Tagged: Mexico

Honored to be Quoted

Last month, I had the privilege of being quoted in Bloomberg BNA‘s article on ongoing North American Free Trade Agreement (NAFTA) talks on copyright and digital trade. Particularly, I discussed the current status of Mexico’s online copyright environment, and the problems faced by rights holders in seeking extrajudicial online enforcement of rights in their works under existing Mexican copyright law.

The article can be accessed here courtesy of Action For Trade.

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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.

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

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

Determining whether owners or rights holders of a copyright-protected work (collectively, “Rights Holders”) can enforce rights in their work online and abroad depends on multiple factors. This includes: (1) whether a work qualifies for foreign protection (aka national treatment) under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and/or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); (2) whether the Internet service provider (ISP) hosting the infringing use of the work is subject to jurisdiction in the country where online enforcement is sought; and (3) what online copyright enforcement procedures are available in the country of enforcement.

Each of these issues have been previously examined here and those with further questions should consult with a qualified attorney.

Below are the current online copyright enforcement procedures in each North and Central American country. However, a couple of preliminary notes:

Classifications: A North and Central American country that maintains legal protocols for a Rights Holder to directly petition an ISP to remove infringing content in order for the ISP to qualify for safe harbor protection from contributory liability for copyright infringement is identified below as a “Notice and Takedown System” country. A country that maintain systems that simply require ISPs to notify infringing subscribers of their allegedly infringing acts without removal requirements for safe harbor protection are identified as a “Notice and Notice System” country. A country that does not provide legal provisions for a Rights Holder to directly enforce their copyright protections through an ISP notification system, and are instead forced to seek copyright enforcement through that country’s judicial system are referred to as a “Judicial System” country.

Notice Limitations: Unfortunately, even if a country listed below maintains a Notice and Takedown System, an ISP may still refuse to disable access to an allegedly infringing website or website content upon receipt of a Rights Holder’s infringement notice. In such instances, a Rights Holder may be forced to seek enforcement through that foreign country’s legal system in order to remove such online content.

Time Sensitivity: As several of the listed countries in this posting are evaluating or are in the process of implementing copyright reforms, either through legislation or judicial action, there is the possibility that the following online copyright enforcement information may soon change.

United States

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

Notice Requirements:

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

Belize

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing Legislation: Copyright Act – Cap. 252

Notice Requirements: N/A

Canada

Enforcement System: Notice and Notice System

Berne Convention Member: Yes

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

It is important to note that Canada may soon be required to implement notice and takedown provisions if the Trans Pacific Partnership (TPP) is finalized and the U.S. draft chapter is adopted in a final TPP agreement.

Governing Legislation: Section 41.25-41.27, Copyright Modernization ActCopyright Act.

Notice Requirements:

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

Costa Rica

Enforcement System: Notice and Notice System (Minimal)

Berne Convention Member: Yes

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

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

Notice Requirements (derived from an unofficial translation):

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

El Salvador

Enforcement System: Notice and Takedown System

Berne Convention Member: Yes

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

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

Notice Requirements: Unspecified

Guatemala

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Honduras

Enforcement System: Judicial System

Berne Convention Member: Yes

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

Governing Legislation: Copyright and Neighboring Rights Law

Notice requirements: N/A

Mexico

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Governing Legislation: Federal Law on Copyright

Notice Requirements: N/A

Nicaragua

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Panama

Enforcement System: Judicial System

Berne Convention Member: Yes

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

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

Notice Requirements: N/A

Parting Notes: As I have mentioned in previous posts, it is important to note that there are issues to consider after a takedown notice has been submitted. First, an alleged infringer may respond to a Rights Holder notification by submitting a counter notice attesting to their rights in a protected work, even after their online content or website has been blocked or removed. Also, an ISP may refuse to act after a takedown notice has been submitted. If these circumstances arise, one should consider contacting a qualified attorney to discuss further actions. Good luck!

Special thanks to Sara Parker, recent Seattle University School of Law graduate and new member of the Washington State Bar for her assistance.

