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.
Today, I posted on The IPKat about Ford Motor Company’s recent trademark troubles in Russia as the Federal Service for Intellectual Property (Rospatent) denied Ford well-known trademark protection for its company name and iconic blue oval logo. Particularly, I discussed how Ford’s denial of well-known trademark protection was not such a result of Russia’s precarious IP protection environment, or even Ford’s non-use of their name or logo in Russia, but that it likely failed to comply with Rospatent’s procedural registration requirements.
It is available here.
On March 17th, the U.S. Attorney’s Office filed charges in U.S. Federal Court (Western District Washington) against Russian national Alex A. Kibkalo for stealing trade secrets from software giant Microsoft under The 1996 Economic Espionage Act (18 U.S.C. § 1832). Although U.S. v. Kibkalo (14-mj-00114) has yet to be ruled on, and despite involving a large multi-national business like Microsoft, this case highlights several cross-border trade secret protection issues all internationally-focused businesses should consider.
Facts. To understand these trade secret protection issues, it is important to first understand the alleged facts of this case. According to the U.S. Attorney’s Complaint, Kibkalo was a Microsoft employee, working as software architect in Microsoft’s Lebanon office. He allegedly signed a non-disclosure agreement (“NDA”) at the beginning of his employment.
Between July and August 2012, Mr. Kibkalo allegedly established a virtual machine on a computer server at Microsoft’s Redmond, Washington headquarters to upload unreleased versions of Microsoft’s software updates and a software development kit (collectively, “Content”) to his personal cloud storage account. The Content was secured on Microsoft’s internal system by Microsoft’s internal security program that included limited facility and electronic system access points, facility monitoring, and unique identifying signature technology to track downloaded proprietary information from the internal system. Those who accessed content on Microsoft’s internal electronic system were also required to accept Microsoft’s terms of service that included warnings concerning the proprietary nature of content on the internal system as well as reminders to Microsoft employees and others of their non-disclosure obligations pertaining to proprietary information on the system.
Once Mr. Kibkalo allegedly downloaded the Content, he allegedly transmitted links to the Content to a French technology blogger whose actual geographic location was unknown. Microsoft became aware of alleged transmission through an outside source who was contacted by the blogger about the Content. Microsoft subsequently monitored the blogger’s communication through the blogger’s Microsoft Windows Live Messenger account. An examination of the blogger’s Messenger communications and emails allegedly verified the transmission and unique identifiers in the Content.
Lessons To Be Learned. Although this fact pattern is by no means novel, it does reveal cross-border trade secret protection issues all companies should consider in order to ensure their trade secrets are protected under U.S. and foreign trade secret laws.
So what protection issues need to be considered?
Worker Protection Measures. Kibkalo emphasizes that establishing trade secret protections through contractual provisions with contractors and employees is essential for businesses to protect their proprietary information, both at home and abroad. Under U.S. law (18 U.S.C. § 1839(3)) and international legal standards (Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) – Art. 39.2(c)), businesses who wish for their proprietary information to qualify for trade secret protection must take “reasonable” measures to protect such information from public disclosure. Often, this requires that a business have their employees, contractors or any other person to whom they disclose the business’ proprietary information sign a NDA (or similar agreement) prohibiting such persons from disclosing the proprietary information to others. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 521 (9th Cir. 1993).
Assuming Microsoft had an effective NDA executed with Mr. Kibkalo under U.S. law, Microsoft would likely be in a position to enforce trade secret protections in the Content under U.S. law.
Any business, regardless of its geographical location or the location of its employees or contractors, can also take similar protective measures.
Internal Security Measures. This case also highlights that international businesses need to establish internal security measures in order to effectively protect their proprietary information. Electronic and facility security measures, such as access restrictions, surveillance mechanisms have been found to be reasonable protection measures to help businesses qualify for trade secret protection. See U.S. v. Chung, 659 F.3d 815, 825 (9th Cir. 2011). As Microsoft attests to maintaining similar security measures, such measures would likely help Microsoft to obtain trade secret protection for its Content.
It goes without saying that not all businesses can afford the same level of security protections as multinational businesses like Microsoft. Yet, simple and relatively inexpensive security measures such as password protections, locking of files and computer equipment, as well as posting confidential notices on proprietary information can effectively help any business to better qualify for trade secret protection, both in the U.S. and abroad.
Online Monitoring Measures. Lastly, this case highlights the importance of online surveillance and tracking measures that businesses should consider acquiring to protect their proprietary information throughout the globe. Although generally not required to obtain trade secret protection under U.S. and/or foreign laws, the monitoring of suspected persons or entities who may be misappropriating trade secrets (*provided they are done so in compliance with applicable laws and regulations), as well as tracking software, are both effective tools to identify and prevent trade secret misappropriation. Microsoft would not have been able to determine that Mr. Kibalko had allegedly stolen the Content in the U.S. and allegedly transmitted it to the blogger outside of the U.S. without its unique identifier technology.
