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Wednesday, July 1, 2015

Vietnam Civil Copyright Case

Image result for Mac Bao Khanh
On 12 May 2015, the Court of Hai Chau Ward in Da Nang City awarded compensation of  VND14,000,000 (approx. US$700)  in an action for infringement of copyright in a photograph. Although the case itself is relatively straightforward and the amount of compensation modest, the decision is noteworthy because copyright infringement actions of this sort rarely reach the courts in Vietnam, owing partly to the lack of detailed regulations for the assessment of infringement and damages and partly to the complex court procedures that exist. 
On 20 July 2014, a photographer,  Mr Mac Bao Khanh,  found that his work ‘Da Nang – toward future’, a photograph of Da Nang City Bridge, had been modified and was being used, without his consent, by Toan Cau Xanh Ltd. for advertising purposes. He subsequently initiated communications with Toan Cau Xanh Ltd. in an attempt to resolve the issue amicably and then, after a series of unsuccessful discussions, commenced copyright infringement proceedings in the Court of Hai Chau Ward, claiming  compensation of VND 25,000,000 (approx. US$1,146).
On 9 March 2015, the Court of Hai Chau Ward established a price assessment committee, made up of representatives of five relevant organizations, to evaluate the photograph in dispute. The committee valued the photograph at VND20,000,000 (approx. US$917).
At the trial on 12 May 2015, the Defendant argued  that: (i) the photograph in dispute had been downloaded from a tourist forum, not from Mr Khanh’s personal website; (ii) Mr Khanh had asked for a royalty of only VND200,000 (approx. US$9) per day in a deal with Vnexpress, a local newspaper, so the compensation being sought in this action was unreasonable. In its verdict issued on the same day, however, the Court found in favour of Mr Khanh and  ordered Toan Cau Xanh Ltd. to pay compensation  of VND14,000,000 (approx. US$700). Hopefully, the case will serve as an useful precedent, encouraging copyright owners to seek relief from the courts when their copyright is infringed.

Monday, June 22, 2015

Indonesia's pro and anti tobacco industry policies

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Indonesia's Ministry of Trade (MoT) has announced its intention to join the challenge against Australia at the World Trade Organization (WTO) over Australia's laws on plain packaging for cigarettes. Honduras, the Dominican Republic and Cuba have made challenges and 36 WTO Members have made third party interest interventions. MoT Director General of International Trade Cooperation, Bachrul Chairi asserted that mandatory plain packaging harms WTO members and would obstruct cigarette exports from Indonesia, thus affecting tobacco farmers as well as the national cigarette industry. Indonesia is a major tobacco grower and cigarette producer nation especially of clove cigarettes. Chairi framed the dispute in IP terms, stating that it could have wider negative effects on IP rights especially in other product sectors.

Indonesia's policy is conflicted.  The MoT seeks to protect the tobacco industry and IPRs. Meanwhile the Ministry of Health (MoH) enacted 2012 regulations to ban use of a wide range of words on packs from LIGHTS to PREMIUM and seems to have included a wide unspecified class of promotional or misleading terms. There are also rumours of a plain packaging bill being prepared.  This ministerial conflict is perhaps unusual, but illustrates the competing interests at work.  

Wednesday, June 17, 2015

New Domain Name arbitration in Indonesia is a win

Image result for netflix A dispute over the domain name Netflix.id in Indonesia decided in May, sets a nice clear precedent for Indonesia's new domain name arbitration procedure. Indonesian domain name registrar PANDI established an arbitration system for Indonesian country level CTLDs recently. For more on the local domain name system see here. The system known under the acronym PPND PANDI is established under Government Regulation No. 82 of 2012 on Electronic Systems and Transactions. It broadly follows the UDRP system, so offered a cost effective and efficient alternative to going to court, previously the only option.

The system operates because registrants have signed up to PANDI's terms. The procedure is that the Complainant files a complaint to PPND PANDI based on one of 3 available grounds (based on a Registered trade mark, Registered Business Name or if it is contrary to public order - which means bad faith). The time frame under the rules is 2 months, but it may take longer since there are some steps during the process with no clear time frame in the regulations - such as the time limit for the PANDI to form the Panel once the objection and the response has been submitted by both parties.

Arbitrators are appointed to hear cases from a current panel of 10. There may be a single or a panel of 3 Arbitrators depending on the procedure followed in the case. The Arbitrators are IP Practitioners, Lecturers/Academics and Officers from Ministry of Communication and Informatics.

The Netflix.co.id domain name was registered by a local registrant. The Arbitrator decided in favour of the US trademark owner on the basis of their prior registration and ordered the domain name to be transferred to Netflix, Inc.