The TPP and Its Implications on Online Copyright Enforcement: Part II – Wikileaks

In November, Wikileaks leaked positions papers from the 18th round of Trans Pacific Partnership (TPP) negotiations concerning the intellectual property (IP) chapter of the TPP agreement. The papers including positions held by TTP member states (Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) on all forms of IP protections they will provide to IP rights owners and rights holders from their countries, and in many cases, from abroad under a final TPP agreement. Several IP news outlets have provided good analyses of the position papers including The IPKat and InfoJustice, among others.

These position papers also provide updated positions TPP member states have on online copyright enforcement, and particular, the positions each country has on adopting notice and takedown online copyright enforcement systems. In order to provide an update on my October article on the TPP’s implications on online copyright enforcement, the following are positions TPP member states have adopted in the position papers on crucial issues concerning online copyright enforcement under the TPP.

Exclusive Rights

Article QQ.G.1 of the position papers propose that authors of works and producers of phonographic works will have exclusive rights concerning the reproduction of their works in any manner, including any temporary or permanent electronic reproductions and storage. Canada, New Zealand and Vietnam object to such proposed protections. Additionally, Brunei Darussalam, Chile, Japan, New Zealand and Malaysia suggest in a footnote to the Article (“Article QQ.G.1 Footnote”) that exceptions and limitations to such exclusive rights should be established for:

Temporary acts of reproduction which are transient or incidental and an integral and essential part of a technological process and whose sole purpose is to enable (a) a lawful transmission in a network between third parties by an intermediary; or (b) a lawful use of a work; and which have no independent economic significance.

Alternatively, Vietnam proposes that “it shall be a matter for national legislation [of a TPP member state] to determine exceptions and limitations under which the right may be exercised.”

What’s Does This Mean? Providing authors of works and producers of phonographic works exclusive rights to all reproductions of their works, including electronic reproductions for any duration, gives such persons or entities greater direct ability to enforce rights in their works online because Internet Service Providers (ISPs) would ultimately have less discretion to reject notice complaints. As several commentators have mentioned[1], the text of Article QQ.G.1 effective eliminates fair use copyright exceptions provided under U.S. copyright law and the copyright laws of other TPP member states such as Japan.[2]  By doing so, TPP member state ISPs will have greater incentive to act on any copyright infringement on their networks, including alleged infringement notified through rights owner/holder notices, due to the likely elimination of the ISPs’ own fair use defense to contributory copyright infringement for hosting unauthorized reproductions of protected work. Although notice and takedown and notice and notice systems were adopted in TPP member states to provide ISPs safe harbor from such liability upon complying with submitted notices, many ISPs in practice do not act on such notices, by determining that their users’ unauthorized reproduction of copyright-protected works on their networks is fair use, and therefore permissible. Adoption of Article QQ.G.1 would effectively force ISPs to remove allegedly infringing content or face contributory liability for the copyright infringement of their users.

However, if TPP member states ultimately adopt the Article QQ.G.1 Footnote or Vietnam’s proposal, it is likely that they will be given the option to retain any fair use exceptions provided under their own national laws, potentially impacting the degree to which TPP member state ISPs will feel compelled to act on rights owners/holders notifications of alleged infringement.

ISP Liability

The TPP member states have divergent positions on the liability ISPs should be subject to for hosting content that infringes copyright-protected works. Article QQ.I.1 provides that the U.S., Australia, New Zealand, Peru and Singapore propose (while Malaysia and Vietnam oppose) that each TPP member state provide “legal incentives for [ISPs] to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Similarly, Canada proposes that each TPP member state “provide legal incentives for [ISPs] to comply, or remedies against [ISPs] who fail to comply, with any procedures established in each party’s law for: (a) effective notifications of claimed infringement; or (b) removing or disabling access to infringing material residing on its networks.”

What Does This Mean? The U.S. and Canada’s Article QQ.I.1 proposals likely leave mandating the adoption of notice and takedown systems in all TPP member states in doubt. The U.S. Article QQ.I.1 proposal provides the same ambiguous text as the February 2011 U.S. Draft IP Chapter, and the Canadian proposal goes so far as leaving the type of ISP legal incentive system each TPP member state should adopt up to its own discretion. As a result, both proposals would likely make the adoption of notice and takedown systems in TPP member states optional. For example, less forceful online enforcement systems, such as Canada’s notice and notice system provides legal incentives for ISPs to coordinate with copyright owners despite lacking the forceful effectiveness of notice and takedown systems currently available in other TPP member states such as U.S., Australia and Japan.

