Today I was recognized by one of my favorite trade and export-related blogs, Shipping Solutions‘ International Trade Blog, as being an Export Thought Leader on Twitter. I was flattered to be listed among other persons and organizations I highly admire in the export world, including Becky Park DeStigter (@IntlEntreprenr), The International Trade Administration (@TradeGov), U.S. Customs & Border Protection (@CustomsBorder), and other distinguished people and organizations.
A link to the blog article can be found here.
Thank you Shipping Solutions for the recognition. It is truly an honor!
The Office of the U.S. Trade Representative (USTR) announced yesterday that it is requesting public comments to assist the USTR in identifying significant barriers to U.S. exports of goods and services, including foreign IP protection deficiencies. The comments are being collected for inclusion in the USTR’s annual National Trade Estimate Report on Foreign Trade Barriers (NTE Report) that identifies barriers to U.S. exports including the “lack of intellectual property protection (e.g., inadequate patent, copyright, and trademark regimes).”
Last year’s NTE Report identified several U.S. export markets as possessing IP protection trade barriers, or at least IP protection concerns, including Angola, Argentina, Australia, Bahrain, Brazil, Cambodia, Canada, Chile, China, Colombia, Dominican Republic, Ecuador, Egypt, El Salvador, Ethiopia, European Union (member states), Ghana, Guatemala, Hong Kong, India, Indonesia, Iraq, Israel, Japan, Kazakhstan, Kenya, Kuwait, Laos, Malaysia, Mexico, Morocco, New Zealand, Nicaragua, Nigeria, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Russia, Saudi Arabia, South Africa, South Korea, Sri Lanka, Switzerland, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, Uzbekistan and Venezuela.
Public comments for inclusion in this year’s NTE Report are due to the USTR by no later that October 29, 2014. Further instructions on the NTE public comment submission process are available here.
Over the last week, the Office of the U.S. Trade Representative (USTR) and the International Intellectual Property Alliance (IIPA) released reports on the current state of intellectual property (IP) protections for U.S. businesses abroad. These reports provide updated insights on foreign countries and foreign retail markets (both physical and online) that have recently caused U.S. businesses the most IP protection difficulties.
Here is a summary of the reports:
IIPA 2014 Special 301 Report Submission
On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”
Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.
What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?
Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.
Priority Watch List and Watch List Countries. The IIPA’s Special 301 Report Submission lists Argentina, Chile, China, Costa Rica, India, Indonesia, Russia, Thailand and Vietnam on the “Priority Watch List,” and Belarus, Brazil, Bulgaria, Canada, Ecuador, Greece, Israel, Kazakhstan, Kuwait, Mexico, Romania, Saudi Arabia, Switzerland, Taiwan, Tajikistan, Turkey, Turkmenistan, United Arab Emirates and Uzbekistan as “Watch List” countries. Although not as a severe rating as a Priority Foreign Country, being listed as a country on the Priority Watch List or simply Watch List means that a country has potential IP protection deficiencies that require varying levels of USTR monitoring.
Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.
Out-of-Cycle Review of Notorious Markets
Also, on Wednesday, the USTR released an Out-of-Cycle Review of Notorious Markets that identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial IP piracy and counterfeiting. The Review includes particular social media and file transferring sites hosted abroad, including sites hosted in Antigua and Barbuda, Bulgaria, Canada, China, Czech Republic, Finland (possibly), Netherlands, Poland, Russian Federation, Spain, Sweden, Ukraine, United Kingdom and Vietnam. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Paraguay, Spain, Thailand and Ukraine were also deemed notorious.
What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.
Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.
So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.
Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.
Below are some GI issues businesses should consider when entering new foreign markets:
Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.
The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.
Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.
Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).
Below are GI registers for some of the world’s major GI jurisdictions.
