Tagged: #noticeandtakedown

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.

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Nigeria Proposes Adoption of Notice and Takedown Safe Harbor Scheme

Intellectual Property (IP) Watch reported late last month that Nigeria was in the process of reforming its copyright laws for the digital age, including the adoption of its own notice and takedown Internet service provider (ISP) safe harbor scheme. As detailed in the Nigerian Copyright Commission’s (NCC) draft 2015 Copyright Bill (Draft Bill), the proposed notice and takedown scheme would create extrajudicial legal procedures in which an owner of a copyright protected work can petition a ISP subject to Nigerian jurisdiction to remove content hosted by the ISP that infringes the work. Like in the U.S. under the Digital Millennium Copyright Act (DMCA) and other countries that have notice and takedown safe harbor schemes, such an ISP would be required to remove such hosted content under certain circumstances in order to qualify for a safe harbor form contributory liability for copyright infringement.

If adopted, such procedures would make Nigeria one of the few countries in Africa with a notice and takedown scheme, giving copyright owners greater means of online enforcement of their rights in Nigeria, and potentially beyond. However, Nigeria’s draft notice and takedown scheme varies from its foreign counterparts. Further, it is uncertain whether it will be adopted, and if so, whether it will be adopted in its proposed form. To understand these issues, it is important to first understand the provisions of Nigeria’s proposed notice and takedown scheme.

Proposed Measures

Section 47 of the Draft Bill provides that an owner of a copyright-protected work or their agent (Complainant) may submit a notice of alleged online infringement of their work to an ISP hosting such infringing content. In order for such a notice to be effective, it must include the following information:

  • A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right in a work that is allegedly infringed;
  • Identification of each work claimed to have been infringed;
  • Identification of the content that is claimed to be infringing such work(s), and information reasonably sufficient to permit the ISP to locate such content;
  • Contact information reasonably sufficient to permit the ISP to contact the Complainant, such as an e-mail address, telephone number, and/or physical address;
  • A statement under penalty of perjury that the Complainant has a good faith belief that use of the allegedly infringing content in the manner complained of is not authorized by the copyright owner, their agent, or the law; and
  • A statement that the information in the notice is accurate, and that the Complainant is authorized to act on behalf of a owner of an exclusive right that is allegedly infringed.

Once a notice is submitted to an ISP, the ISP shall promptly notify their subscriber hosting the allegedly infringing content (Subscriber) of receipt of the notice. If the Subscriber fails to provide the ISP with information justifying their use of such content within ten days after the receipt of the ISP’s notification, the ISP must take down or disable access to such content. However, if the Subscriber provides information justifying their legitimate use of the content, or the ISP is convinced that the Complainant’s notice is without merit, the ISP will promptly inform the Complainant of their decision not to takedown or disable such content.

An ISP can restore access to taken down or disabled content if the ISP receives a written counter-notice from the Subscriber, which the ISP has forwarded to the Complainant immediately upon receipt; and the ISP does not receive, within 10 days, a subsequent notice from the Complainant indicating that no authorization has been granted to the Subscriber for use of the content.

Further, the Draft Bill states that an ISP shall not be liable for any action taken under the notice and takedown scheme that is taken in “good faith.” A copyright owner dissatisfied with a determination or action by an ISP may refer their matter to the NCC for further evaluation.

Evaluating The Proposed Scheme

Now that we know the NCC’s proposed notice and takedown scheme under the Draft Bill, what are its strengths and weaknesses?

Mandated Removal: The Draft Bill obligates an ISP to remove infringing content upon receipt of a Complainant’s notice. As such, it ultimately makes the Draft Bill’s notice and takedown scheme more robust than ISP safe harbors without mandated take down or disabling provisions. For example, the NCC’s proposed scheme is more robust that notification systems that solely require an ISP to notify a Subscriber of their infringing acts upon receipt of a Subscriber’s notice as in Canada, or national schemes that require multiple Complainant notifications and/or expedited judicial action in order for a ISP to be mandated to take action as in New Zealand or Chile.

Delayed Response Time: While the NCC’s proposed scheme mandates an ISP’s removal of hosted content under certain circumstances, it only mandates that an ISP remove infringing content 10 days after receiving a Complainant’s notice and upon receiving no response from a Subscriber. This contrasts from the DMCA that requires an ISP to act “expeditiously” to remove infringing content upon receipt of a Complainant’s notice. See 17 U.S.C. § 512(b)(2)(E). However, the NCC’s proposed scheme still mandates that an ISP eventually remove infringing content after the 10 day period, mirroring similar waiting periods in other countries (Japan (7 day wait period), and Malaysia (48 hours), among others), and without requiring any reposting of such content should no further legal action be taken by the Complainant (as in India).