Despite the limitations of such proposals, mandating that TPP member states adopt some form of legal incentives for ISPs to enforce online copyright protections may likely compel TPP member states without any rights owner/holder notification systems, including Brunei Darussalam, Mexico and Vietnam, to adopt some form of rights owner/holder ISP notification system.

Notice and Takedown Procedures

The U.S., Australia, and Singapore propose in Annex to Article QQ.I.1.3(b)(ix) (while Canada, Malaysia and Mexico reject) adopting notice and takedown procedures as the “legal incentives” identified in Article QQ.I.1. These procedures closely resembles notice and takedown procedures provided under U.S., Australian, and Singaporean law. As a part of these procedures, copyright owners and/or rights holders whose works qualify for copyright protection in a TPP member state would have to submit a notice to an ISP that provides the following information in order to have the ISP examine and remove the infringing content in question:

    1. The identity, address, telephone number, and electronic mail address of the complaining party (or its authorized agent);
    2. Information reasonably sufficient to permit the ISP to identify and locate the material residing on a system or network controlled or operated by it or for it that is claimed to be infringing, or to be the subject of infringing activity, and that is to be removed or disabled;
    3. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) claimed to have been infringed;
    4. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law;
    5. A statement that the information in the notice is accurate;
    6. A statement with sufficient indicia of reliability that the complaining party is the (U.S. propose “holder”) (Australia and Singapore propose “owner”) of an exclusive right that is allegedly infringed, or is authorized to act on the owner’s behalf; and
    7. The signature of the person giving notice.

What Does This Mean? If a final TTP Agreement mandates that TPP member states adopt a notice and takedown system, implementing Annex to Article QQ.I.1.3(b)(ix) would effectively require TPP member states to adopt similar notice and takedown procedures provided under U.S., Australian, Japanese and Singaporean law. Yet, opposition from Canada, Malaysia and Mexico may make the adoption of such requirements more unlikely.

Additionally, as Australia and Singapore propose that the “owner” of the alleged infringed copyright work be the “complaining party” listed in a notice, it is unknown whether an adopted TPP notice and takedown system would allow licensees of copyright-protected works (the “holders”) to utilize notice and takedown procedures in TPP member states. Limiting such a system’s accessibility to copyright owners only may be overly burdensome for such owners, as it would force them to enforce protections in their works on behalf of their licensees.

What’s The Takeaway?

If the U.S.-backed proposals listed above are enacted in a final TPP Agreement, copyright owners and rights holders from TPP member states, and other countries, will qualify for greater online copyright enforcement protections in TPP member states. However, such proposals have multiple obstacles before being effectively implemented. Such proposals must be included in a final TPP agreement, fully implemented as legislation in each TPP member state, and effectively upheld in each TPP member state’s legal system. Time will tell whether such enhanced online copyright enforcement protections will be adopted in the final TPP Agreement and enacted in all TPP member states.


[1] See Sean Flynn, Margot Kaminski, Brook Baker, & Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property, American University Washington College of Law, Dec. 6, 2011, 13, available at http://infojustice.org/wp-content/uploads/2011/12/TPP-Analysis-12062011.pdf (Analysis of the TPP’s fair use exception elimination was based on the U.S.’ leaked IP chapter proposal from Feb. 2011).
[2] Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 140 (2d Cir. 2008). See Saiful Bakri Abdul Aziz, An Assessment of Fair Dealing in Malaysian Copyright Law in Comparison with the Limitation Provisions of Japanese Copyright Law – Within the Current Technology Background, 41 Hosei Riron J. of L. & Pol. 298, 300, 305 (2009), available at http://dspace.lib.niigata-u.ac.jp:8080/dspace/bitstream/10191/12583/1/41(3.4)_298-327.pdf.

The Trans Pacific Partnership and Its Implications on Online Copyright Enforcement

In recent months, representatives from the Trans Pacific Partnership Agreement (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) member states have been pushing to finalize a final TPP agreement.[1] A particularly contentious issue in these negotiations has been the intellectual property (IP) chapter of the TPP Agreement. A predominant proposed version, the U.S. Draft IP Chapter, has been controversial as it requires TPP member states to adopt IP standards that are in many cases is on par with those under U.S. law, and in some cases, beyond U.S. law and generally-accepted global IP protection standards in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).[2] As a result, several TPP member states have objected to U.S. Draft IP Chapter, thereby stalling progress towards a final TPP agreement.