Granted, not all businesses have the same circumstances that allowed Microsoft to find out about the blogger and Mr. Kibalko’s alleged activities (e.g., outside sources, access to Messenger and email accounts, etc.), nor the available funds to conduct Microsoft’s extensive online surveillance activities. Yet, there are many (legal) monitoring services, investigating agencies, and identifying software products on the market that can help businesses better monitor misappropriating conduct both at home and abroad.
What’s The Takeaway? It remains to be seen how U.S. v. Kibkalo will be decided. However, this ongoing case shows that all internationally-focused businesses can develop sound practices and procedures to ensure their proprietary information is protected throughout the world. By establishing effective worker protection measures, internal security measures, as well as online monitoring measures, businesses can better protect their trade secrets from being misappropriated both at home and abroad.
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.
Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.
So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.
Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.
Below are some GI issues businesses should consider when entering new foreign markets:
Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.
The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.
Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.
Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).
Below are GI registers for some of the world’s major GI jurisdictions.
National GI Register
|National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial -INPI)|
|General Administration of Quality Supervision, Inspection and Quarantine|
|The Controller General of Patents, Designs, and Trade Marks|
|Federal Institute of Industrial Property|
In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:
- Can you submit such a notification in a particular country?
- Does the country you wish to enforce your IP rights have an IP customs notification system?
- Does such a country’s national IP customs notification system include the type of IP you wish to protect?
- What are the particular foreign customs agency’s IP notification requirements?
Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:
Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.
Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).
Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.
Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.
Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.
If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.
Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.
Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.
What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.
Below are the IP customs notification submission requirements for some of the worlds’ major markets.
Types of IP Covered
|United States||19 C.F.R. 133.1 et seq.
||Copyright and Trademark||Instructions: Copyright and trademark notification (known as e-Recordation) requires:
-The trademark or copyright’s U.S. registration number
-The name, address and citizenship of the IP rights owner
-The place(s) of manufacture of goods bearing the trademark or copyright
-The name and address of individuals authorized to use the trademark or copyright
-The identity of a parent company or subsidiary authorized to use the trademark or copyright (if any)
Fees: US $190.00 per copyright and trademark (per class of goods and services).
Effective Duration of Notification: 20 years.
|e-Recordation Notification Portal|
||Copyright Act 1968, Subsection 135(2)||Copyright and Trademark||General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.
Duration of Notification: Four years.
|China||Decree of the General Administration of Customs, No. 183||Copyright, Patent and Trademark||Requirements: To file a IP customs notification with the General Administration of Customs (GAC), an application must include:
-a copy of the IP rights holder’s business registration certificate and a Chinese translation
-a copy of the Chinese registration certificate for the copyright, patent or trademark
-Proof of Power of Attorney (if registered by an agent)
-Registration fee (see below)
-Licensing agreements (if any)
-Pictures of the relevant goods and their packaging
Submission: Forms can be filled online or by mail.
Fees:Approximately US $130.00 (800 RMB).
|GAC Online Notification Form (In Chinese)|
|European Union||Council Regulation (EC) No 1383/2003, Article 5.5||Copyright, Geographical Indication, Patent and Trademark||The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.
Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).
|Community Application For Action|
|India||Notification no. 47/2007 – Customs (n.t.)||Copyright, Geographical Indication, Patent and Trademark||Registration: The CBEC requires that copyrighted works be registered with Indian Copyright Office, and geographical indications, patents and trademarks with the Office of the Controller General of Patents, Designs & Trade Marks prior to submitting a CBEC customs notification.
Ports of Entry: The CBEC also requires that notifications be submitted to particular ports of entry.
Duration of Notification: Minimum period of one (1) year.
|Online Notification Submission Portal|
**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.
Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.
Establishing methods for enforcing copyright protections online has become increasingly important to protecting a content owner’s rights in their works—as demonstrated by the recent launch of the Copyright Alert System (CAS) in the U.S. Most content owners do not have the same resources for online copyright enforcement as the Media and Internet service provider industries (two central sponsors of CAS). However, nearly all owners of protected works can take advantage of relatively inexpensive online copyright enforcement methods to protect their works in many of the world’s major markets. The most commonly used means of enforcement are takedown notices—demands sent from content owners to Internet Service Providers (ISPs) or website hosts to remove infringing content hosted on websites under their control. Depending on the circumstances, an ISP may be compelled upon receiving a takedown notice to remove infringing content from a hosted website, or in some cases, an entire website, for a temporary or extended amount of time.