Since then a further case over bmw.id has also been decided. Until this new arbitration system, court was the only option and so few domain name disputes had been heard. Now brand owners can feel secure that a solid arbitration system is working.

Tuesday, June 16, 2015

Brunei patent case clarifies position for pre-existing patents

Brunei IP news is rare and IP cases even rarer still. Only in 2012 did Brunei adopt a full patent system. A case on the new patent law's transitional provisions has made it through the courts and set clearer rules for pre-existing re-registered patents under the old system.

The previous patent system allowed re-registration of UK, Malaysian or Singaporean patents within 1 year of their grant, provided such the patent had a date of filing before 1 January 2012. The term runs for 20 years from 'the date of the patent'. The case was Winthrop Pharmaceuticals v Shionogi Seiyaku Kabushiki Kaisha. The question at issue was whether the term 'the date of the patent' meant the date of filing or date of grant.  The Court of Appeal held it meant the date of grant.

The Brunei patent office now calculates annuities for all old Brunei patents obtained by re-registration, from the date of grant of the re-registered patent.  Previously they calculated annuities from the date of filing. So now Patentees can switch if they choose and save money. In addition what were previously believed to be expired patents because the term ran 20 years from the date of filing, will now be treated as live until 20 years from the date of the original grant.

The net result will increase old patent terms and increase annuities for the patent office. All of which helps boost the new patent system a little more.

Thursday, June 11, 2015

Bali's KU DE TA finally wins back its name

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The consortium of Indonesian and foreign entrepreneurs that established the iconic Bali beach club concept and ended up suing in Singapore have won on appeal. At issue is how an informal business group did not control and manage their brand as their business grew. This allowed to one of them to give a license for the brand, leading to a rival multi million dollar KU DE TA club atop the Marina Bay Sands casino in Singapore.

A group of businessmen came up with the concept for and established the original KU DE TA beach club in Bali in 2000. It became the leading venue on this island. They had only a basic contract and various of them began registering trademarks with little consistency abroad. Some marks ended up in a company called Nine Squares run by several of the partners. Later on other businessmen secured a spurious license from Nine Squares and opened the club at the Marina Bay Sands.

Litigation started in 2010. One case involved whether the Singapore KU DE TA marks were held by their owner Nine Squares on trust for the original partners. If not it was argued they were invalid. There were also disputes elsewhere. The final appeal dealt with the strength and validity of the license to the club operator in Singapore.

Meanwhile the Singapore business and other KU DE TA trademarks had been acquired by LV Capital Asia the investment arm of LVMH, who announced extravagant global expansion plans for the brand. Rather curious of a leading brand owner, given the suspicious brand background.

The final appeal decision in late May ruled the license illegal and an earlier decision had ruled that the partners were the true owners of the trademarks. So the court found the Singapore club had infringed the partners trademarks and other rights. That will leads to a large damages claim and a large payment of their costs.

The Singapore club will be rebranded CE LA VI, a play on the French C'est La Vie.  The Hong Kong club due to open next month will also adopt the new name.  No doubt the investors carefully planned a fall back position were they to lose.
The KU DE TA owners should recover a lot of money, although their legal fees will have been extraordinary. Hopefully now the partners can rebuild this brand into the global business it perhaps deserves.




Wednesday, June 10, 2015

Philippines music collection society formally recognised.

Sound Recording Rights Society, Inc. - Soundsright Philippines

The accreditation of collecting societies in the Philippines has begun. The Sound Recording Rights Society or Soundsright, has now been accredited as a collective management organization by the Intellectual Property Office of the Philippines (IPOPHL).

Soundsright comprises a variety of record labels and are able to collect royalties for the commercial use of sound recordings on behalf of their copyright owners. The new Section No. 209 of the Intellectual Property Code sets out this right.

Soundsright president is Marivic Benedicto (from Star Recording/ABS-CBN Film Productions) and the is chair Ramon Chuaying (from Universal Records/PolyEast Records). Other Soundsright officers include Rene Salta (GMA Records), Alvin de Vera (Alpha Music) and Tony Ocampo (of Viva/Vicor Music).

Monday, June 8, 2015

Criminal copyright actions under the new Indonesian Copyright Law

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The new copyright law requires a formal complaint from a copyright holder. The debate around this centred around whether the police are capable of acting alone, without copyright holder input, given how complex offences are. A mass industry wide complaint now has been filed to try to get the police to act on a general basis.

A large number of general complaints have been made to the police about illegal copyright infringement of domestic copyrights. The complaints concern illegal infringement at Karaoke nightspots, through illegal downloads and illegal CD/DVD copies. The complaints have been made about infringing acts in cities across the country. Members of Parliamentary Commission 10 (which covers IPR issues) said they had reported the infringements in order to meet the requirement of the new Copyright law that formal complaints needed to be filed. They formally asked the Police Criminal Investigation team Bareskrim to act on these cases.

