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.
Understanding the complexities of international copyright law can be confusing. There are several factors for determining whether a work qualifies for copyright protection abroad, what countries a work qualifies for foreign protection in, and what foreign protections are afforded to qualifying works. To understand these complexities (and to show my readers, family, friends and co-workers that I am not an IP robot), I’ve decided to explain how international copyright protections can be understood in practice through the music of my favorite band, The Grateful Dead. The Dead were not only meticulous about recording their live concerts, they also allowed their fans to make concert recordings (FYI, a great examination of the Dead’s recording culture is available in Nick Paumgarten’s recent New Yorker article). Unparalleled in the music world, the Dead permitted their fans to non-commercially record and exchange recordings of their concerts despite such practices generally considered to be copyright infringement.
Beyond providing a lifetime of amazing improvisational music, the thousands of live concert recordings available highlight important issues to consider in determining a work’s copyright protection abroad. To examine these issues, I intend to share some of my favorite Dead recordings that are available from the Internet Archive and highlight several main issues to keep in mind when determining what copyright and related-legal protections a work qualifies for abroad. So here it goes…
Qualifying Works (Playing in the Band – May 17, 1974, P.N.E. Coliseum, Vancouver, B.C.): The two year period of 1973 and 1974 was a creative high-water mark for the Dead when some of their most inspirational and exploratory music was created. This 1974 version of Playing in the Band exemplifies this period with solid interplay between the band members that delves into space and jazz-themed improvisation before reprising after nearly 20 solid minutes of exploration.
This recording also highlights the complexity of determining whether a work qualifies for international copyright protection. In international copyright law, recordings such as this 1974 recording potentially provide international copyright protection to the song’s authors (aka songwriters) and/or composers under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), and its performers (aka musicians) under the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention) and World Intellectual Property Organization Performances and Phonograms Treaty (WPPT).
So not to confuse you too much, in this section I will focus on examining whether this 1974 recording of Playing in the Band qualifies its author and composer, The Grateful Dead’s longtime lyricist Robert Hunter and rhythm guitarist Bob Weir respectively, for international copyright protection under the Berne Convention. For this recording to qualify for potential international copyright protection under the Berne Convention, it must have what is known as “attached.” Attachment requires that either:
- The author of the work is a national of a Berne Convention member state
- The author of the work is a habitual resident of a Berne Convention member state
- The work is first published in a Berne Convention member state or is published in a Berne Convention member state within 30 days after an initial publishing in a non-Berne Convention member state
A list of Berne Convention member states is available here.
Upon attachment and if a qualifying work qualifies for copyright protection under national copyright requirements, it is entitled to protections under that nation’s copyright laws.
Based on these Berne Convention attachment requirements, both Weir and Hunter would likely qualify for international copyright protections in this recording in two ways (*For the sake of analysis, we will assume this 1974 recording was the first publishing of Playing in the Band, although it had been played since 1971). Although this 1974 concert occurred prior to the U.S. becoming a signatory to the Berne Convention and was written/composed by two U.S. nationals, the fact the recording was made in Canada (a Berne Convention member state since 1928) likely means it was first published in a Berne Convention country, qualifying it for attachment under the Berne Convention immediately on May 17, 1974 and potential protections in Berne Convention member states subject to such states’ national copyright protection requirements.
Additionally, the Berne Convention applies retroactively to qualifying works from authors and composers from new member states upon such countries accession to the Convention, subject to national qualifications. This means that once the U.S. became a contracting member of the Berne Convention on March 1, 1989, this recording likely became attached as a qualifying work for protection under the Berne Convention on that date as protections under the Convention began to apply retroactivity to prior published works by U.S. nationals that remain protectable under U.S. copyright terms of protection (see Term of Protections section below for further details). Upon such qualification, Hunter and Weir’s work would then qualify for protection in Berne Convention member states, subject to such countries’ copyright qualifications.
Performers Rights (Fire on the Mountain – October 2, 1977, Paramount Theater, Portland, Oregon): I could have chosen any song to illustrate performers rights, but I chose this recording simply because Fire on The Mountain is one of my favorite Dead songs and this 1977 version from my home state is arguably one of the best ever. Beyond being a first-rate soundboard recording that highlights Keith Godchaux’s rare playing of electric keyboards, it possesses almost psychic interplay between the band members.
This song and its 1977 performance also represent the disparity of copyright protections between authors/composers and performers in a recording. The Berne Convention only extends copyright protections in a work to authors and composers, not performers. Fire on The Mountain was written by Robert Hunter and composed by Dead percussionist Mickey Hart. Despite the entire band’s inspirational playing in this 1977 recording, every band member with the exception of Hart would have little to no international copyright protections in this recording under the Berne Convention based on their non-author/composer status.