Takedown notices can have substantial implications on an infringer’s online presence. A takedown can interrupt access to a infringer’s site, potential disrupt or halt their business, and can possibly result in the deletion of their site’s user comments and feedback. With these potentially serious consequences in mind, a rights holder should consider exhausting all alternatives before submitting a takedown notice against an infringing website.
Determining whether to and how to utilize takedown notices as a international copyright enforcement tool requires understanding a few things:
- What international legal protections does a rights owner have in their works
- Where are works being infringed online
- Where is an ISP subject to jurisdiction
- What countries have national takedown procedures and what are such countries’ requirements
- Further issues after a takedown notice is submitted
Let’s break these down a little further:
What International Legal Protections Does a Rights Owner Have in Their Works? A rights owner cannot consider utilizing takedown procedures abroad without first establishing that their works qualify for international copyright protection. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (A list of Berne Convention countries is available here), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.
If a content owner has questions about whether their content qualifies for international copyright protection, they should consider consulting with their national copyright office or a qualified attorney.
Where are Works Being Infringed Online? To determine if any enforcement measure can be utilized, it is essential to know where in the world a work is being infringed online. If a work is being used without authorization and is available on the Internet in a particular country, it is likely being infringed in that particular country. For example, if a song by a Spanish artist, that qualifies as a protected work under the Berne Convention, is uploaded without authorization by a Malaysian file sharer to their website and is accessible throughout the entire world, it is being infringed in both Malaysia and Spain, as well as potentially in the other 164 Berne Convention countries.
Where is an ISP Subject to Jurisdiction? In order to effectively submit a takedown notice in a country where a protected work is infringed online, the ISP of the infringing website must be subject to that country’s laws in order for the ISP to be potentially compelled to comply with a takedown request. Generally, an 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 site’s ISP can be completed through conducting a WHOIS database search. Such a search may also help identify the ISP’s host country by providing details about the ISP. However, this is not always a certainty.
If an ISP is located in the country where a work is infringed online, a rights owner only needs to establish whether that country has takedown procedures (see next section) to determine whether they can utilize takedown notices. However, determining whether an ISP is subject to the copyright laws of a country where it is not physically located is more difficult. In the U.S., a foreign ISP must at least have sufficient “minimum contacts” with the U.S. for the foreign-based ISP to be subject to U.S. law, and potential liability under the Digital Millennium Copyright Act (DMCA). Int’l Shoe Co. v. Wash., 326 U.S. 310, 316 (1945). Generally, such contacts have required purposeful interactions with U.S. citizens and commerce, such as marketing its services in the U.S. that would foreseeably bring the ISP under U.S. jurisdiction. Asahi Metal Indus. v. Superior Court, 480 U.S. 102, 112 (1987). It must also be “reasonable” to bring the ISP under U.S. jurisdiction, based on multiple factors. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980).
To illustrate these requirements using the previous example of the Spanish musician: Let’s assume that an Australian ISP hosts the Malaysian file-sharer website whose infringing content is available in the U.S., but the ISP does not market or make its services available in the U.S. In this case, the ISP would likely not be subject to U.S. law. Therefore, it is likely that the ISP is only subject to Australian law due to its location in Australia—and possibly Malaysian law if qualifying under Malaysian personal jurisdiction requirements. Alternatively, if the Australian ISP actively markets its services to U.S. citizens and businesses, the ISP may be subject to U.S. jurisdiction, and thereby potential liability under the DMCA. This would give the Spanish artist the ability to submit a U.S. takedown notice against the Australian ISP that would subject the ISP to potential liability under the DMCA if is fails to take action on the takedown notice.
Two important things to note:
- Failing to qualify for jurisdiction does not mean a rights holder is barred from demanding an ISP to takedown content that infringes a protected work. It simply means that an ISP may not be compelled or have incentive to remove infringing content because they are unlikely to face liability.
- Many content submission sites like YouTube and Facebook, as well as search engines such as Google and Bing, maintain their own takedown submissions procedures that are generally available to users regardless of their geographical location or where a protected work is infringed online.
What Countries Have National Takedown Procedures and What are Such Countries’ Requirements? To effectively utilize takedown procedure against an ISP, the ISP’s host country or country to which it is brought under personal jurisdiction must possess takedown procedures for rights holders, and such rights holders must comply with such procedural requirements. This requires understanding:
- Whether the country to which the ISP is subject to jurisdiction has takedown notice legislation
- If so, what are the country’s takedown notice requirements and procedures.
National Takedown Notice Legislation. Surprisingly, not all countries maintain takedown notice legislation for rights holders. Major markets including Argentina, Brazil, Canada, India, Israel, Mexico and Russia are among those that don’t currently have takedown notice procedures. Despite such gaps, a large number of Berne Convention countries have enacted takedown notice legislation including the U.S., Australia, China, France, Italy, Germany, Japan, New Zealand, Singapore, South Africa, South Korea, Taiwan and the United Kingdom, to name a few.