National GI Register
|National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial -INPI)|
|General Administration of Quality Supervision, Inspection and Quarantine|
|The Controller General of Patents, Designs, and Trade Marks|
|Federal Institute of Industrial Property|
The Canadian Parliament reintroduced proposed legislation late last month that will dramatically impact how foreign copyright and trademark owners can protect their rights in Canada, and ultimately around the world. Reported to be enacted by the end of this year, the Combatting Counterfeit Products Act (Bill C-56; CCPA) proposes specific amendments to Canada’s Copyright Act and the Trade-marks Act that will allow foreign rights owners to better control the cross-border flow of counterfeit goods in Canada. The CCPA provides several notable reforms, including the expansion of registerable trademarks and new claims of recovery for trademark counterfeit goods. However, I believe its most important proposed reform is the establishment of a system allowing rights owners to register their copyrighted works and trademarks with Canadian authorities—while gaining help in detaining counterfeit shipments entering and leaving Canada.
The CCPA’s proposed request and detention system is an expansion of legal protections against counterfeit goods under current Canadian law because it introduces non-judicial measures rights owners can use to prevent the import and export of counterfeit goods in Canada. Currently, rights owners must obtain a Canadian court order to halt infringing imports and exports of counterfeit goods in and out of Canada. The CCPA addresses these limitations by allowing copyright and trademark owners to file a request for assistance with the Ministry of Public Safety and Emergency Preparedness (Ministry). This allows Canada’s border authority, the Canadian Border Services Agency (CBSA), to monitor inbound and outbound shipments of counterfeit products for a two-year period, and temporarily detain counterfeit good shipments to allow further investigation.
Although rights owners will be required to provide a security deposit and fees for a detention, the request and detention system will provide a more expedient, inexpensive and overall more effective means for foreign rights owners to prevent the dissemination of counterfeit products, both in Canada and beyond. Filing a request for assistance with the Ministry is a faster and relatively less expensive procedure that seeking a court order. It also allows the CBSA to assist in policing shipments, complementing any monitoring activities conducted by foreign rights owners, and ultimately improving a foreign right owner’s overall global IP enforcement efforts.
Despite these benefits, the proposed request and detention system also has limitations:
Goods for Personal Use: The CCPA’s system does not cover counterfeit goods for personal use, such as those in personal baggage.
Parallel Importation: The system excludes copyright grey goods, namely copies of copyright-protected works made in a country outside of Canada where the copies were authorized to be made.
Transshipment: The CCPA’s system does not apply to transshipments. This means that foreign rights owners’ requests to the Ministry will not assist in detaining shipments of counterfeit goods that are only intermediately transiting Canada.
National Treatment: A foreign rights owner’s access to the request and detention system may also be limited depending on the type of IP they wish to enforce. A foreign copyright rights owner can likely access the system regardless if they are Canadian or if their work was created in Canada due to the legal protections provided in the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention). The Berne Convention allows a work from a Berne Convention country (Berne Convention countries) to qualify for protection in another Berne Convention country when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country, 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. This means that if a foreign work becomes attached, and qualifies for protection under Canada’s Copyright Act, a copyright rights owner will have copyright protection for their work in Canada and may utilize the CCPA’s request and detention procedures once the CCPA is enacted.
Trademark rights owners will not be as easily able to utilize the CCPA’s system. Unlike copyrights, trademarks are generally territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. This means that a trademark owner must generally have registered their mark in Canada in order for them to utilize the CCPA’s trademark request and detention system. Further, as Canada is not a member to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (aka the Madrid Protocol), foreign trademark owners need to obtain a Canadian trademark attorney to register their marks in Canada.
What’s The Takeaway?: The CCPA will give foreign copyright and trademark owners more effective and less expensive tools to protect their copyrighted works and trademarks in Canada and beyond. Its request and detention system does this by not only restricting imports of counterfeit goods, but also limiting their dissemination from Canada to other countries. Yet, the CCPA underscores the vigilance that foreign rights owners must have to ensure that they register and re-register requests for assistance for their works and marks. Only copyright and trademark owners (not authorized parties, e.g. licensees) can file requests with the Ministry to utilize the system’s full protections.
Further, the CCPA shows that foreign trademark owners who are serious about protecting their brands in Canada, and ultimately throughout the world, need to consider registering their marks in Canada in order to effectively utilize the CCPA’s request and detention system once it is enacted. Upon doing so, such owners can better insure protection for their marks in Canada and beyond.