Of particular importance in these debates is the online copyright enforcement protections procedures the TPP agreement will mandate for its member states. If enacted, the U.S. IP chapter would likely require TPP member states to adopt copyright enforcement measures that would allow copyright owners, rights holders, or agents thereof (collectively, “Authorized Party”) to directly petition Internet Service Providers (ISPs) to remove hosted infringing content. Article 16.3(a) of the U.S. Draft IP Chapter requires that TPP member states provide “legal incentives for [Internet] service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Although ambiguous, adopting such provisions would likely require TPP member states to maintain or enact a form of copyright protection protocols that would allow Authorized Parties to petition ISPs hosting or transmitting infringing content to remove such content.

The main question arising from these potential reforms is whether they would result in TPP member states adopting U.S.-like notice and takedown protocols, or less forceful ISP copyright enforcement measures. Notice and takedown systems generally provide ISPs a safe harbor from liability for hosting or transmitting infringing content if they remove infringing content they host or transmit upon receipt notice from an Authorized Party. In contrast, other TPP member states do not provide copyright owners such a level of protections. Some of these states do not require that a ISP take down allegedly infringing content upon receipt of notice from an Authorized Party to qualify for safe harbors. Others require that Authorized Parties seek judicial copyright enforcement to combat online infringement, which is a more delayed and costly process.

Although not stated in the U.S. Draft IP Chapter, the U.S. may, as it has in previous U.S. free trade agreements (FTAs), negotiate that TPP member states adopt notice and takedown protocols in TPP side letters.[3] In previous U.S. FTAs, the U.S. has executed additional annexed agreements, known as “side letters,” where other countries agreed to adopt U.S.-like notice and takedown protocols. This has had varying degrees of success. Australia, Peru and Singapore, among others, have adopted notice and takedown protocols similar to those under the U.S.’ Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)) in FTA side letters with the U.S., while Chile rejected adopting such a system.

Similar mixed outcomes could result from the TPP as well. Brunei Darussalam, Mexico and Vietnam do not maintain any ISP copyright enforcement protocols short of judicial action. Further, a number of TPP member states including Canada, Chile and New Zealand maintain online copyright enforcement systems that arguably do not provide the same level of direct and expedient enforcement power or protections to Authorized Parties as notice and takedown systems. Lastly, some TPP member states such as Malaysia that do maintain notice and takedown protocols have called for establishing TPP agreement implementation exceptions for existing domestic legislation.[4] This would likely give TPP member states with weaker online copyright enforcement systems such as Canada, Chile and New Zealand the ability to maintain their less forceful online copyright enforcement systems, while still remaining parties to the TPP Agreement.[5]

Despite these limitations, the TPP’s potential adoption of notice and takedown protocols will ultimately impact the ability to which Authorized Parties can more quickly, cheaply and effectively enforce online copyright protections in the TPP member states. Adoption of notice and takedown protocols will enable Authorized Parties to more easily enforce online copyrights in TPP member states, while making such protocols optional would likely make such enforcement more difficult. Only time will tell whether the U.S. and other notice and takedown proponents will persuade other TPP member states to adopt notice and takedown protocols.

To understand how the TPP would impact individual TPP member state online copyright enforcement systems, the following are brief summaries of the TPP member states’ current online copyright enforcement systems. However, there are a few things to note:

  • Jurisdiction and National Treatment: In order for an Authorized Party to utilize a notice and takedown in a TPP member state, their content must generally qualify for national copyright protection in that TPP member state, and the particular ISP must be subject to the jurisdiction of that country. Further information about these preliminary issues can be found in my March 25, 2013 posting.
  • Enforcement System Legend: As mentioned, online copyright enforcement procedures vary amongst the TPP member states. Countries that maintain a notice and takedown protocols are identified below as a “Notice and Takedown,” while countries that maintain systems that simply require ISPs to notify infringers of their infringing acts without infringing content removal are listed as “Notice and Notice.” Countries that do not have means for Authorized Parties to directly enforce their copyright protections through ISP notices, and are instead forced to seek judicial action are referred to as “Judicial System.”