Ambiguous Exemption: While the Draft Bill obligates an ISP to remove infringing content under qualifying circumstances as described above, its good faith clause may allow an ISP to evade liability for failing to remove infringing content should the ISP’s acts or omissions be considered in good faith. Without any further definition of “good faith” in the Draft Bill, it is uncertain what such a standard would be, nor how it will be interpreted.

What’s The Takeaway? It remains to be seen whether the NCC’s notice and takedown scheme will be adopted, and whether it will be adopted in its current proposed form. Its provisions offer multiple benefits, as well as some drawbacks, for copyright owners compared to its foreign counterparts. Those with current online copyright enforcement concerns in Nigeria should seek qualified Nigerian counsel.

A Breakdown of Russia’s New Notice and Takedown Legislation

Last month, Russia formally adopted multiple online copyright enforcement reforms to its Anti-Piracy Laws (Federal Law No. 364-FZ; “Reforms”). Including in these Reforms were streamlined Internet Service Provider (ISP) injunction procedures, the establishment of a digital fingerprinting system to allow for the online identification of copyright protected works, and the establishment of Russia’s first statutory notice and takedown procedures—allowing qualifying persons or entities who have rights to copyright-protected work(s) (collectively, “Rights Holders”) the ability to extrajudicially petition Russian-based website owners, and eventually their ISPs, to remove infringing hosted content.

On its face, Russia’s new notice and takedown procedures provide qualifying Rights Holders a highly needed extrajudicial enforcement tool to fight online copyright infringement in one of the world’s most infringing online markets. In April 2015, Russia was listed on the Office of the U.S. Trade Representative’s (USTR) Priority Watch List in the USTR’s 2015 Special 301 Report, identifying countries who do not provide adequate protection for intellectual property. The 2015 301 Report cited Russia for having “persistent” online copyright piracy problems, as well as being the home of several piracy websites that “damage both the market for legitimate content in Russia as well as in other countries.”

While Russia’s new notice and takedown procedures in many ways mirror similar procedures in other jurisdictions, there are some important differences Rights Holders should be aware of concerning the new procedures. To understand these differences, it is important to first look at the actual notification procedures.

Procedures: Based on an unofficial translation of the Reforms, a Rights Holder must provide the operator of an infringing Russian-based website notification of an alleged infringement including:

  • Name of the legal owner or authorized agent of the copyright protected work(s), including their location, address, passport information, telephone number, fax number, and email address;
  • If an authorized agent, provide an attestation as to his or her representation of the owner(s) of the copyright-protected work(s);
  • Identification of the copyright protected work(s);
  • Identification of the domain name(s), network address(es), and other identifying information of the infringing website in question;
  • Consent to use personal information included in the notification; and
  • The Rights Holder’s claim that the copyright-protected work(s) and being used on the identified website(s) without the owner’s of the work(s) permission or any valid legal grounds.

Within 24 hours of receipt of a Rights Holder’s notification, the website’s operator will need to either:

  • Request additional information from the Rights Holder concerning their notification;
  • Remove the allegedly infringing content; or
  • Provide proof that the website operator is authorized to use the allegedly infringing content.

If the website operator does not restrict access to the allegedly infringing content within 24 hours after receiving the Rights Holder’s notice, the website’s ISP will have three days to block access to that website. If the ISP restricts access to the website in question, the ISP must notify Russia’s telecommunication agency (Federal Service for Supervision in the Sphere of Telecom, Information Technologies and Mass Communications (Roskomnadzor)) of the incident, and such data will be placed in a infringement registry.

Ok, now that we know the procedures, what are the main takeaway points?

Additional Steps May Be Needed: Unlike most national notice and takedown procedure systems, notices under Reforms are to be sent to website operators prior to sending to the website’s ISP. While a website operators and ISP can often be one and the same, e.g. Facebook or Google, Russia’s notice and takedown procedures may require submitting an additional notice to an ISP if a website operator fails to remove infringing content identified by a Rights Holder in a notice under the procedures.

Qualifying Content: Prior to passage of the Reforms, the Anti-Piracy Laws only covered “movies, including movies, TV films”, thereby excluding many other works normally qualifying for copyright protection in Russia and other countries. The Reforms expands qualifying works to “objects of copyright and (or) related rights (except photographic works and works obtained by processes similar to photography.” While these changes expand protection under the Anti-Piracy Laws beyond solely movies to songs, written works and other normally copyright-protected works, it expressly excludes “photographic works.” Excluding photographic works from protection under the new notice and takedown procedures means Rights Holders of such works would need to seek a judicial order to remove infringe content hosted by a Russian-based website, subjecting such Rights Holders to potentially substantial enforcement delays and costs.

Prosecution Requirements: Like the U.S., Russia does not require prosecution (registration) of copyright-protected works in order to utilize the Anti-Piracy Laws’ new notice and takedown procedures.