Last month, India officially acceded to The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). This will allow trademark owners from Madrid Protocol countries the ability after July 8, 2013 to register their trademarks in India based on their registrations in their home Madrid Protocol country. From an initial observation, registering a mark in India under the Madrid Protocol offers several advantages over a direct registration at India’s trademark office, The Controller General of Patents Designs and Trademarks (CGPDTM). Reduced filing fees and a uniform registration process are among these advantages. However, there are several issues trademark owners should evaluate when considering whether to a file a mark in India under the Madrid Protocol. First, it is important to understand how the Madrid Protocol works.
How Does the Madrid Protocol Work? The Madrid Protocol allows trademark owners to file an international trademark application based on a national trademark registration in a Madrid Protocol country (known as the “basic application” or “basic registration”) to obtain trademark protection in other Madrid Protocol countries. Once filed, an international application is submitted to the International Bureau at the World Intellectual Property Organization (WIPO) and evaluated based on international requirements. If approved, the trademark is registered for protection in countries designated in the international application (subject to such countries’ potential opposition). Once successfully registered, the trademark is treated as if it were filed in each of the foreign countries identified in the international application, subject to specific restrictions.
Central Attack. Determining whether an international registration is subject to central attack is the most crucial issue in determining whether to consider filing a trademark in India under the Madrid Protocol or directly with the CGPDTM. Central attack occurs when a basic application or its resulting registration of a mark is withdrawn, lapsed or renounced within five years of the international registration of the mark under the Madrid Protocol. When this occurs, all Madrid Protocol international trademark registrations filed under the basic application are invalidated. However, after this five year period, a trademark owner’s Madrid Protocol international registration becomes independent of its basic application. This allows a trademark to qualify for national registration in the foreign countries identified in the international registration regardless of its invalidation in its native Madrid Protocol country.
Based on these circumstances, a trademark owner who can ensure that their mark’s basic application or resulting registration will not be invalidated within five years after international registration under the Madrid Protocol may find registering their mark in India under the Madrid Protocol more advantageous. However, if a trademark owner knows that their basic application or resulting registration will likely face potential invalidation within five years of filing a Madrid Protocol international registration in India, a direct filing with the CGPDTM would likely be a more prudent choice.
**Important Note**: A trademark owner whose basic application or resulting registration is subject to potential central attack in their home country may seek national registration in another Madrid Protocol country as their basic application, and then file a international registration in India through the Madrid Protocol. This can be done if the owner has enough presence in that Madrid Protocol country to qualify as a “real and effective industrial or commercial establishment.”
As it is difficult to determine the threat of central attack or if a trademark owner can register their mark in a foreign Madrid Protocol member state, obtaining qualified counsel to assess such issues is always suggested.
Registration Costs. If costs are a trademark owner’s main concerns, the Madrid Protocol provides upfront cost savings. Yet, additional expenses may arise if an international registration is opposed. Although varying based on currency rates, legal fees and the number of registration classes, registering a trademark in India through the CGPDTM costs roughly between US$300.00-$500.00. In comparison, filing an international application under the Madrid Protocol can be substantially less. For example, a Madrid Protocol filing fee in the U.S. is US$100.00-$150.00 per class (excluding fees for the basic application and associated legal costs).
However, as Madrid Protocol registrations are subject to opposition from national trademark offices, a trademark owner’s Madrid Protocol registration that becomes subject to opposition by the CGPDTM may have to spend additional funds to overcome such an opposition. Under Article 5(1) of the Madrid Protocol, any Madrid Protocol member state trademark office may object to a Madrid Protocol international registration based on international criteria provided in Paris Convention for the Protection of Industrial Property. Defending against such an opposition may negate any cost savings obtained from a Madrid Protocol registration as a trademark owner would likely have to hire counsel to assist with such a defense. Although registering the same mark under a direct CGPDTM filing may also subject its owner to a CGPDTM action, working with qualified Indian counsel in registering a trademark directly with the CGPDTM may help to mitigate the risk of such an action, or at least provide immediate and knowledgeable assistance in the defense of a potential CGPDTM action.