TPP Member State Online Copyright Enforcement Systems

United States
Enforcement System Notice and Takedown
Overview and Notes The U.S. notice and takedown protocols have been implemented in FTAs with Bahrain, Dominican Republic, Morocco, Oman, Peru, Singapore and South Korea.
Governing Legislation
Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A))
Notice Requirements

  1. A physical or electronic signature of a person authorized to act on behalf of the content owner alleging infringement;
  2. Identification of the copyrighted work(s) claimed to have been infringed;
  3. Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);
  4. Information reasonably sufficient to permit the ISP to contact the copyright owner (i.e. address, telephone number, e-mail, etc.);
  5. A statement that the copyright owner has a good faith belief that the use of their content is not authorized by the copyright owner; and
  6. A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner of an exclusive right that is allegedly infringed.
Australia
Enforcement System Notice and Takedown
Overview and Notes Australia adopted notice and takedown protocols based on a side letter annexed in the U.S-Australia FTA.
Governing Legislation
Regulation 20(I-J), 1969 Copyright Regulations
, Schedule 10 (Part 1), 1969 Copyright Regulations
Notice Requirements

  1. The statement: “I, the person whose name is stated below, issue this notification for the purposes of condition 3 of item 4 of the table in subsection 116AH(1) of the Copyright Act 1968 and regulation 20(I) of the Copyright Regulations 1969.”
  2. The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7 below], being copyright material residing on your system or network.”
  3. (If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;
  4. (If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;
  5. (If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;
  6. The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and
  7. An attached schedule to the notice including a description of the copyright material and the location of the infringing content.
Brunei Darussalam
Enforcement System Judicial System
Overview and Notes Brunei does not currently maintain any legal means for Authorized Parties to directly petition ISPs to takedown infringing content. However, recent reports have indicated that Bruneian authorities are evaluating copyright reforms, which may include ISP notice and takedown protocols.[6]
Governing Legislation N/A
Notice Requirements N/A

Canada
Enforcement System Notice and Notice
Overview and Notes Although Canada considered adopting a notice and takedown protocols in 2006, they opted for a notice and notice system in 2012 in order to balance the interests of copyright owners and Internet users.[7]
Governing Legislation
Section 41.25-41.27, The Copyright Act
Notice Requirements

  1. Must be in writing;
  2. State the claimant’s name, address and other relevant communication information;
  3. Identify the work or other subject-matter to which the claimed infringement relates;
  4. State the claimant’s interest or right with respect to the copyright in the work or other subject-matter;
  5. Specify the location data for the electronic location to which the claimed infringement relates;
  6. Specify the infringement that is claimed;
  7. Specify the date and time of the commission of the claimed infringement; and
  8. Provide any other information or as provided by other regulations.

Chile
Enforcement System Judicial System (*notice and takedown variation)
Overview and Notes Chile rejected adopting notice and takedown protocols in both the U.S.-Chile FTA and proposed copyright reforms in 2010.[8] Instead, Chile requires that Authorized Parties submit an expedited judicial petition to evaluate alleged infringement and be granted a takedown.
Governing Legislation
Article 85R, Law No. 20.435 (amending Law No. 17.336 on Intellectual Property
Judicial Petition
Requirements

  1. The allegedly infringed rights, with a specific indication of the rights and the infringement procedure;
  2. The infringing material; and
  3. The location of the infringing material in the respective ISP network or system.

Japan
Enforcement System Notice and Takedown
Overview and Notes Japan’s notice and takedown protocols establishes that allegedly infringing content will be taken down seven days after notice is provided from the ISP to the alleged infringer.
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

  1. Information and location of the particular alleged infringement;
  2. Suggested enforcement actions to be taken by the ISP;
  3. The rights in the work that are allegedly being infringed;
  4. The reasoning why the copyright owner/rights holder believes that an infringement has taken place; and
  5. The copyright owner/rights holder’s contact information.

Malaysia
Enforcement System Notice and Takedown
Overview and Notes Malaysia enacted copyright reforms in 2010 that permit Authorized Parties to submit infringement notices to ISPs that will remove infringing content within 48 hours of notice to the alleged infringer from the ISP. However, The International Intellectual Property Alliance (IIPA) has criticized Malaysia’s notice and takedown protocols for not providing enough details about notice requirements and enforcement procedures.[9]
Governing Legislation
Article 43H, Copyright (Amendment) Act 2010
Notice Requirements As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.

