Tagged: #ISP

*Cancelled* USPTO To Hold Public Meeting on Voluntary Initiatives to Combat Online IP Infringement

*Note* The Meeting below has been cancelled. Further information is available here.

The U.S. Patent and Trademark Office (USPTO) announced late last week that it will hold a public meeting on July 17, 2017 at its Alexandria, Virginia headquarters on measuring the impact of voluntary initiatives to reduce online intellectual property infringement.

As private online retail and social media platforms such as Amazon and Facebook are becoming the main channels in which people shop and socialize respectively, voluntary IP enforcement measures taken by these and other online parties are increasingly shaping how IP is enforced online—with both positive and negative reception. Google is a perfect example of this phenomenon. Google currently handles millions of online copyright and trademark takedown requests a day, up from merely dozens a day just a decade ago. Based on its heightened role as one of the Internet’s main search engines and online service providers, Google has developed its own voluntary initiatives to deter trademark and copyright infringement including removal of listings that have received repeated notices of IP infringement. While arguably taken to protect against any contributory liability (see 17 U.S.C. § 512(i)(1)(A)), Google’s voluntary enforcement measures such as its removal of repeat infringers is shaping how IP is protected online and how content rights holders address online IP protection. Despite such influence, Google has in the past also faced scorn by such rights holders for not going far enough with other voluntary measures, such as demoting search results of known infringers.

The July 17th meeting is a part of the USPTO’s recent outreach efforts to such interested parties concerning their voluntary online IP enforcement regimes, and is intended to evaluate how such private parties are addressing online IP enforcement—both and home and abroad. Topics to be discussed at the meeting include (among others) evaluating the effectiveness of self-regulatory regimes, presenting case studies of certain private sector initiatives, discussing the role of voluntary undertakings in raising consumer awareness and stemming revenue flows to bad actors (i.e. infringers), as well as others.

Further information about the meeting is available here.

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The Effectiveness of the Trans Pacific Partnership’s Internet Service Provider Copyright Safe Harbour Scheme

I am happy to announce that I have the honor of publishing an article in the European Intellectual Property Review (EIPR) to be released this month. Titled “The Effectiveness of the Trans Pacific Partnership’s Internet Service Provider Copyright Safe Harbour Scheme,” the article examines the Trans Pacific Partnership’s (TPP) proposed copyright safe harbor provisions for Internet Service Providers (ISP), its implications on existing TPP member state ISP safe harbor regimes, and rights holders’ abilities to enforce rights in their works online in such states.

The article will be available on Westlaw and in print form (can be ordered here) within the next couple of weeks. Enjoy!

Interview with IP Fridays on the TPP and Online Copyright Enforcement

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

A link to the podcast can be found here.

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.

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!

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.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Here are each country’s online copyright enforcement system:

Afghanistan

Enforcement System: Judicial System

Berne Convention Member: No

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

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

Notice Requirements: N/A

Bangladesh

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Bhutan

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing Legislation: Copyright Act and Industrial Property Act of 2001

Notice Requirements: N/A

Brunei Darussalam

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing Legislation: Emergency Copyright Ordinance (2000)

Notice Requirements: N/A

Cambodia

Enforcement System: Judicial System

Berne Convention Member: Yes*

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

Governing Legislation: Law on Copyright and Related Rights

Notice Requirements: N/A

China (PRC)

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

Notice Requirements:

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

East Timor (Timor Leste)

Enforcement System: Judicial System

Berne Convention Member: No

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

Governing Legislation: N/A

Notice Requirements: N/A

Hong Kong

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

Berne Convention Member: Yes

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

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

Notice Requirements (from the Code of Conduct):

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

India

Enforcement System: Notice and Takedown System (temporary)

Berne Convention Member: Yes

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

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

Governing Legislation: Rule 75, The Copyright Rules, 2013

Notice Requirements:

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

Indonesia

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Japan

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

Governing Legislation: Article 3(2)(ii), Act No. 137 0f 2001 (Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Senders)

Notice Requirements:

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

Laos

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Macau

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Malaysia

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

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

Maldives

Enforcement System: Judicial System

Berne Convention Member: Yes*

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

Governing Legislation: Copyright and Related Rights Act 2010

Notice Requirements: N/A

Mongolia

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

Notice Requirements: Unspecified

Myanmar

Enforcement System: Judicial System

Berne Convention Member: Yes*

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

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

Governing Legislation: Copyright Act of 1914

Notice Requirements: N/A

Nepal

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing Legislation: Copyright Act, 2059 (2002)

Notice Requirements: N/A

North Korea

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Pakistan

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing LegislationCopyright (Amendment) Act, 1992

Notice Requirements: N/A

Philippines

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Taiwan

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

Notice Requirements:

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

Thailand

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

South Korea

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

Governing Legislation: Article 102-103 – Copyright Act

Notice Requirements:

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

Singapore

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

Notice Requirements:

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

Sri Lanka

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Vietnam

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing Legislation: Law No. 50/2005

Notice Requirements: N/A

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.