Australia’s Attorney-General’s Department (“AG”) recently opened a public consultation on potential reforms to Australian copyright laws (Copyright Act 1968; “Copyright Act”) that would provide copyright owners and any person or entity possessing rights in copyright protected work(s) (collectively, “Rights Holders”) enhanced cross-border copyright protections. Among multiple reforms detailed in the public consultation discussion paper entitled Online Copyright Infringement (“Paper”), the AG proposed that the Copyright Act be amended to provide a Rights Holder the ability to apply for a Court order to block a foreign-based website from accessing Australia.
Titled Proposal 2 in the Paper (“Proposal”), the proposed amendments would allow a Rights Holder to obtain an Australian Court order against an Internet service provider (“ISP”) hosting an infringing website outside of Australia to block the site from access to Australia if the website’s dominate purpose is to infringe copyright. If enacted, a qualifying Rights Holder could effectively obtain limited Australian judicial protection for their work(s) outside of Australia, or conversely allow a Rights Holder to stem the international reach of a particular infringing website. The Proposal would be particularly useful for enforcement in cases where a Rights Holder wishes to enforce copyright protections in their work(s) against a non-Australian website hosted in a country whose laws or legal system is unwilling or unable to enforce the Rights Holder’s rights.
However, there are a number of issues about the Proposal that Rights Holders need to be aware of:
Legal Assistance Likely Required. A Rights Holder would likely need Australian legal assistance to obtain an order under the Proposal. As mentioned, a Rights Holder wishing to block a non-Australian based website under the Proposal would have to obtain an Australian court order to block the website from Australia. To do so, a Rights Holder would likely have to hire an Australian attorney, and particularly an attorney with intellectual property experience, to obtain such an order. By effectively requiring such legal assistance, seeking enforcement under the Proposal will have financial costs and would likely be more expensive that simply submitting a website take down petition to the ISP hosting the website. However, a Rights Holder’s enforcement options may be limited to judicial action such as that offered under the Proposal if the country where an infringing website is hosted does not possess an effective notice and takedown system.
High Burden of Proof. Rights Holders wishing to utilize the Proposal’s enforcement methods may face a high evidentiary burden to qualify for its protection. As detailed in the Report, in order for an Australian Court to grant an order against an ISP under the Proposal, a Rights Holder needs to establish that the website’s “dominate purpose” is to infringe copyright. Requiring that a Rights Holder establish that a foreign-based website’s dominant purpose is to infringe copyright likely establishes a high evidentiary burden as it requires showing that the site’s main purpose is to infringe copyright instead of merely establishing that the site infringes copyright as provided under most national notice and takedown enforcement systems. Based on this higher evidentiary burden, obtaining an injunctive order under the Proposal will likely be more difficult for a Rights Holder to obtain than a notice takedown. More generally, the Proposal’s evidentiary burden will likely exempt a large number of non-Australian websites that infringe copyright, and would otherwise be subject to enforcement action, simply because their infringing acts do not constitute their “dominate” purpose.
Indemnification and Enforcement Costs. The Proposal would also require that a Rights Holder “meet any reasonable costs associated with an ISP giving effect to an order,” and indemnify an ISP against any damages claimed by a third party against the ISP arising out of the ISP’s enforcement of an order under the Proposal. The financial costs an ISP may have for giving effect to an order under the Proposal is undefined, thereby making it unclear on how much it would cost for a Rights Holder to compensate an ISP for enacting an order under the Proposal.
Further, requiring that a Rights Holder indemnify a foreign ISP, namely provide legal protection for the ISP against any legal action it may face for complying with a Court order under the Proposal, would likely pose substantial risks and possible costs to Rights Holders. If a foreign website owner’s business is harmed when their website is blocked from Australia by an order under the Proposal, the Rights Holder in question will likely have to cover the legal costs and obligations of the ISP in any proceeding brought by the website owner against the ISP as the Proposal does not provide any limits on a Rights Holder’s ISP indemnity obligations. This makes seeking enforcement under the Proposal a riskier option that submitting a takedown notice as most countries’ notice and takedown systems do not generally mandate that a Rights Holder indemnify an ISP for any enforcement action taken by the ISP on behalf of the Right Holder arising out of a takedown notice.
It is Still a Proposal. The Proposal is just that, a proposal. It remains unclear whether the Proposal will be implemented, and if so what additional requirements, costs or obligations a Rights Holder may have in seeking enforcement under its protections.
What’s The Takeaway? If implemented, the Proposal would provide Rights Holders enhanced cross-border copyright enforcement protections by allowing them to prevent the access of foreign-hosted infringing websites into Australia. However, the Proposal has costs and risks that Rights Holders need to seriously consider, especially if cheaper and less risky enforcement options such as takedown notices are available. Further, the ambiguity of the Proposal’s costs and obligations mean that further details about the Proposal is needed in order to determine what particular costs and obligations Rights Holders will have in seeking enforcement under the Proposal.