The police have stated that they are preparing to work with the Department for the Creative Economy on a task force to combat copyright infringement. Many local musicians and celebrities joined with the Recording Industry Association of Indonesia, the Artists and Singers & Songwriters Association of Indonesia, and the Indonesian Forum for Music to support this step.

As a result the obligation has now been placed on the police to investigate. Reading between the lines what has been filed is a set of general complaints with little evidence, but hopefully this is enough for the police to kick off their own investigations.  This will be a real police test. Can they effectively act on a general complaint, or do they need specific case by case evidence filed by the copyright holder?

Sunday, May 31, 2015

Criminal Copyright challenges in Indonesia

In response a request from the President for stronger enforcement against piracy in Indonesia, the new Chief of Police in Indonesia, Badrodin Haiti told the media last week that due to the changes in the Copyright law (which was amended in 2014) copyright infringement is now a complaint-based crime. Therefore the Police can no longer act alone in taking action against piracy. They need a formal complaint from the copyright owner before they can initiate enforcement action.

The Chief went on to say that there have not been any reports about copyright piracy recently. They had had internal discussions and the expressed the police readiness to combat piracy. Further discussion with the Ministry of Communications and Informatics (responsible for online enforcement) as well as the Creative Economy Agency (responsible for creative industries would follow.

The change in the nature of copyright crimes places a greater obligation on copyright owners to file complaints and prevents the police running their own cases. without reference to copyright owners (perceived to be a problem in the past). The copyright industries don't entirely agree on the best system. Some high profile mess ups were part of the reason some lobbied for a law change. Others wanted the police to maintain action on their own. 

We will see if the copyright industries start filing more complaints now. That will at the same time test whether the police are prepared to undertake cases without requiring payment.

Tuesday, May 26, 2015

Gilead under attack from Thai health activists

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Health activists in Thailand are pressuring the government to issue further compulsory licenses for medicines.  This time their focus is on hepatitis C a common corollary illness with HIV. A consortium of NGOs have banded together to lobby for the hepatitis C medicine sofosbuvir to be compulsorily licensed.  Gilead Sciences Inc has applied for a patent for this drug in Thailand but it is not yet granted (there is a long backlog of pharma patents in Thailand).  The NGOs argue the cost of the US drug firm’s hepatitis C medicine is US$1,000 per pill and a full treatment needs nearly 100 of these. Meanwhile Indian companies manufacture them for a fraction of this cost.

In late 2014 a similar group lobbied the government to prevent the grant of a patent to Gilead. Their strategy then was to argue that sofosbuvir's chemical ingredients were not novel.

Explaining the importance of sofosbuvir, spokesmen have said the drug is a radical improvement on previous treatments and can cure the disease within three months.  The Commerce Ministry and the Food and Drug Administration are now considering the issue.

This is a classic access to health vs innovator situation.It is also part of a wider campaign against Gilead in multiple countries.  NGOs are seeking to use multiple strategies to break the innovator's patent monopoly.  Whilst one drug might not matter, one can imagine that if they target all medicines, the likes of Gilead will be reluctant to keep producing new products.


Saturday, May 23, 2015

Thailand's 2015 Special 301 report

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In its Special 301 report this year Thailand was maintained on the Priority Watch list. There are concerns over a lack of government priority for IP enforcement and weak coordination among government entities despite the National IPR Center of Enforcement operating since in 2013.

Outside practical enforcement, issues are raised about the backlog of pending patent applications, widespread unlicensed software in the public and private sectors, growing Internet-based copyright piracy, rampant trademark counterfeiting, lengthy civil IPR proceedings and low civil damages, the protecting of unfair commercial use, as well as unauthorized disclosure, of test data generated to obtain marketing approvals for pharma and agrochem products, and finally extensive cable and satellite signal theft.
On one hand the report praises the new Customs Act that provides Thai Customs officers with ex officio authority to suspend and seize illegal goods in transit, as well as copyright law amendments to address unauthorized camcording. On the other it complains of poor laws relating to the lack of a much-needed landlord liability provision, inadequate protections against the circumvention of technological protection measures and unauthorized modification of rights management information, and unclear operation of ISP notice-and-takedown procedures.

The Special 301 Priority Watch List doesn't compare countries at the same level. The interesting comparison with Indonesia reads in Thailand's favour since many of the above are complex IPR issues most of which are not even discussed in relation to Indonesia, given that Indonesia faces much more fundamental problems. Thailand is a more developed market so the US expects a higher level of IPR protection.