Mexico
Enforcement System Judicial System
Overview and Notes Mexico has no legal procedures for Authorized Parties to remove infringing online content short of seeking judicial action. It is also important to note that Mexican telecommunications laws prohibit ISPs from disclosing their customers’ personal information.[10]
Governing Legislation N/A
Notice Requirements N/A

New Zealand
Enforcement System Notice and Takedown-Judicial System Mix (aka Three Strikes)
Overview After enacting notice and takedown protocols in 2008, New Zealand repealed them in February 2010. They were replaced with a Three Strikes System, requiring Authorized Parties to submit multiple notices to an ISP, and a takedown application to the New Zealand Copyright Tribunal in order to obtain the removal of infringing content. The Three Strike System subjects the Authorized Party to fees of NW$25.00 (US$20.00) per notice, and NZ$200.00 (US$208.00) per application.[11]
Governing Legislation
Section 92C and 92D, Copyright Act 1994
;
Section 4, Copyright (Infringing File Sharing) Regulations 2011
Notice Requirements

  1. Copyright owner’s name;
  2. Copyright owner’s contact details (e-mail address, telephone number, physical address, mailing address in New Zealand (if no physical address);
  3. (If a rights owner is acting as an agent for the copyright owner) Evidence of the rights owner’s authority to act as agent for the copyright owner;
  4. Identify the IP address at which the infringements are alleged to have occurred;
  5. The date on which the infringements are alleged to have occurred at that IP address;
  6. For each copyright work in which copyright is alleged to have been infringed: (i) the name of the copyright owner in the work; (ii) the name of the work, along with any unique identifiers by which it can be identified; (iii)
 the type of work it is (in terms of section 14(1) of the Act); (iv) 
the restricted act or acts (in terms of section 16(1) of the Act) by which copyright in the work is alleged to have been infringed; (v) the New Zealand date and time when the alleged infringement occurred or commenced, which must specify the hour, minute, and second; and (vi)  the file sharing application or network used in the alleged infringement; and
  7. A statement that, to the best of the rights owner/copyright owner’s knowledge, the information provided in the notice is true and correct; and that statement must be verified by a signature (physical or digital) of the rights owner/copyright owner or a person authorized to sign on behalf of the rights owner/copyright owner.

Peru
Enforcement System Notice and Takedown
Overview and Notes Peru adopted notice and takedown protocols based on a side letter annexed in the U.S-Peru Free Trade Agreement.
Governing Legislation Copyright Law (Legislative Decree No. 822)
Notice Requirements

  1. Statement that the information in the notice is accurate;
  2. Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) appeared to have been infringed;
  3. The identity, address, telephone number and electronic mail address of the complaining party (or its authorized agent);
  4. Statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its owner, its agent or the law;
  5. Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the complaining party is the owner of an exclusive right that is allegedly infringed or is authorized to act on the owner’s behalf; and
  6. Signature of the person giving notice.
Singapore
Enforcement System Notice and Takedown
Overview and Notes Singapore adopted its notice and takedown protocols in 2006 based on a side letter agreement annexed in the U.S-Singapore FTA.
Governing Legislation
Section 193C(2)(b) Copyright Act (Chapter 63)
, Copyright (Network Service Provider) Regulations 2005
Notice Requirements

  1. Name and address of the complainant (if acting on the copyright owner’s behalf);
  2. Complainant address for service in Singapore (if a non-Singapore resident);
  3. Complainant’s telephone number, fax number and e-mail address;
  4. Identification of copyright material and location of allegedly infringing content;
  5. A statement that the information in the notice is accurate;
  6. A statement that the complainant 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;
  7. A statement that the complainant requires the network service provider to remove or disable access to the allegedly infringing content;
  8. A statement that the complainant 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;
  9. A statement that the complainant is the owner, exclusive licensee, or agent thereof of the copyrighted content; and
  10. A statement that the complainant 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.