On a side note, those who are interested in providing comments on the Proposal or other proposals in the Paper may submit comments to the AG (instructions here) before September 1, 2014.
Check out my recent guest post on UK IP blog The IPKat on Disney’s trademark dispute with Canadian DJ and electronic musician Deadmau5 over a U.S. mouse-head design trademark application. It is available at: http://ipkitten.blogspot.com/2014/04/disney-and-canadian-dj-spar-over-us.html.
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.
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, 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. 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.
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:
- The identity, address, telephone number, and electronic mail address of the complaining party (or its authorized agent);
- 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;
- Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) claimed to have been infringed;
- 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;
- A statement that the information in the notice is accurate;
- 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
- 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.
 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).
 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.
In recent months, representatives from the Trans Pacific Partnership Agreement (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) member states have been pushing to finalize a final TPP agreement. A particularly contentious issue in these negotiations has been the intellectual property (IP) chapter of the TPP Agreement. A predominant proposed version, the U.S. Draft IP Chapter, has been controversial as it requires TPP member states to adopt IP standards that are in many cases is on par with those under U.S. law, and in some cases, beyond U.S. law and generally-accepted global IP protection standards in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). As a result, several TPP member states have objected to U.S. Draft IP Chapter, thereby stalling progress towards a final TPP agreement.
Of particular importance in these debates is the online copyright enforcement protections procedures the TPP agreement will mandate for its member states. If enacted, the U.S. IP chapter would likely require TPP member states to adopt copyright enforcement measures that would allow copyright owners, rights holders, or agents thereof (collectively, “Authorized Party”) to directly petition Internet Service Providers (ISPs) to remove hosted infringing content. Article 16.3(a) of the U.S. Draft IP Chapter requires that TPP member states provide “legal incentives for [Internet] service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Although ambiguous, adopting such provisions would likely require TPP member states to maintain or enact a form of copyright protection protocols that would allow Authorized Parties to petition ISPs hosting or transmitting infringing content to remove such content.
The main question arising from these potential reforms is whether they would result in TPP member states adopting U.S.-like notice and takedown protocols, or less forceful ISP copyright enforcement measures. Notice and takedown systems generally provide ISPs a safe harbor from liability for hosting or transmitting infringing content if they remove infringing content they host or transmit upon receipt notice from an Authorized Party. In contrast, other TPP member states do not provide copyright owners such a level of protections. Some of these states do not require that a ISP take down allegedly infringing content upon receipt of notice from an Authorized Party to qualify for safe harbors. Others require that Authorized Parties seek judicial copyright enforcement to combat online infringement, which is a more delayed and costly process.
Although not stated in the U.S. Draft IP Chapter, the U.S. may, as it has in previous U.S. free trade agreements (FTAs), negotiate that TPP member states adopt notice and takedown protocols in TPP side letters. In previous U.S. FTAs, the U.S. has executed additional annexed agreements, known as “side letters,” where other countries agreed to adopt U.S.-like notice and takedown protocols. This has had varying degrees of success. Australia, Peru and Singapore, among others, have adopted notice and takedown protocols similar to those under the U.S.’ Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)) in FTA side letters with the U.S., while Chile rejected adopting such a system.
Similar mixed outcomes could result from the TPP as well. Brunei Darussalam, Mexico and Vietnam do not maintain any ISP copyright enforcement protocols short of judicial action. Further, a number of TPP member states including Canada, Chile and New Zealand maintain online copyright enforcement systems that arguably do not provide the same level of direct and expedient enforcement power or protections to Authorized Parties as notice and takedown systems. Lastly, some TPP member states such as Malaysia that do maintain notice and takedown protocols have called for establishing TPP agreement implementation exceptions for existing domestic legislation. This would likely give TPP member states with weaker online copyright enforcement systems such as Canada, Chile and New Zealand the ability to maintain their less forceful online copyright enforcement systems, while still remaining parties to the TPP Agreement.
Despite these limitations, the TPP’s potential adoption of notice and takedown protocols will ultimately impact the ability to which Authorized Parties can more quickly, cheaply and effectively enforce online copyright protections in the TPP member states. Adoption of notice and takedown protocols will enable Authorized Parties to more easily enforce online copyrights in TPP member states, while making such protocols optional would likely make such enforcement more difficult. Only time will tell whether the U.S. and other notice and takedown proponents will persuade other TPP member states to adopt notice and takedown protocols.
