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!
It was announced today that for the next six months, I will be given the great honor of being a guest contributor for the UK-based IP blog The IPKat where I will be posting on IP developments throughout the world.
Don’t worry, I am still intending to blog on international, cross-border and trade-related IP issues for The IP Exporter. If any of you have any stories you feel need to be covered, either in The IP Exporter or The IPKat, please feel free to send me a message.
Thank you for all of your continued support!
Co-Author Mackenzie Stout, J.D. Candidate 2014, Seattle University School of Law.
Personality rights are big business throughout the globe. Celebrities often license third parties the right to use their images and likenesses for thousands, even millions of dollars. For example, boxing legend Muhammad Ali’s personality rights were recently sold for $62 million. Yet, protection for these quasi-property rights varies from country-to-country, often limiting the degree to which celebrities, as well as ordinary persons and businesses, can protect their distinctive personal traits from unauthorized use at home and abroad.
Guernsey, the autonomous British possession and well-known tax haven island off the coast of France, recently made a bold move towards greater recognition of personality rights. By passing the Image Rights (Bailiwick of Guernsey) Ordinance, 2012 (“Ordinance”), Guernsey now grants personality rights protection to several personality traits and parties not granted under most national legal systems. By establishing the first ever registry of personality and image rights, and giving a registrant (including non-personalities) the ability to register the personality and image of a personality they intend to commercially manage, the Ordinance gives many persons and businesses the potential ability to protect their personal traits throughout the world.
So how does Guernsey’s new personality rights laws provide these protections?
What’s Is Registrable? As mentioned, Guernsey’s Ordinance allows the registration of personalities and images in Guernsey as a property right, much like a trademark or copyright registration. Personalities that can be registered include: (1) natural persons; (2) legal persons; (3) joint personalities (two or more persons who are intrinsically linked in the eyes of the public); (4) groups (whose membership can be interchangeable); and (5) human or non-human fictional characters. Such registration eligibility provides several advantages. First, the personality of a deceased natural person can be registered for up to 100 years after a person’s death and there is no fame or public recognition threshold necessary for registration. This means that any personage, no matter how well known, can be registered. Second, legal entities, such as businesses, foundations, and trusts, are now eligible to register as personalities, giving them the same rights and privileges to protect their personal traits as actual people.
Images associated with a registered personality may also be registered. Registrable images include an individual’s name or alias, voice, signature, likeness, appearance, silhouette, feature, face and even mannerisms. The proprietor of a registered personality has exclusive rights in the images registered against or associated with that personality. Even unregistered images may be protected if they are closely related to the personality. However, like any trademark or copyright registration, registering a personality or image in Guernsey’s Image Rights Register (“Register”) gives a proprietor of a personality or image rights more convincing evidence of ownership over such personality or image.
How Can a Personality or Image be Registered? A proprietor can register their personality or image rights in Guernsey in person or online. Like trademarks and copyright, an applicant should first conduct a search (known as clearance) for their personality rights in the Register, searching existing registrations for personalities and images that may preclude their own registration. If a personality or image registration application is accepted by the Guernsey Intellectual Property Office, it is published on the Register for one month, during which any person or entity may comment on and/or file a notice of opposition against the application. If no opposition is filed, the personality or image is registered with the effective date being the original filing date of the personality or image application. A personality or image registration is valid for ten years, and is renewable for subsequent ten-year periods.
How Do You Enforce Your Rights in a Registered Personality or Image? A registrant of a personality or image under the Ordinance would have to likely seek enforcement through Guernsey’s legal system, and then obtain a foreign enforcement of such a judgment abroad in order to effectively utilize Guernsey’s new image rights laws. A registrant may only file an infringement proceeding in Guernsey under the Ordinance if: (a) an infringing image is used for a commercial purpose or financial benefit; and (b) the infringing image is: (i) identical or similar to the protected image; (ii) confusingly similar to the protected image; or (iii) similar to the protected image and takes advantage of or is detrimental to the distinctive character or reputation of the registered personality. Exceptions to such infringement include any use of a registered personality or image related to education, news reporting, or incidental inclusions, where, for example, an image of the registered personality appears in the background of a television segment unrelated to the image or the registered personality.
If a registrant is able to succeed in a legal proceeding in Guernsey, they would likely need to seek foreign enforcement of such judgment abroad in order to effectively enforce their personality rights. As the vast majority of infringers will likely not be domiciled in Guernsey, a registrant will likely need to have a foreign Court enforce their Guernsey judgment in order to enforce their Guernsey image rights registration(s) abroad. The chances of being able to obtain such foreign enforcement depend on a number of factors including reciprocal enforcement arrangements between Guernsey and the country where the infringing party is domiciled, as well as the foreign jurisdiction’s own personality rights laws.
What’s The Takeaway? The implications of Guernsey’s Ordinance have yet to be fully realized, but any person or business wishing to protect their personality rights or limit their liability from the same should pay close attention to the Ordinance’s new legislation. Although Guernsey’ Ordinance appears to expand the types of entities and personal traits that qualify for personality rights, determining whether a foreign Court will recognize these new personality rights in their own jurisdiction remains to be seen. Persons and businesses wishing to obtain personality and image registrations in Guernsey should work closely with qualified counsel in order to better ensure proper registration of such rights.
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.