Vietnam
Enforcement System Judicial System
Overview and Notes Although Vietnam recently adopted Internet liability reforms under the Internet Laws (Decree No. 72/2013), such reforms were silent on online copyright enforcement. The IIPA has criticized Vietnam for failing to adopt effective procedures to address online piracy administrative complaints.[12]
Governing Legislation N/A
Notice Requirements N/A


**Important Note**
: Even if a country maintains notice and takedown protocols, an ISP is generally not obligated to take down infringing content despite legal incentives to do so. Those with further questions about a TPP member state’s online copyright enforcement procedures should seek qualified counsel in that particular country.


[1] Joint Press Statement TPP Ministerial Meeting Bandar Seri Begawan, Brunei Darussalam, Office of the U.S. Trade Representative, Aug. 2013, available at http://www.ustr.gov/Joint-Press-Statement-TPP-Ministerial-Brunei.
[2] See Sean Flynn, Margot Kiminski, Brook Baker and Jimmy Koo, Public Interest Analysis of the US TPP Proposal for an IP Chapter, Program on Information Justice and Intellectual Property: American University Washington College of Law, 3, Dec. 6, 2011, available at http://infojustice.org/tpp-analysis-december2011.
[3] Id. at 50.
[4] Copyright Issues in the TPP: Malaysia, Public Citizen, 2012, available at http://www.citizen.org/TPP-Copyright-Issues-MY#_ftnref.
[5] See id.
[6] See Calls For Brunei To Carry Tougher Copyright Laws, The Brunei Times, Aug. 10, 2013, available at http://www.bt.com.bn/news-national/2013/08/10/calls-brunei-carry-tougher-copyright-laws.
[7] Paul Chwelos, Assessing the Economic Impacts of Copyright Reform on Internet Service Providers, Industry Canada, Jan. 2006, available at http://www.ic.gc.ca/eic/site/ippd-dppi.nsf/eng/ip01090.html; Bob Taratino, Online Infringement: Canadian “Notice and Notice” vs US “Notice and Takedown”, Heenan Blaikie LLP, Jun. 27, 2012, available at http://www.lexology.com/library/detail.aspx?g=e0e3ffdb-a96f-4176-add3-92fd2812d4bc.
[8] Chile’s Notice-and-Takedown System for Copyright Protection: An Alternative Approach, Center for Democracy & Technology, Aug. 28, 2012, available at https://www.cdt.org/files/pdfs/Chile-notice-takedown.pdf.
[9] IIPA 2012 Report: Malaysia, IIPA, 207-08, 2012, available at http://www.iipa.com/rbc/2012/2012SPEC301MALAYSIA.PDF.
[10] IIPA 2013 Report: Mexico, IIPA, 210, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301MEXICO.PDF.
[11] Section 92A Bill Introduced in Parliament Today, Behive.Gov.Nz, Feb. 23, 2010, available at http://www.beehive.govt.nz/release/section-92a-bill-introduced-parliament-today.
[12] IIPA 2013 Report: Vietnam, IIPA, 289, 2013, available at http://www.iipa.com/rbc/2013/2013SPEC301VIETNAM.PDF.

USTR Releases Review of Notorious IP Infringement Markets

The Office of the U.S. Trade Representative (USTR) released an Out-of-Cycle Review of Notorious Markets on Thursday, December 13, 2012, which identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial intellectual property piracy and counterfeiting. The Review included particular social media, multi-platform, deeplinking, cyberlocker, business-to-business, business-to-consumer, bit torrent indexing, bit torrent tracking, and pay-per-download websites. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Pakistan, Paraguay, Thailand, and Ukraine were also deemed notorious.

Other notable changes in the Review included the removal of Chinese websites Taobao and Sogou as notorious markets, for their efforts to work with rights-holders to identify infringing content on their websites.

A copy of the Review is available here.

A Note on Apple’s Trademark Troubles in Mexico

Apple’s recent Mexican trademark legal troubles highlight some important issues and strategies businesses and exporters should be aware of when exporting.

On November 2, 2012, a Mexican Appeals Court upheld an injunction against Apple’s use of the term IPHONE in selling its popular iPhone devices based on Apple’s similar goods and service offerings and the term’s phonetic similarity to the registered trademark IFONE, held by Mexican telecommunication service provider iFone. iFone registered its mark in 2003 for telecommunication services (International Class (IC) 38), four years prior to Apple’s first iPhone launch in 2007. That year, Apple registered IPHONE as a mark in Mexico for electronic devices (IC Classes 9 and 28).