To understand how the TPP would impact individual TPP member state online copyright enforcement systems, the following are brief summaries of the TPP member states’ current online copyright enforcement systems. However, there are a few things to note:
- Jurisdiction and National Treatment: In order for an Authorized Party to utilize a notice and takedown in a TPP member state, their content must generally qualify for national copyright protection in that TPP member state, and the particular ISP must be subject to the jurisdiction of that country. Further information about these preliminary issues can be found in my March 25, 2013 posting.
- Enforcement System Legend: As mentioned, online copyright enforcement procedures vary amongst the TPP member states. Countries that maintain a notice and takedown protocols are identified below as a “Notice and Takedown,” while countries that maintain systems that simply require ISPs to notify infringers of their infringing acts without infringing content removal are listed as “Notice and Notice.” Countries that do not have means for Authorized Parties to directly enforce their copyright protections through ISP notices, and are instead forced to seek judicial action are referred to as “Judicial System.”
TPP Member State Online Copyright Enforcement Systems
|Enforcement System||Notice and Takedown|
|Overview and Notes||The U.S. notice and takedown protocols have been implemented in FTAs with Bahrain, Dominican Republic, Morocco, Oman, Peru, Singapore and South Korea.|
Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))
|Enforcement System||Notice and Takedown|
|Overview and Notes||Australia adopted notice and takedown protocols based on a side letter annexed in the U.S-Australia FTA.|
Regulation 20(I-J), 1969 Copyright Regulations, Schedule 10 (Part 1), 1969 Copyright Regulations
|Enforcement System||Judicial System|
|Overview and Notes||Brunei does not currently maintain any legal means for Authorized Parties to directly petition ISPs to takedown infringing content. However, recent reports have indicated that Bruneian authorities are evaluating copyright reforms, which may include ISP notice and takedown protocols.|
|Enforcement System||Notice and Notice|
|Overview and Notes||Although Canada considered adopting a notice and takedown protocols in 2006, they opted for a notice and notice system in 2012 in order to balance the interests of copyright owners and Internet users.|
Section 41.25-41.27, The Copyright Act
|Enforcement System||Judicial System (*notice and takedown variation)|
|Overview and Notes||Chile rejected adopting notice and takedown protocols in both the U.S.-Chile FTA and proposed copyright reforms in 2010. Instead, Chile requires that Authorized Parties submit an expedited judicial petition to evaluate alleged infringement and be granted a takedown.|
Article 85R, Law No. 20.435 (amending Law No. 17.336 on Intellectual Property
|Enforcement System||Notice and Takedown|
|Overview and Notes||Japan’s notice and takedown protocols establishes that allegedly infringing content will be taken down seven days after notice is provided from the ISP to the alleged infringer.|
Article 3(2)(ii), Act No. 137 0f 2001 (Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Senders)
|Enforcement System||Notice and Takedown|
|Overview and Notes||Malaysia enacted copyright reforms in 2010 that permit Authorized Parties to submit infringement notices to ISPs that will remove infringing content within 48 hours of notice to the alleged infringer from the ISP. However, The International Intellectual Property Alliance (IIPA) has criticized Malaysia’s notice and takedown protocols for not providing enough details about notice requirements and enforcement procedures.|
Article 43H, Copyright (Amendment) Act 2010
|Notice Requirements||As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.|
|Enforcement System||Judicial System|
|Overview and Notes||Mexico has no legal procedures for Authorized Parties to remove infringing online content short of seeking judicial action. It is also important to note that Mexican telecommunications laws prohibit ISPs from disclosing their customers’ personal information.|
|Enforcement System||Notice and Takedown-Judicial System Mix (aka Three Strikes)|
|Overview||After enacting notice and takedown protocols in 2008, New Zealand repealed them in February 2010. They were replaced with a Three Strikes System, requiring Authorized Parties to submit multiple notices to an ISP, and a takedown application to the New Zealand Copyright Tribunal in order to obtain the removal of infringing content. The Three Strike System subjects the Authorized Party to fees of NW$25.00 (US$20.00) per notice, and NZ$200.00 (US$208.00) per application.|
Section 92C and 92D, Copyright Act 1994;
Section 4, Copyright (Infringing File Sharing) Regulations 2011
|Enforcement System||Notice and Takedown|
|Overview and Notes||Peru adopted notice and takedown protocols based on a side letter annexed in the U.S-Peru Free Trade Agreement.|
|Governing Legislation||Copyright Law (Legislative Decree No. 822)|
|Enforcement System||Notice and Takedown|
|Overview and Notes||Singapore adopted its notice and takedown protocols in 2006 based on a side letter agreement annexed in the U.S-Singapore FTA.|
Section 193C(2)(b) Copyright Act (Chapter 63), Copyright (Network Service Provider) Regulations 2005
|Enforcement System||Judicial System|
|Overview and Notes||Although Vietnam recently adopted Internet liability reforms under the Internet Laws (Decree No. 72/2013), such reforms were silent on online copyright enforcement. The IIPA has criticized Vietnam for failing to adopt effective procedures to address online piracy administrative complaints.|
**Important Note**: Even if a country maintains notice and takedown protocols, an ISP is generally not obligated to take down infringing content despite legal incentives to do so. Those with further questions about a TPP member state’s online copyright enforcement procedures should seek qualified counsel in that particular country.