However, the Dead members may potentially qualify for international protections in this recording under the Rome Convention or the WPPT. The Rome Convention recognizes performers rights in qualifying performance recordings by providing rights to compensation for broadcasting and reproduction of such recordings, and exclusive rights to prevent unauthorized broadcasting, fixation and reproduction. However, similar to the Berne Convention, recordings must qualify for attachment under the Rome Convention. Such attachment only qualifies for protection for its performers if either:
- The performance takes place in a Rome Convention member state
- It is a qualifying recording (first published or recorded in a Rome Convention member state or the producer is a national of a Rome Convention member state)
- It is a qualifying broadcast (the broadcaster or the transmission was from a Rome Convention member state).
A list of Rome Convention member states is available here.
Unfortunately, the Rome Convention would likely not provide international copyright protections for the band members in this 1977 recording. The U.S. is not a signatory to the Rome Convention (FYI, it is mainly because the U.S. does not recognize a performer’s copyright in a recording). As this 1977 performance was performed in the U.S., by U.S. performers and not broadcasted, it does not qualify as an attached work under the Rome Convention, thereby not requiring any Rome Convention member state to recognize its copyright protection.
It is important to note that even if this recording had qualified for Rome Convention protection, it would have provided less international protections than the Berne Convention. The Rome Convention’s exclusive rights for performers in a work are optional, not required. Additionally, the Rome Convention has fewer signatories than the Berne Convention (91 Rome signatories to 166 Berne signatories). These limitations mean that fewer countries will acknowledge a performer’s rights in a qualifying recording under the Rome Convention than an author’s rights in a qualifying recording under the Berne Convention, and even if countries are Rome Convention member states, they have the ability to limit their recognition of performers’ rights in foreign recordings.
The WPPT (A list of WPPT member states is available here) may provide the band members performance rights in the 1977 recording, yet these international protections are also less comprehensive than those provided under the Berne Convention. The WPPT requires its signatories to extend rights in a recording to performers of other WPPT member states. Provided rights to performers under the WPPT include the right to compensation and exclusive rights including reproduction, distribution and performance, among others. However, like the Rome Convention, the WPPT has a smaller number of signatories (currently 91 countries) than the Berne Convention and member states can withhold implementing the WPPT’s performer rights and protections. The U.S. in particular has elected such limitations. This means all Dead band members do likely qualify for WPPT rights in this 1977 recording as performers, but they only qualify for such protections in the 91 countries, and even in those countries, their rights may be subject to limitations or exclusion, as seen in the U.S.’ non-recognition of the WPPT’s performer rights.
As a result of analyzing protection qualifications in these three treaties, only Hunter and Hart, as an author and composer respectively, qualify for potentially effective international copyright protections in this recording based on their Berne Convention protections. Unfortunately, the other members may only potentially qualify for certain rights in a limited amount of countries under the WPPT.
Term of Protections (Not Fade Away – November 2, 1979, Nassau Coliseum, Uniondale, N.Y.): A staple at Dead concerts, Buddy Holly and Norman Petty’s Not Fade Away was a testament to the strength and size of love (“bigger than a Cadillac” for example) and an excellent springboard into some intense jams. Late 70’s versions of Not Fade Away, such as this 1979 recording, are particularly exceptional due to their extended improvisations.
Works such as Not Fade Away also highlight an important issue in international copyright law, namely the duration to which a work is granted copyright protection. Under the Berne Convention, member states must afford copyright protection to qualifying works for the life of the author and for 50 years after their death. Contrastingly, the WPPT grants protection for performers in recordings for 50 years from when the recording was made, while the Rome Convention only affords 20 years of protection for performers from when a recording is made.
As with rights in the Fire on the Mountain recording above, the protection terms given to the authors/composers and performers in this 1979 recording are disproportionate. As widely known, Buddy Holly died in a horrific plane crash in 1959 (which also killed Richie Vallens and J. P. “The Big Bopper” Richardson). Petty died in 1984. Based on the date of their deaths, Holly’s copyright protections as an author of Not Fade Away under the Berne Convention expired in 2009, while Petty’s rights will continue to remain active until 2034. For all of the Dead band members, their protections under the Rome Convention as performers expired in 1999 (FYI, they would not have had any rights under the Rome Convention anyway – see Performers Rights section above) and their rights in this recording under the WPPT are set to expire in 2029.
However, it is important to note that some Berne Convention member states may provide extended copyright protection terms for authors. For example, the U.S. and Australia extend copyright protection rights for the life of the author plus 70 years after their death. If qualifying as protectable works under the Berne Convention and both U.S. and Australian copyright law, Holly and Petty’s copyright protections in Not Fade Away will remain active in the U.S. and Australia until 2029 and 2054 respectively.
Conclusion: Besides providing some spectacular recordings, I hope this short analysis helps to understand some main issues in international copyright law that can assist in determining the extent of foreign protections in a particular work.
What are your favorite Dead shows? What international copyright issues are you facing?
**Important Note**: The legal issues highlighted herein are hypothetical. Additionally, this article is neither approved nor endorsed by The Grateful Dead, Nick Paumgarten, the New Yorker magazine, the Internet Achieve or any related parties.