;
-Identify the infringing material and its online location; and
-Provide other accurate and timely information to enable the ISP to fully identify the subscriber or supplier of the allegedly infringing material.

El Salvador

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

Overview and Notes: El Salvador is a DR-CAFTA signatory country, mandating that it adopt notice and takedown provisions detailed under Ch. 15, Section 15.11.27(ix) of the agreement. In 2005, El Salvador passed copyright legislative reforms under Legislative Decree No. 912 that included the adoption of notice and takedown provisions, granting ISPs safe harbor for contributory liability for copyright infringement by acting on a notice of alleged infringement from Rights Holders. However, Decree No. 912 provided no specific notice requirements.

Governing Legislation: Law on the Promotion and Protection of Intellectual Property Rights as amended by Legislative Decree No. 912

Notice Requirements: Unspecified

Guatemala

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Guatemala is a DR-CAFTA signatory country, mandating that it adopt notice and takedown provisions detailed under Ch. 15, Section 15.11.27(ix) of the agreement. However, Guatemala has not passed any legislative reforms to adopt notice and takedown provisions, and it does not currently appear to provide any express legal incentives or procedures for ISPs to remove hosted infringing content upon notification from Rights Holders.

Governing Legislation: Law on Copyright and Related Rights and Regulations Under the Law on Copyrights and Related Rights

Notice Requirements: N/A

Honduras

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Honduras is a DR-CAFTA signatory country, mandating that it adopt notice and takedown provisions detailed under Ch. 15, Section 15.11.27(ix) of the agreement. However, Honduras has not passed any legislative reforms to adopt notice and takedown provisions, and it does not currently appear to provide any express legal incentives or procedures for ISPs to remove hosted infringing content upon notification from Rights Holders.

Governing Legislation: Copyright and Neighboring Rights Law

Notice requirements: N/A

Mexico

Enforcement System: Judicial System

Berne Convention Member: Yes

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

However, Mexico may soon be required to implement notice and takedown provisions or notice and notice provisions if the Trans Pacific Partnership (TPP) is finalized and it includes such provisions as has been proposed.

Governing Legislation: Federal Law on Copyright

Notice Requirements: N/A

Nicaragua

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Nicaragua is a DR-CAFTA signatory country, obligating that it adopt notice and takedown provisions mandated under Ch. 15, Section 15.11.27(ix) of the agreement. However, Nicaragua has not passed any legislative reforms to adopt notice and takedown provisions, and it does not currently appear to provide any express legal incentives or procedures for ISPs to remove hosted infringing content upon notification from Rights Holders.

Governing Legislation: Law of Copyright and Neighboring Rights, Law on Amendments and Additions to Law of Copyright and Neighboring Rights (Law No. 577 of 2006)

Notice Requirements: N/A

Panama

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Panama ratified a FTA with the U.S. (U.S.-Panama FTA) that mandated under Ch. 15.11, Article 15.11, Section 27(a) of the agreement that Panama adopt “legal incentives for service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” However, Panama does not appear to have adopted any such “incentives” through a notice and takedown system or a notice and notice system.

Governing Legislation: Law No. 64 on Copyright and Neighboring Rights

Notice Requirements: N/A

Parting Notes: As I have mentioned in previous posts, it is important to note that there are issues to consider after a takedown notice has been submitted. First, an alleged infringer may respond to a Rights Holder notification 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. Good luck!

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 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

Local Case Highlights Important Cross-Border Trade Secret Protection Issues Businesses Should Consider

On March 17th, the U.S. Attorney’s Office filed charges in U.S. Federal Court (Western District Washington) against Russian national Alex A. Kibkalo for stealing trade secrets from software giant Microsoft under The 1996 Economic Espionage Act (18 U.S.C. § 1832).  Although U.S. v. Kibkalo (14-mj-00114) has yet to be ruled on, and despite involving a large multi-national business like Microsoft, this case highlights several cross-border trade secret protection issues all internationally-focused businesses should consider.

Facts. To understand these trade secret protection issues, it is important to first understand the alleged facts of this case. According to the U.S. Attorney’s Complaint, Kibkalo was a Microsoft employee, working as software architect in Microsoft’s Lebanon office. He allegedly signed a non-disclosure agreement (“NDA”) at the beginning of his employment.