 Joint Press Statement TPP Ministerial Meeting Bandar Seri Begawan, Brunei Darussalam, Office of the U.S. Trade Representative, Aug. 2013, available at http://www.ustr.gov/Joint-Press-Statement-TPP-Ministerial-Brunei.
 See Sean Flynn, Margot Kiminski, Brook Baker and Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property: American University Washington College of Law, 3, Dec. 6, 2011, available at http://infojustice.org/tpp-analysis-december2011.
 Id. at 50.
 Copyright Issues in the TPP: Malaysia, Public Citizen, 2012, available at http://www.citizen.org/TPP-Copyright-Issues-MY#_ftnref.
 See id.
 See Calls For Brunei To Carry Tougher Copyright Laws, The Brunei Times, Aug. 10, 2013, available at http://www.bt.com.bn/news-national/2013/08/10/calls-brunei-carry-tougher-copyright-laws.
 Paul Chwelos, Assessing the Economic Impacts of Copyright Reform on Internet Service Providers, Industry Canada, Jan. 2006, available at http://www.ic.gc.ca/eic/site/ippd-dppi.nsf/eng/ip01090.html; Bob Taratino, Online Infringement: Canadian “Notice and Notice” vs US “Notice and Takedown”, Heenan Blaikie LLP, Jun. 27, 2012, available at http://www.lexology.com/library/detail.aspx?g=e0e3ffdb-a96f-4176-add3-92fd2812d4bc.
 Chile’s Notice-and-Takedown System for Copyright Protection: An Alternative Approach, Center for Democracy & Technology, Aug. 28, 2012, available at https://www.cdt.org/files/pdfs/Chile-notice-takedown.pdf.
 IIPA 2012 Report: Malaysia, IIPA, 207-08, 2012, available at http://www.iipa.com/rbc/2012/2012SPEC301MALAYSIA.PDF.
 IIPA 2013 Report: Mexico, IIPA, 210, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301MEXICO.PDF.
 Section 92A Bill Introduced in Parliament Today, Behive.Gov.Nz, Feb. 23, 2010, available at http://www.beehive.govt.nz/release/section-92a-bill-introduced-parliament-today.
 IIPA 2013 Report: Vietnam, IIPA, 289, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301VIETNAM.PDF.
Trade secrets are arguably the most common form of intellectual property transmitted across borders in today’s global market. Any business that seeks to capitalize on foreign market opportunities—either by working with a foreign partner or establishing their own foreign operations—is likely to transmit confidential information abroad. However, such cross-border transmissions directly impact the legal protections afforded to such information as the extent of trade secret protection and enforceability of trade secret rights varies between countries. Examining some of the main differences in trade secret protection and enforceability between countries is important as businesses increasingly must choose how to contractually structure protections for their confidential information abroad. Further, understanding the extent of trade secret protections afforded to confidential information in different markets can help businesses establish effective country-specific trade secret protection strategies that address the strengths and weaknesses of a particular country’s legal protections for trade secrets.Particular factors that should be considered include:
- Qualifying confidential information
- Injunctive enforceability of trade secret rights
- Foreign judicial system effectiveness
Qualifying Confidential Information. A preliminary factor for businesses to consider is the extent to which their confidential information is protected under a country’s trade secret laws. Most countries have adopted a minimum level of legal protections for trade secrets, yet such protections often vary. World Trade Organization (WTO) member states are required to adopt minimum legal protections for trade secrets. Under Article 3 and Article 39(2) of The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), WTO member states must provide persons or entities of their countries and other WTO member states legal rights to prevent the disclosure of lawfully-held information that:
- Is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
- Has commercial value because it is secret; and
- Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
As this widely accepted minimum legal requirement is ambiguous, WTO member states have the ability to establish their own variation, often differing the amount and type of confidential information qualifying for trade secret protection. For example, the U.S. and China provide legal protection for confidential information that has actual (current) or potential commercial value, where TRIPS is silent about the time to which such value must be established. This means that a business that has developed or acquired confidential information that will be commercially valuable at a future date will qualify for legal protection for such information in these countries, subject to protection and secretive requirements.
In contrast, several countries are silent on this commercial value issue and maintain other factors for determining trade secret protection. For example, in India, trade secrets have been judicially defined as “formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others.” Not only is this definition silent on when commercial value must be established, it is also silent on what constitutes sufficiently reasonable protection procedures for such information to qualify for trade secret protection.