To obtain legal protection for IPHONE in IC Class 38, Apple filed a trademark cancellation proceeding against iFone’s mark in 2009, claiming that iFone’s mark was confusingly similar to IPHONE among consumers. iFone countersued, asserting that Apple’s use of IPHONE infringed its mark, and sought damages and an injunction. To Apple’s dismay, iFone successfully proved in the Mexican Lower Court that Apple’s mark was confusingly similar to its prior registered mark and that Apple’s use of IPHONE did infringe on its mark, entitling iFone to an injunction and damages.

Although Apple and iFone’s case is not concluded, Apple may be legally prohibited from using the term IPHONE in selling or promoting its iPhone devices in Mexico. Equally as damaging, iFone may be entitled as a prior mark registrant to potentially recover up to 40% of Apple’s Mexican profits from its sales of the iPhone using the IPHONE mark, both current and retroactively.  Statistics on Apple’s Mexican iPhone sales are unavailable, yet it is reported that Apple’s iPhone sales in the Americas are in the billions. To resolve its legal issues with iFone and preserve the Mexican market for iPhones, commentators have mentioned that Apple may be required to enter into a costly settlement with iFone. So what’s the takeaway from this story?

Do Your Homework Before Entering a Foreign Market: A company the size of Apple may not need to examine whether their goods and services offerings conflict with existing foreign trademarks, but doing so is an essential step for any business wishing to protect its IP and prevent legal complications abroad. A simple Mexican trademark search and examination of iFone’s promotional activities would have revealed that they had a prior registered Mexican mark that was confusingly similar to IPHONE and that they were using it in commerce. Apple may have conducted this research and disregarded it, yet doing so is a relatively inexpensive and strategic measure to identify foreign market challenges and safeguard against future legal problems.

Develop a Country-Specific IP Protection Strategy: Apple may have been able to expand legal protections for IPHONE while avoiding a legal proceeding if they had pursued an IP protection strategy with greater consideration of Mexican trademark law. Commentators have espoused that Apple likely adopted a trademark protection strategy in Mexico similar to aggressive strategies seen in the U.S. by registering IPHONE in available IC classes and initiating trademark cancellation proceedings against prior registrants in unavailable IC classes, like iFone’s IC Class 38 mark, to expand their brand’s legal protection.

If Apple had pursued a famous mark declaration, pursuant to Mexican trademark law, they could have obtained legal protection for IPHONE in IC Class 38 while averting a prolonged trial. Mexico’s Industrial Property Law permits famous marks (marks who have achieved a high degree of consumer recognition) to obtain enhanced legal protections through obtaining a declaration from the Mexican Institute of Industrial Property (IMPI). If declared, the petitioner is granted registration in the famous mark that can protect it against any subsequently registered confusingly similar marks in any IC class simply by requesting an acknowledgment from IMPI of the mark’s status and providing accompanying evidence.  Obtaining a declaration would have given Apple legal protections in IPHONE in all IC Classes without having to initiate a legal proceeding. Although IMPI has only declared a handful of marks to be famous, the iPhone’s global recognition may have likely qualified IPHONE for Mexican famous mark protection. While its possible that Apple was aware of Mexico’s famous mark doctrine and chose against it, developing IP protection strategies based on local laws can provide businesses greater choices in obtaining protection for their marks abroad.

Engage Foreign Opposing Parties Before Initiating Legal Action: If Apple had reached out to iFone, it may have been able to enter into an agreement allowing Apple to obtain legal rights in IPHONE for IC class 38 without resulting to legal proceedings. The circumstances of this case show this to be especially true. iFone’s mark is classified for the entire IC 38 class, a classification trait often seen in foreign trademark registrations. Such a broad classification makes a coexisting use agreement between Apple and iFone likely possible due to the disparity of both parties goods and services within the IC 38 class as iFone is a telecommunication service provider, while Apple is a seller of telecommunication devices, the iPhone. A coexisting use agreement would have given Apple sufficient ability to obtain Mexican legal protections in IC Class 38 for IPHONE, while saving three years worth of costly legal fees, and having to pay potential damages.

Few businesses will ever reach Apple’s size or recognition, yet all businesses can adopt these mentioned measures to prevent legal complications when entering and operating in foreign markets.