National Takedown Notice Requirements: Below are the requirements for takedown notices in a number of major markets that have notice and takedown legislation.
Takedown Notice Requirements
|United States||DMCA (17 U.S.C. § 512(c)(3)(A))||
|Australia||Regulation 20I, Schedule 10, 1969 Copyright Regulations||
|China||Article 14, Regulations on the Protection of the Right to Network Dissemination of Information Networks||
|Japan||Article 3(2)(ii), Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to DemandDisclosure of Identification Information of the Senders||
|South Africa||Section 77(1), The Electronic Communications and Transactions Act||
|United Kingdom||Section 124(a)(3), Communications Act 2003||
Note: Some of these national take down requirements are derived from translations. Rights holders should consult with National Copyright Offices or qualified attorneys in the jurisdictions they wish to enforce their rights in order to confirm these and other take down notice requirements.
Further Issues After a Takedown Notice is Submitted. Finally, it is important to note that there are issues to consider after a takedown notice has been submitted. First, an infringer may respond to a takedown notice 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.
Special thanks to co-author Kenneth Louis Strocsher, J.D. Candidate, 2014, Seattle University School of Law.
On December 6, 2012, the U.S. Congress passed a bill establishing permanent normal trade relations with Russia that will qualify U.S. businesses for enhanced IP protections in Russia based on Russia’s recent World Trade Organization (WTO) accession. Although Russia’s WTO accession provides greater assurances that it will protect foreign IP owners’ rights, its lack of sufficient IP enforcement and political repression continue to make Russia a precarious IP protection environment for foreign exporters and businesses.
Russia’s WTO accession makes Russia more accountable to foreign IP owners based on their acceptance of enhanced international IP commitments. By joining the WTO, Russia is required to adopt minimum international IP protections under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The U.S. and other WTO members will also be able to initiate WTO dispute settlement proceedings against Russia if they fail to live up to their TRIPS commitments. This gives WTO member countries the power to levy punitive tariffs against Russia if Russia is found to be in non-compliance with TRIPS, ultimately giving such countries the ability to indirectly but more effectively enforce their citizens’ IP rights in Russia.
Such protections could not come sooner as Russia has been criticized for failing to uphold international IP rights, which has had substantial economic implications for foreign businesses. The U.S. Trade Representative’s Office placed Russia on its 2012 Priority Watch List for countries failing to sufficiently enforce international IP rights, primarily citing inadequate copyright enforcement. Inadequate enforcement has led to substantial profit losses for foreign businesses, as the International Intellectual Property Alliance reported that unauthorized file sharing in Russia led to over $1 billion in lost profits for domestic and foreign film industries in 2011, while Russia’s pirated software market was last valued in 2010 at $2.8 billion.
Russia has made strides to improve IP enforcement, yet its political repressiveness towards private businesses and personal freedoms should cause concern for IP exporters. Russia has recently passed IP enforcement reforms by establishing specific IP Courts and amending its Criminal Code with new monetary thresholds for criminal copyright infringement, both of which were applauded by industry groups and foreign government agencies. Despite these advances, Russia’s political climate still poses an obstacle to sufficient IP enforcement. The National Security Project, a Washington think tank, identified Russia’s repressive treatment towards private businesses as being a threat to IP rights based on several factors including politically partial judiciaries and arbitrary government prosecution, making businesses unable to adequately protect their IP through the Russian judicial system.
Governmental restrictions on the freedom of speech also pose IP protection concerns as seen in the recent controversy with the female punk rock band Pussy Riot. Earlier this year, members of Pussy Riot were arrested, convicted, and sentenced to two years in prison for “hooliganism” based on song lyrics and videos critical of Russian President Vladimir Putin and the Russian Orthodox Church. While largely overshadowed by the band members’ imprisonment, Russia’s IP authority Rospatent refused to register the band’s name as a trademark based on the mark’s use of the band’s name with its “negative and provocative” suggestiveness. In fairness, the U.S. and other countries prevent trademarks from being registered for scandalous and disparaging content. Yet, the political significance of the band’s speech begs to ask whether Rospatent’s registration refusal was based solely on speech the Russian government found offensive. If such restrictions on IP rights can be placed on its own citizens, there is no indication that foreigners would be immune from similar acts.
So what does Russia’s currently improving but precarious IP protection environment mean for businesses and exporters? Russia’s WTO accession and recent reforms will provide greater protection for foreign IP owners in Russia, yet IP enforcement and political obstacles remain, and should be seriously considered when deciding whether to enter the Russian market.