As these examples illustrate, countries often maintain different qualifying standards for trade secret protection despite satisfying their TRIPS obligations. Based on these differences, businesses must carefully determine what portions of their confidential information qualifies for trade secret protection in a particular country.
Injunctive Enforceability of Trade Secret Rights. Trade secret owners must also consider their ability to protect their trade secrets through injunctive relief in a particular country. Most countries will grant a permanent injunction against a person or entity after they are found by a Court to have misappropriated a trade secret. However, this often requires initiating and succeeding in a legal action, which is not certain to succeed and may take a substantial amount time before being granted. This could harm the commercial value of the confidential information, and in many cases, the potential success of the trade secret owner’s foreign business operations or strategies. As a result, seeking a preliminary injunction, namely an injunction sought at the onset of a trade secret misappropriation proceeding, is essential to effective trade secret protection.
A business’ ability to seek a preliminary injunction to protect their trade secret varies from country-to-country. In the U.S., a trade secret owner may seek a preliminary injunction against a misappropriating party or parties providing them assistance through an initial motion in a misappropriation proceeding. Although U.S. jurisdictions generally maintain high evidentiary burdens for trade secret owners to obtain preliminary injunctions, U.S. courts allow evidentiary exchanges between the parties (known as discovery) and copies of original evidence to be admissible under specific requirements. U.S. courts may also permit discovery proceedings to be expedited based on the sensitivity of the confidential information at issue.
In contrast, other countries make obtaining a preliminary injunction more difficult. For example, preliminary injunctions are rarely granted in Chinese trade secret cases due to the absence of a discovery process and restrictive evidentiary burdens. Chinese trade secret proceedings do not have discovery processes and Chinese Courts will generally only accept original written forms of evidence. This means that trade secret owners in China are forced to gather their own evidence, and can only admit original written evidence, which makes satisfying the evidentiary burden to obtain an preliminary injunction substantially more difficult.
As illustrated with China’s trade secret injunction procedures, trade secret owners need to determine what challenges they will face in enforcing their trade secret protections under a country’s judicial procedures, regardless of the extent of a country’s trade secret protections.
Foreign Judicial System Effectiveness. Even if a country’s injunctive judicial procedures are surmountable, a country must also have an effective judicial system to even allow injunctive enforcement to be brought forward. This requires determining whether a country has an effective judicial system to enforce trade secret protections. There are several resources for businesses to determine the effectiveness of a foreign country’s judicial system, including their national IP offices and trade agencies. In the U.S., the Office of the U.S. Trade Representative (USTR) publishes annual reports (known as Special 301 Reports) that identify IP enforcement concerns for U.S. IP owners by country, including ineffective judicial systems. For example, in the 2013 USTR Special 301 Report, the USTR identified Argentina, Bulgaria, Greece, Guatemala, India, Indonesia, Paraguay, Peru and Turkey as having judicial system inefficiencies for enforcing IP rights.
Parting Notes. Although the above-mentioned factors are important when evaluating cross-border trade secret protections, examining such factors only comprise a portion of an effective foreign trade secret protection strategy. Establishing the best protections for trade secrets abroad should also include other protection measures including the development of internal business protocols to prevent unauthorized information disclosures, among other procedures. Working with qualified counsel can effectively assist with evaluating both the above-mentioned factors and internal business protocols.
 Uniform Trade Secrets Act, § 1.4; 18 U.S.C. § 1839(3)(b).
 J. Benjamin Bai and Guoping Da, Strategies for Trade Secrets Protection in China, 9 Nw. J. Tech. & Intell. Prop. 351, 359 (2011) available at http://scholarlycommons.law.northwestern.edu/njtip/vol9/iss7/1 (citing Zui Gao Ren Min Fa Yuan Guan Yu Shen Li Bu Zheng Dang Jing Zheng Min Shi An Jian Ying Yong Fa Lv Ruo Gan Wen Ti De Jie Shi, Interpretation of Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil Cases Involving Unfair Competition, art. 10, Fashi 2/2007 (Sup. People’s Ct. 2007) (China)).
 Pedro A. Padilla Torres, Overview of International Trade Secret Protection, National Law Center for Inter-American Free Trade, (2001) available at http://db.natlaw.com/interam/mx/ip/sp/spmxip14.htm.
 Zafar Mahfooz Nomani and Faizanur Rahman, Intellection of Trade Secret and Innovation Laws in India, J Intell. Prop Rights, 341, 346, (Jul. 2011) (citing American Express Bank Ltd. v Priya Puri (2006) III LLJ 540 (Del) (India)).