Assignments and Amendments. Determining whether the Madrid Protocol should be utilized to register a mark in India also depends if the trademark owner intends to amend or assign the mark’s international registration. Article 9 of the Madrid Protocol only permits a Madrid Protocol international registration to be assigned to a person or entity who is a national, domiciled, or has a substantial business presence in a Madrid Protocol member state. This potentially limits the economic desirability of a Madrid Protocol international registration as it prohibits its assignability. For example, Canada and Brazil, two major world economies, are currently not Madrid Protocol members, meaning that their citizens or businesses may not likely become assignees to an Indian Madrid Protocol registration. If a trademark owner knows that they are likely to quickly assign their Madrid Protocol registration in India after registration, as a part of a sale of a business or otherwise, such foreign assignment restrictions should be considered when choosing how to register their mark.
Additionally, the Madrid Protocol restricts amendments to international registrations. An international trademark application filed under the Madrid Protocol cannot be amended once it is submitted for examination to the International Bureau at WIPO. These restrictions appear to run contrary to rights provided under Indian trademark law. Under Article 22 of India’s Trade Marks Act, the CGPDTM Registrar may allow a trademark application, either before or after registration, to be amended under “just” circumstances. If a trademark owner knows or believes that they will likely need to amend their Indian trademark application or registration, they should consider a direct registration with the CGPDTM over a Madrid Protocol registration because a direct registration will allow greater registration flexibility.
Parting Issues to Consider Regardless of Registration. Regardless of which Indian trademark registration process a trademark owners chooses, enforcing trademark protections in India remains challenging. In the 2013 Special 301 Report by the Office of the U.S. Trade Representative, India was identified as having judicial inefficiencies and insufficient criminal enforcement against IP infringers. These problems can make any type of trademark enforcement efforts in India difficult. Based on these concerns, trademark owners should work with qualified local counsel to ensure effective enforcement of their marks in India.
What does India’s Madrid Protocol accession mean for your business?
U.S. President Barack Obama, European Council President Herman Van Rompuy and European Commission President José Manuel Barroso announced last Tuesday that the U.S. and the European Union (E.U.) would be entering into free trade agreement (FTA) negotiations following nearly two years of consultative talks and evaluation. Identified as the Transatlantic Trade and Investment Partnership (TTIP), the potential FTA will a have a substantial impact on the world economy as it would liberalize nearly a third of the world’s trade. It may also have substantial intellectual property (IP) implications for IP owners if the U.S. and E.U. can overcome ongoing disagreements over international IP protection reforms.
Initially, there were low expectations that any substantial international IP reforms would result from the agreement. The U.S. and the E.U.’s High-Level Working Group on the TTIP stated in their final report last year (available here) that both parties should “address a limited number of significant IPR issues of interest to either side, without prejudice to the outcome” in their FTA negotiations. Further, news outlets reported that there were no plans for the U.S. and E.U. to harmonize their IP systems.
However, just before the February 12th TTIP announcement, U.S. congressional representatives sent a letter to U.S. Trade Representative Ron Kirk identifying priorities the U.S. Congress wants the TTIP to address, including strong IP rights protection for U.S. industries. Sent by Senate Finance Committee Chairman Max Baucus (D-Mont.) and Ranking Senate Member Orrin Hatch (R-Utah), the letter identified certain E.U. policies towards foreign IP as being substantial barriers to trade that should be improved. Particularly, the letter demanded that the TTIP establish measures to address EU policies that undermine the value of foreign IP protection—including pricing, reimbursement and regulatory transparency. Additionally, the senators identified geographical indications, trademark-like protections given to certain goods from specific regions such as CHAMPAGNE for sparkling wine and ROQUEFORT for cheese, as impeding the ability for U.S. agricultural businesses to compete in the E.U. market.