Between July and August 2012, Mr. Kibkalo allegedly established a virtual machine on a computer server at Microsoft’s Redmond, Washington headquarters to upload unreleased versions of Microsoft’s software updates and a software development kit (collectively, “Content”) to his personal cloud storage account. The Content was secured on Microsoft’s internal system by Microsoft’s internal security program that included limited facility and electronic system access points, facility monitoring, and unique identifying signature technology to track downloaded proprietary information from the internal system. Those who accessed content on Microsoft’s internal electronic system were also required to accept Microsoft’s terms of service that included warnings concerning the proprietary nature of content on the internal system as well as reminders to Microsoft employees and others of their non-disclosure obligations pertaining to proprietary information on the system.

Once Mr. Kibkalo allegedly downloaded the Content, he allegedly transmitted links to the Content to a French technology blogger whose actual geographic location was unknown. Microsoft became aware of alleged transmission through an outside source who was contacted by the blogger about the Content. Microsoft subsequently monitored the blogger’s communication through the blogger’s Microsoft Windows Live Messenger account. An examination of the blogger’s Messenger communications and emails allegedly verified the transmission and unique identifiers in the Content.

Lessons To Be Learned. Although this fact pattern is by no means novel, it does reveal cross-border trade secret protection issues all companies should consider in order to ensure their trade secrets are protected under U.S. and foreign trade secret laws.

So what protection issues need to be considered?

Worker Protection Measures. Kibkalo emphasizes that establishing trade secret protections through contractual provisions with contractors and employees is essential for businesses to protect their proprietary information, both at home and abroad. Under U.S. law (18 U.S.C. § 1839(3)) and international legal standards (Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) – Art. 39.2(c)), businesses who wish for their proprietary information to qualify for trade secret protection must take “reasonable” measures to protect such information from public disclosure. Often, this requires that a business have their employees, contractors or any other person to whom they disclose the business’ proprietary information sign a NDA (or similar agreement) prohibiting such persons from disclosing the proprietary information to others. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 521 (9th Cir. 1993).

Assuming Microsoft had an effective NDA executed with Mr. Kibkalo under U.S. law, Microsoft would likely be in a position to enforce trade secret protections in the Content under U.S. law.

Any business, regardless of its geographical location or the location of its employees or contractors, can also take similar protective measures.

Internal Security Measures. This case also highlights that international businesses need to establish internal security measures in order to effectively protect their proprietary information. Electronic and facility security measures, such as access restrictions, surveillance mechanisms have been found to be reasonable protection measures to help businesses qualify for trade secret protection. See U.S. v. Chung, 659 F.3d 815, 825 (9th Cir. 2011). As Microsoft attests to maintaining similar security measures, such measures would likely help Microsoft to obtain trade secret protection for its Content.

It goes without saying that not all businesses can afford the same level of security protections as multinational businesses like Microsoft. Yet, simple and relatively inexpensive security measures such as password protections, locking of files and computer equipment, as well as posting confidential notices on proprietary information can effectively help any business to better qualify for trade secret protection, both in the U.S. and abroad.

Online Monitoring Measures. Lastly, this case highlights the importance of online surveillance and tracking measures that businesses should consider acquiring to protect their proprietary information throughout the globe. Although generally not required to obtain trade secret protection under U.S. and/or foreign laws, the monitoring of suspected persons or entities who may be misappropriating trade secrets (*provided they are done so in compliance with applicable laws and regulations), as well as tracking software, are both effective tools to identify and prevent trade secret misappropriation. Microsoft would not have been able to determine that Mr. Kibalko had allegedly stolen the Content in the U.S. and allegedly transmitted it to the blogger outside of the U.S. without its unique identifier technology.

Granted, not all businesses have the same circumstances that allowed Microsoft to find out about the blogger and Mr. Kibalko’s alleged activities (e.g., outside sources, access to Messenger and email accounts, etc.), nor the available funds to conduct Microsoft’s extensive online surveillance activities. Yet, there are many (legal) monitoring services, investigating agencies, and identifying software products on the market that can help businesses better monitor misappropriating conduct both at home and abroad.

What’s The Takeaway? It remains to be seen how U.S. v. Kibkalo will be decided. However, this ongoing case shows that all internationally-focused businesses can develop sound practices and procedures to ensure their proprietary information is protected throughout the world. By establishing effective worker protection measures, internal security measures, as well as online monitoring measures, businesses can better protect their trade secrets from being misappropriated both at home and abroad.