 Ronald S. Wynn, Trade Secret Litigation: TROs, Preliminary Injunctions, and Some Things to Think About First, HansonBridgett, 2-3, Mar. 2012 available at http://www.hansonbridgett.com/Our-Attorneys/~/media/Files/Publications/IP_alert_trade_secret_litigation_2012.pdf.
 Id. at 2 (burden generally includes “(1) probable success on the merits, (2) irreparable harm without the requested injunction, and (3) a balance of hardships between the trade secret claimant and the alleged misappropriator that favors the injunction”).
 Id. at 3.
 J. Benjamin Bai and Guoping Da, supra note 2, at 362-63.
In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:
- Can you submit such a notification in a particular country?
- Does the country you wish to enforce your IP rights have an IP customs notification system?
- Does such a country’s national IP customs notification system include the type of IP you wish to protect?
- What are the particular foreign customs agency’s IP notification requirements?
Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:
Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.
Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).
Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.
Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.
Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.
If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.
Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.
Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.
What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.
Below are the IP customs notification submission requirements for some of the worlds’ major markets.
Types of IP Covered
|United States||19 C.F.R. 133.1 et seq.
||Copyright and Trademark||Instructions: Copyright and trademark notification (known as e-Recordation) requires:
-The trademark or copyright’s U.S. registration number
-The name, address and citizenship of the IP rights owner
-The place(s) of manufacture of goods bearing the trademark or copyright
-The name and address of individuals authorized to use the trademark or copyright
-The identity of a parent company or subsidiary authorized to use the trademark or copyright (if any)
Fees: US $190.00 per copyright and trademark (per class of goods and services).
Effective Duration of Notification: 20 years.
|e-Recordation Notification Portal|
||Copyright Act 1968, Subsection 135(2)||Copyright and Trademark||General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.
Duration of Notification: Four years.
|China||Decree of the General Administration of Customs, No. 183||Copyright, Patent and Trademark||Requirements: To file a IP customs notification with the General Administration of Customs (GAC), an application must include:
-a copy of the IP rights holder’s business registration certificate and a Chinese translation
-a copy of the Chinese registration certificate for the copyright, patent or trademark
-Proof of Power of Attorney (if registered by an agent)
-Registration fee (see below)
-Licensing agreements (if any)
-Pictures of the relevant goods and their packaging
Submission: Forms can be filled online or by mail.
Fees:Approximately US $130.00 (800 RMB).
|GAC Online Notification Form (In Chinese)|
|European Union||Council Regulation (EC) No 1383/2003, Article 5.5||Copyright, Geographical Indication, Patent and Trademark||The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.
Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).
|Community Application For Action|
|India||Notification no. 47/2007 – Customs (n.t.)||Copyright, Geographical Indication, Patent and Trademark||Registration: The CBEC requires that copyrighted works be registered with Indian Copyright Office, and geographical indications, patents and trademarks with the Office of the Controller General of Patents, Designs & Trade Marks prior to submitting a CBEC customs notification.
Ports of Entry: The CBEC also requires that notifications be submitted to particular ports of entry.
Duration of Notification: Minimum period of one (1) year.
|Online Notification Submission Portal|
**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.
Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.
Establishing methods for enforcing copyright protections online has become increasingly important to protecting a content owner’s rights in their works—as demonstrated by the recent launch of the Copyright Alert System (CAS) in the U.S. Most content owners do not have the same resources for online copyright enforcement as the Media and Internet service provider industries (two central sponsors of CAS). However, nearly all owners of protected works can take advantage of relatively inexpensive online copyright enforcement methods to protect their works in many of the world’s major markets. The most commonly used means of enforcement are takedown notices—demands sent from content owners to Internet Service Providers (ISPs) or website hosts to remove infringing content hosted on websites under their control. Depending on the circumstances, an ISP may be compelled upon receiving a takedown notice to remove infringing content from a hosted website, or in some cases, an entire website, for a temporary or extended amount of time.
Takedown notices can have substantial implications on an infringer’s online presence. A takedown can interrupt access to a infringer’s site, potential disrupt or halt their business, and can possibly result in the deletion of their site’s user comments and feedback. With these potentially serious consequences in mind, a rights holder should consider exhausting all alternatives before submitting a takedown notice against an infringing website.
Determining whether to and how to utilize takedown notices as a international copyright enforcement tool requires understanding a few things:
- What international legal protections does a rights owner have in their works
- Where are works being infringed online
- Where is an ISP subject to jurisdiction
- What countries have national takedown procedures and what are such countries’ requirements
- Further issues after a takedown notice is submitted
Let’s break these down a little further:
What International Legal Protections Does a Rights Owner Have in Their Works? A rights owner cannot consider utilizing takedown procedures abroad without first establishing that their works qualify for international copyright protection. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (A list of Berne Convention countries is available here), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.