Lastly, the letter demanded that the TTIP should not undermine the U.S.’ ability to achieve high levels of IP protection in other U.S. FTA negotiations. In enacted and proposed FTAs such as the U.S.-Australia FTA and the Trans Pacific Partnership respectively, the U.S. established IP protections beyond minimum international standards established under World Trade Organization’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)—known as TRIPS Plus standards, pertaining to a wide range of IP rights and enforcement.
Despite U.S. calls to address international IP reforms, it is unclear to what degree the U.S. and E.U. can find common ground to enhance international IP protections in their respective countries/blocs. This does not even mention the ability for the U.S. to establish TRIPS Plus IP standards with the E.U. as in other U.S. FTAs. Positive signs towards the potential of meaningful international IP protection reforms between the U.S. and E.U. can be seen in recent cooperative efforts including joint U.S.-E.U. online IP enforcement initiatives, and the establishment of the Cooperative Patent Classification system for harmonized patent document classifications that will be operational this year. Further, the German government, the E.U.’s largest economy, has called for the TTIP to be a fully comprehensive agreement. However, the E.U. Parliament’s rejection of the U.S.-backed Anti-Counterfeiting Trade Agreement last July showed that the E.U. is potentially wary of considering enhanced international IP protections that would likely result from a comprehensive FTA with the U.S. Time will tell whether the U.S. and E.U. can established enhanced international IP protections.
What are your thoughts on TTIP and its potential for international IP reforms? How will it impact you or your business?
The ongoing trade dispute between the U.S. and the Caribbean island nation of Antigua and Barbuda has produced unexpected and potentially harmful consequences for U.S. copyright owners. Antigua announced last week its plans to establish a website selling media and software protected under U.S. copyright law—and will do so without obtaining permission of its copyright owners or paying any form of royalties.
Surprisingly, Antigua has the right to establish this pirating website under international law. It won a 2007 World Trade Organization (WTO) dispute settlement against the U.S. (Dispute Settlement 25 – DS 25), where the U.S.’ blocking of Antiguan online gambling sites from U.S. customers was found to be a violation of the U.S.’ General Agreement on Tariffs and Trade (GATT) commitments. Consequently, Antigua was granted the right to suspend its WTO obligations to the U.S. under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This has allowed Antigua to legally sell pirated U.S. copyright content in amounts not exceeding $21 million annually until the U.S. removes its blockade of Antiguan gambling websites or pays compensation. As of yet, the U.S. has done neither.
To Antigua’s credit, it has yet to enforce its entitled remedies in the six years since DS 25’s ruling. According to reports, Antigua’s main goal is not to become a copyright pirate—it simply wants the U.S. to comply with DS 25. Yet, the U.S.’ continued failure to do so has made Antigua feel that it has no other choice but to open the pirating website to pressure the U.S. into compliance.
Ultimately, U.S. copyright owners will pay the price for the U.S. government’s failure to comply with DS 25. Reports are that the U.S. government will compensate U.S. copyright owners for lost royalties who are infringed from Antigua’s pirate website. However, international copyright law gives U.S. copyright owners legal protections beyond mere royalties. Qualifying U.S. copyright owners have the right under both U.S. copyright law (17 U.S.C. § 602(a)(2)) and Antiguan copyright law (2003 Copyright Act) to restrict movements of their works across borders for commercial use, namely to prevent the unauthorized trade in protected works known as parallel importation or grey goods. As controlling the availability and flow of protected content is crucial to capitalizing on foreign markets opportunities, U.S. copyright owners whose works are infringed through the Antiguan pirate website will be harmed by their inability to control the flow or distribution of their works, with no apparent recourse or compensation under international, U.S., or Antiguan law.
As any business who has foreign IP protection concerns know, protecting IP rights abroad is hard enough even with protections under international law. The developments in the U.S.-Antiguan trade dispute are harmful beyond mere infringement as they act to undermine what minimum protections U.S. copyrighted works enjoy abroad under international law, and according to commentators, they help to establish a negative precedent that could lead to similar outcomes in larger trade disputes with potentially more severe damages for U.S. copyright owners. Time will tell whether this will come true.
What do you think of the U.S.-Antiguan trade dispute? Will you be affected by it and how?