Tagged: copyright

USTR Releases Annual Out of Cycle Review of Notorious Markets

It is that time of year again when the Office of the U.S. Trade Representative (USTR) releases its annual report on Notorious Markets—The 2014 Out-of-Cycle Review of Notorious Markets. As we reported on last year, this annual review identifies foreign physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting.

This year’s review identified several foreign social media and file transferring websites, as well as a number of Internet service providers (ISPs), as being notorious markets including those hosted or located in Argentina, the British Virgin Islands, Canada, China, Czech Republic, France, Netherlands, Panama, Philippines, Poland, Russia, San Marino, Spain, Switzerland, Ukraine, the United Kingdom and Vietnam. Additionally, physical markets in Argentina, Brazil, China, Ecuador, India, Indonesia, Mexico, Nigeria, Paraguay, Thailand and Uruguay were also identified as being notorious markets.

The USTR also highlighted a number of recent developments including efforts by certain previously listed Chinese sites to curb piracy activities on their websites, as well as increased enforcement actions by rights holders and government officials to shut down physical and online markets in Brazil, the European Union and Ukraine among others.

What’s The Takeaway? As we have said before, every foreign market has its own IP protection challenges. U.S. businesses that operate abroad or are expanding into new markets should review the USTR’s 2014 Out of Cycle Review of Notorious Markets to help evaluate the IP protection risks associated with particular markets they wish to enter. Doing so can help to ensure that such businesses can better protect their IP assets abroad.

Recap to Online Copyright and Trademark Enforcement in the U.S. and Abroad

For those who did not have a chance to attend my January 20, 2015 presentation Online Copyright and Trademark Enforcement in the U.S. and Abroad, the Washington State Bar Association International Practice Section’s Blog, The Global Gavel, has provided a summary of my presentation. It overviews the main issues discussed and key takeaway points. Those with further questions should feel free to contact me.

A link to the presentation summary can found here.

UK IP Office Releases Report on Online Copyright Enforcement Across Markets

The United Kingdom Intellectual Property Office (UK IPO) released a report today providing a comprehensive and insightful breakdown of online copyright enforcement regimes in multiple countries. Titled International Comparison of Approaches to Online Copyright Infringement, the report evaluates online enforcement regimes in many of the world’s major markets including Brazil, Canada, France, Italy, The Netherlands, South Korea, Spain, the U.K., and the U.S. Beyond providing in-depth details and statistics on each country’s online enforcement procedures that international IP policy nerds like myself find interesting, the report highlights how each country’s enforcement regimes have dealt with the proliferation of broadband Internet and various online media services. It is also a good primer for practitioners to understand online copyright enforcement procedures across borders. Give it a read!

Breaking Down Australia’s Injunctive Online Copyright Enforcement Reforms

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

The IPKat posting is available here.

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!

Finland’s Citizen Copyright Initiative In Doubt: A Sad But Necessary Win For Cross-Border Online Copyright Enforcement?

Today, I posted on The IPKat about recent copyright reform efforts in Finland. Particularly, I discussed how Finland’s (and possibly the world’s) first crowdsourced copyright legislative reform proposal is in danger of failing, and how its potential failure is a sad but likely necessary measure to protect both domestic and foreign rights holders works online.

It is available here.

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.

IP and Business Presentation in Vancouver, B.C.

Wanted to let you all know that my colleague Rachel Buker (blogger for Art and Artifice) and I will be giving a free lunch-time presentation on IP and business legal issues Canadian entrepreneurs, start-ups and other businesses may face as they enter the U.S. market (and other foreign markets) on September 12th at noon at HiVE Vancouver.

There are only a few open spots available, so if you are going to be in Vancouver and want to attend, please RSVP through Eventbrite.

Hope you can make it! It should be a good time.

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

The Office of the U.S. Trade Representative (USTR) announced yesterday that it is requesting public comments to assist the USTR in identifying significant barriers to U.S. exports of goods and services, including foreign IP protection deficiencies. The comments are being collected for inclusion in the USTR’s annual National Trade Estimate Report on Foreign Trade Barriers (NTE Report) that identifies barriers to U.S. exports including the “lack of intellectual property protection (e.g., inadequate patent, copyright, and trademark regimes).”

Last year’s NTE Report identified several U.S. export markets as possessing IP protection trade barriers, or at least IP protection concerns, including Angola, Argentina, Australia, Bahrain, Brazil, Cambodia, Canada, Chile, China, Colombia, Dominican Republic, Ecuador, Egypt, El Salvador, Ethiopia, European Union (member states), Ghana, Guatemala, Hong Kong, India, Indonesia, Iraq, Israel, Japan, Kazakhstan, Kenya, Kuwait, Laos, Malaysia, Mexico, Morocco, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Russia, Saudi Arabia, South Africa, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, Uzbekistan and Venezuela.

Public comments for inclusion in this year’s NTE Report are due to the USTR by no later that October 29, 2014. Further instructions on the NTE public comment submission process are available here.

Australia Considers Enhanced Cross-Border Online Copyright Enforcement Protections

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.