If a content owner has questions about whether their content qualifies for international copyright protection, they should consider consulting with their national copyright office or a qualified attorney.
Where are Works Being Infringed Online? To determine if any enforcement measure can be utilized, it is essential to know where in the world a work is being infringed online. If a work is being used without authorization and is available on the Internet in a particular country, it is likely being infringed in that particular country. For example, if a song by a Spanish artist, that qualifies as a protected work under the Berne Convention, is uploaded without authorization by a Malaysian file sharer to their website and is accessible throughout the entire world, it is being infringed in both Malaysia and Spain, as well as potentially in the other 164 Berne Convention countries.
Where is an ISP Subject to Jurisdiction? In order to effectively submit a takedown notice in a country where a protected work is infringed online, the ISP of the infringing website must be subject to that country’s laws in order for the ISP to be potentially compelled to comply with a takedown request. Generally, an ISP is only subject to the laws of a country where it is physically located or countries where it is engaged in enough commercial activity to establish personal jurisdiction. Determining an infringing site’s ISP can be completed through conducting a WHOIS database search. Such a search may also help identify the ISP’s host country by providing details about the ISP. However, this is not always a certainty.
If an ISP is located in the country where a work is infringed online, a rights owner only needs to establish whether that country has takedown procedures (see next section) to determine whether they can utilize takedown notices. However, determining whether an ISP is subject to the copyright laws of a country where it is not physically located is more difficult. In the U.S., a foreign ISP must at least have sufficient “minimum contacts” with the U.S. for the foreign-based ISP to be subject to U.S. law, and potential liability under the Digital Millennium Copyright Act (DMCA). Int’l Shoe Co. v. Wash., 326 U.S. 310, 316 (1945). Generally, such contacts have required purposeful interactions with U.S. citizens and commerce, such as marketing its services in the U.S. that would foreseeably bring the ISP under U.S. jurisdiction. Asahi Metal Indus. v. Superior Court, 480 U.S. 102, 112 (1987). It must also be “reasonable” to bring the ISP under U.S. jurisdiction, based on multiple factors. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980).
To illustrate these requirements using the previous example of the Spanish musician: Let’s assume that an Australian ISP hosts the Malaysian file-sharer website whose infringing content is available in the U.S., but the ISP does not market or make its services available in the U.S. In this case, the ISP would likely not be subject to U.S. law. Therefore, it is likely that the ISP is only subject to Australian law due to its location in Australia—and possibly Malaysian law if qualifying under Malaysian personal jurisdiction requirements. Alternatively, if the Australian ISP actively markets its services to U.S. citizens and businesses, the ISP may be subject to U.S. jurisdiction, and thereby potential liability under the DMCA. This would give the Spanish artist the ability to submit a U.S. takedown notice against the Australian ISP that would subject the ISP to potential liability under the DMCA if is fails to take action on the takedown notice.
Two important things to note:
- Failing to qualify for jurisdiction does not mean a rights holder is barred from demanding an ISP to takedown content that infringes a protected work. It simply means that an ISP may not be compelled or have incentive to remove infringing content because they are unlikely to face liability.
- Many content submission sites like YouTube and Facebook, as well as search engines such as Google and Bing, maintain their own takedown submissions procedures that are generally available to users regardless of their geographical location or where a protected work is infringed online.
What Countries Have National Takedown Procedures and What are Such Countries’ Requirements? To effectively utilize takedown procedure against an ISP, the ISP’s host country or country to which it is brought under personal jurisdiction must possess takedown procedures for rights holders, and such rights holders must comply with such procedural requirements. This requires understanding:
- Whether the country to which the ISP is subject to jurisdiction has takedown notice legislation
- If so, what are the country’s takedown notice requirements and procedures.
National Takedown Notice Legislation. Surprisingly, not all countries maintain takedown notice legislation for rights holders. Major markets including Argentina, Brazil, Canada, India, Israel, Mexico and Russia are among those that don’t currently have takedown notice procedures. Despite such gaps, a large number of Berne Convention countries have enacted takedown notice legislation including the U.S., Australia, China, France, Italy, Germany, Japan, New Zealand, Singapore, South Africa, South Korea, Taiwan and the United Kingdom, to name a few.
National Takedown Notice Requirements: Below are the requirements for takedown notices in a number of major markets that have notice and takedown legislation.
Takedown Notice Requirements
|United States||DMCA (17 U.S.C. § 512(c)(3)(A))||
|Australia||Regulation 20I, Schedule 10, 1969 Copyright Regulations||
|China||Article 14, Regulations on the Protection of the Right to Network Dissemination of Information Networks||
|Japan||Article 3(2)(ii), Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to DemandDisclosure of Identification Information of the Senders||
|South Africa||Section 77(1), The Electronic Communications and Transactions Act||
|United Kingdom||Section 124(a)(3), Communications Act 2003||
Note: Some of these national take down requirements are derived from translations. Rights holders should consult with National Copyright Offices or qualified attorneys in the jurisdictions they wish to enforce their rights in order to confirm these and other take down notice requirements.