Country-Specific Restrictions: Although not identified in the Reforms, notifications sent through the Anti-Piracy Laws’ new notice and takedown procedures will likely need to be sent in Russian. Further, to ensure compliance, foreign Rights Holders will likely need to work with qualified Russian counsel to effectively utilize the new notice and takedown procedures. This can have additional costs and time delays for foreign Rights Holders.

What’s The Takeaway? Absent prior statutory provisions, the Reforms’ notice and takedown procedures do provide Rights Holders greater means to protect their works online in Russia. However, due to limitations on qualifying works, and additional and country-specific procedures beyond similar notice and takedown procedures in other countries, it remains to be seen whether Russia’s statutory notice and takedown procedures will become an effective extrajudicial enforcement tool against cross-border online copyright infringement.

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!

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.

Canada Announces Official Implementation Date of the Notice and Notice Copyright System: What Copyright Owners Need to Know

Canadian government officials announced last week that Canada will formally adopt its notice and notice online copyright enforcement system (“Notice and Notice System”) starting in January 2015. Passed in recent updates to Canada’s copyright laws, The Copyright Modernization Act (Bill C-11), the Notice and Notice System will require that Internet intermediaries, such as Internet service providers (ISPs) and website hosts, either notify their customers of allegedly infringing conduct or remove infringing content they host upon receiving a notice of alleged infringement from a copyright owner or the owner’s authorized agent.

Although the Notice and Notice System claims to strike a balance between the rights of copyright owners and Internet users, it has been criticized by industry groups and practitioners (including myself) as being an ineffective system to allow copyright owners to directly enforce rights in their works online short of a judicial action, especially in comparison to its U.S. counterpart under the Digital Millennium Copyright Act (“Notice and Takedown System”). Despite these criticisms, it does not appear that Canada will adopt stronger online enforcement measures in the foreseeable future, meaning copyright owners and their agents need to understand the Notice and Notice System’s procedures, and potential alternative enforcement measures, in order to effectively protect their works online in Canada.

So what do copyright owners and their agents need to know about the Notice and Notice System?

Notice Procedures. In order to utilize the Notice and Notice System, a copyright owner or their agent must submit a notice to the Internet intermediary hosting the infringing work in order for the Internet intermediary to take action. According to Bill C-11, a notice must:

  1. State the claimant’s (copyright owner or agent’s) name, address and other relevant communication information;
  2. Identify the work or other subject-matter to which the claimed infringement relates;
  3. State the claimant’s interest or right with respect to the copyright in the work or other subject-matter;
  4. Specify the location to which the claimed infringement occurs;
  5. Specify the infringement that is claimed;
  6. Specify the date and time of the claimed infringement; and
  7. Provide any other relevant information or information required by other Canadian regulations.

Drawbacks. As mentioned, the Notice and Notice System is a weaker online copyright enforcement regime compared to systems in other countries such as the U.S.’ Notice and Takedown System, and regimes in Australia and Japan (among others). Particularly, the Notice and Notice System does not mandate that an Internet intermediary remove infringing content upon notice of an alleged copyright infringement in order for the intermediary evade contributory liability. Further, the penalty an Internet intermediary may face for failure to comply with a notice’s requested takedown is substantially less compared to penalties under U.S. copyright law. Further information on these deficiencies can be found here.

Implementation. Although the Notice and Notice System will not formally come into force until January 2015, many Canadian Internet intermediaries already adhere to its system on a voluntary basis. This means that copyright owners and their agents should at least consider utilizing the Notice and Notice System now as many Internet intermediaries have already adopted its procedures.

Alternative Online Enforcement Measures. Despite the Notice and Notice System’s relative weakness compared to its U.S. and other foreign counterparts, many Canadian Internet intermediaries may be brought under U.S. jurisdiction, and thereby be subject to more forceful enforcement measures under the Notice and Takedown System. This requires that an infringed online work qualify for protection in the U.S. and that the Internet intermediary in question be subject to U.S. jurisdiction based on their activities and interactions with the U.S. market. Further information on qualifications for the U.S. Notice and Takedown System can be found here.

What’s The Takeaway? Canada’s Notice and Notice System is a weaker system for copyright owners to directly enforce their rights in their copyright-protected works online. However, knowing its enforcement procedures as well as viable alternative enforcement measures can help to ensure that copyright owners can more effectively protect their works online in Canada and potentially beyond. That being said, a copyright owner should consider working with a qualified IP attorney in order to ensure that they effectively utilize the Notice and Notice System as well as other countries’ online copyright enforcement systems.

Current Lawsuit Exposes Limitations in Russia’s New Online Copyright Laws

Check out my guest posting for the UK IP blog The IPKat on the Russian publishing house Eksmo’s copyright infringement lawsuit against leading Russian social media website VKontakte, and general online copyright enforcement in the Russian Federation. It is available at: http://ipkitten.blogspot.co.uk/2014/02/fifty-shades-of-grin-and-bear-it-as.html.

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.