Tagged: #takedown

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

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

The U.S. Patent and Trademark Office (USPTO) announced late last week that it will hold a public meeting on July 17, 2017 at its Alexandria, Virginia headquarters on measuring the impact of voluntary initiatives to reduce online intellectual property infringement.
As private online retail and social media platforms such as Amazon and Facebook are becoming the main channels in which people shop and socialize respectively, voluntary IP enforcement measures taken by these and other online parties are increasingly shaping how IP is enforced online—with both positive and negative reception. Google is a perfect example of this phenomenon. Google currently handles millions of online copyright and trademark takedown requests a day, up from merely dozens a day just a decade ago. Based on its heightened role as one of the Internet’s main search engines and online service providers, Google has developed its own voluntary initiatives to deter trademark and copyright infringement including removal of listings that have received repeated notices of IP infringement. While arguably taken to protect against any contributory liability (see 17 U.S.C. § 512(i)(1)(A)), Google’s voluntary enforcement measures such as its removal of repeat infringers is shaping how IP is protected online and how content rights holders address online IP protection. Despite such influence, Google has in the past also faced scorn by such rights holders for not going far enough with other voluntary measures, such as demoting search results of known infringers.

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

Further information about the meeting is available here.

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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.

Dealing With (Foreign) Infringing Online Advertisements

Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.

1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.

Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.

2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).

Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.

3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.

Additional Foreign Considerations: None. Additional complaints may need to be filed for foreign trademark ad complaints as well.

4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.

Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.

What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.

The Trans Pacific Partnership and Its Implications on Online Copyright Enforcement

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

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

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

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

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

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

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

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

TPP Member State Online Copyright Enforcement Systems

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

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

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

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

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

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

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

Japan
Enforcement System Notice and Takedown
Overview and Notes Japan’s notice and takedown protocols establishes that allegedly infringing content will be taken down seven days after notice is provided from the ISP to the alleged infringer.
Governing Legislation
Article 3(2)(ii), Act No. 137 0f 2001 (Act on the Limitation of Liability for Damages of Specified Telecommunications Service Providers and the Right to Demand Disclosure of Identification Information of the Senders)
Notice Requirements

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

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

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

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

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

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

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

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

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


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


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

Protecting Your Online Content on Both Sides of the Border

I had the honor to guest blog about cross-border online copyright enforcement for Vancouver Canada’s Kusic and Kusic Blog.  Check out my article at http://kusic.ca/legislation/protecting-online-content-sides-border.

Enforcing Online Copyright Protections Abroad: Understanding Foreign Takedown Notice Requirements

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.

Country

Legislation

Takedown Notice Requirements

United States DMCA (17 U.S.C. § 512(c)(3)(A))
  1. A physical or electronic signature of a person authorized to act on behalf of the rights holder alleging infringement;
  2. Identification of the copyrighted work(s) claimed to have been infringed;
  3. Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);
  4. Information reasonably sufficient to allow the ISP to contact the rights holder (i.e. address, telephone number, e-mail, etc.);
  5. A statement that the rights holder has a good faith belief that the use of their content is not authorized by the rights holder; and
  6. A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
Australia Regulation 20I, Schedule 10, 1969 Copyright Regulations
  1. The statement: “I, the person whose name is stated below, issue this notification for the purposes of condition 3 of item 4 of the table in subsection 116AH(1) of the Copyright Act 1968 and regulation 20(I) of the Copyright Regulations 1969.”
  2. The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7], being copyright material residing on your system or network.”
  3. (If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by me or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;
  4. (If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;
  5. (If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;
  6. The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and
  7. An attached schedule to the notice including a description of the copyright material and the location of the infringing content.
China Article 14, Regulations on the Protection of the Right to Network Dissemination of Information Networks
  1. The rights holder’s name, contact information and address;
  2. The titles and website addresses of the infringing content which is requested to be removed or disconnected;
  3. Preliminary evidence of the works’ infringement; and
  4. A request that the service provider remove the infringing content.
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
  1. Information on the particular infringement;
  2. Suggested actions to be taken by the ISP;
  3. The rights in the work that are allegedly being infringed;
  4. The reasoning why the rights holder believes that an infringement has taken place; and
  5. The rights holder’s contact information.
South Africa Section 77(1), The Electronic Communications and Transactions Act
  1. The rights owner’s full name, address, telephone and e-mail address (if any);
  2. Identification of the right of the protected work that has been allegedly infringed;
  3. Identification of the material or activity that is claimed to be the subject of the infringement;
  4. The requested remedial action to be taken by the ISP;
  5. A statement that the rights holder is acting in good faith;
  6. A statement by the rights holder that the information in the notification is true and correct to their knowledge; and
  7. The copyright owner’s electronic signature.
United Kingdom Section 124(a)(3), Communications Act 2003
  1. A statement that there appears to have been an infringement of the owner’s copyright in the protected work;
  2. A description of the apparent infringement;
  3. Evidence of the apparent infringement that shows the infringer’s IP address and the time at which the evidence of infringement was gathered;
  4. Notice must be sent to the ISP within one (1) month of when evidence of the infringement; and
  5. The notice complies with any other requirement of the initial obligations code.

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.