Further Issues After a Takedown Notice is Submitted. Finally, it is important to note that there are issues to consider after a takedown notice has been submitted. First, an infringer may respond to a takedown notice by submitting a counter notice attesting to their rights in a protected work, even after their online content or website has been blocked or removed. Also, an ISP may refuse to act after a takedown notice has been submitted. If these circumstances arise, one should consider contacting a qualified attorney to discuss further actions.
Special thanks to co-author Kenneth Louis Strocsher, J.D. Candidate, 2014, Seattle University School of Law.
The Thai government recently pursued two IP reforms that will provide qualifying foreign copyright owners enhanced enforcement protections for their works in Thailand. This will happen through strengthened government enforcement efforts, as well as improved Internet enforcement procedures. These efforts could not have come at more crucial time—for both Thailand and foreign copyright owners. The U.S. Trade Representative’s Office (USTR) placed Thailand on its 2012 Priority Watch List of countries with IP enforcement concerns, and the International Intellectual Property Alliance (IIPA) has reported that foreign industries lose several hundreds of millions dollars annually in Thailand due to IP infringement, with the latest statistics available showing that the U.S. software industry in particular lost a staggering $427 million in 2010 due to unlicensed sharing.
So what are the specific Thai reforms and which foreign works qualify for enhanced protection?
New Enforcement Office: Last week, the Thai Department of Intellectual Property announced the opening of the Operations Centre for the Suppression of Intellectual Property. It was established to monitor suspected infringer movements, distribution channels, tax payments, cash flows, and money laundering activities. The formation of the Centre will also assist Thai authorities in increasing prosecutions of IP infringers, which the IIPA identified as being a priority action needed to combat IP infringement.
Proposed Legislation: The Thai cabinet finalized the Copyright Act (Draft Act) late last year, a proposed amendment to Thai copyright law that provides several copyright enforcement reforms, particularly by improving Internet enforcement procedures. According to analysis by Nuttaphol Arammuang, attorney at the law firm Tilleke & Gibbins, the Draft Act provides a copyright owner the ability to petition a Thai Court to compel an online service provider, namely a person hosting or storing data on behalf of a user who infringes the copyright owner’s work, to take down infringing online content. To do so, a copyright owner must submit a petition to a Thai Court. This will be followed by an investigation, and if found sufficient, will compel the Court to order the service provider to temporarily or permanently remove the infringing content.
These judicial takedown provisions will potentially provide foreign copyright owners expanded enforcement rights, yet they may be not as directly efficient or inexpensive as in other countries. The Draft Act’s petition system provides similar means for copyright owners to enforce their rights online against infringers and service providers as found in the U.S. under the Digital Millennium Copyright Act (DMCA) and Australia under the 1969 Copyright Regulations. However unlike those laws, the Draft Act appears to not create a notice and takedown system, specifically the ability for copyright owners to directly petition service providers to take down infringing content. Without a notice and takedown system, copyright owners under the Draft Act are less able to quickly remove infringing online content, and instead are required to submit a Court petition prior to obtaining online content removal. The absence of such a system could also potentially burden copyright owners with additional legal costs by requiring them to seek a judicial order rather than submitting a potentially less-expensive extrajudicial take down notice.
Despite these potential concerns, Thailand’s recent entrance into the Trans Pacific Partnership (TPP) negotiations may ultimately result in the Thai government adopting notice and takedown system laws for protected works from other TPP member states. Leaked TPP agreement IP chapter drafts have included requirements for TPP member states to limit liability safe harbor protections for service providers, which may compel Thailand to adopt notice and takedown systems for works from other TPP member states. This may at least provide copyright owners from other TPP member states (Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, U.S., and Vietnam) the ability to utilize notice and takedown enforcement protections in Thailand in the future.
Qualifying Foreign Works: To obtain protections provided by these reforms, as well as all other legal protections currently provided under Thai copyright law, a foreign work must qualify as a protected work under the Berne Convention for the Protection of Literary and Artistic Works. A foreign work obtains protection under the Berne Convention when such a work becomes attached, meaning that the author of the work is a national of a Berne Convention country, a habitual resident in a Berne Convention country, or that the author publishes their work first in Berne Convention country or within a Berne Convention country 30 days after an initial publishing in a non-Berne Convention country. A list of Berne Convention countries is available here.
What do you think of these reforms? What IP enforcement issues are you facing in Thailand?
Special thanks to Jessica Taback for her assistance!