1 substitute speaker dr. wilfrido fernandez [email protected] tel. +59521 490608 asuncion -...

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SUBSTITUTE SPEAKERDR. WILFRIDO FERNANDEZ

[email protected]. +59521 490608www.zafer.com.pyAsuncion - Paraguay

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29 th. ANNUAL INTELLECTUAL PROPERTY LAW CONFERENCE

Shutting Down Rogue Websites: International and Domestic Solutions

Argentinian and Latin American Perspective

Santiago R. O’Conor | Partner

Buenos Aires - Argentina

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Growth of E-Commerce in Argentina

Source: CACE Prince Consulting / LA NACION2013 Facts on Argentina

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Source: CACE Prince Consulting / LA NACION2013 Facts on Argentina

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Argentina

IP Legal Framework in the fight against online counterfeiting and piracy

- Trademark Law Nr 22,362

- Copyright Law Nr 11,723

- TRIPS Agreement

- Paris Convention No specific law against online piracy

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Argentina: Present Scenario

Constant advance and growth of new technologies in the region.Great business opportunities Instant spreading of massive data and contents More and more participation of “non professional” citizens in the creation and spreading of contents Everyday increase of social networks. Difficulties in the fight against counterfeiting

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Two Rights Clashing?

FREEDOM OF SPEECH

INTELLECTUAL PROPERTY RIGHTSvs

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Liability of the ISP

No specific law on ISP liability (except for Chile: new Law Nr 20,435: FTA). Application of IP Laws and Civil Code articles on civil liability What liability shall be applied:

- Subjective: arts. 502/1109 CC.

- Objective: arts. 1113, 2nd. paragraph CC. Pending Supreme Court decision

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Iconic cases

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Iconic cases

Taringa case (publishing companies vs. website managers regarding infringement of Intellectual Property regulations): Web platform where millions of users share all kinds of content. Different sections: posts, shouts and communities. Contents: commented and rated by the community. Posts links to material uploaded by users registered in the web page.

Provides application allowing the report of contents infringing IP rights or strictly personal rights. Defendants were charged as owners of Wiroos S.R.L. It hired hosting services which offered anonymous users the possibility of sharing or downloading files for free.

Holding: appeal court upheld charges against owners of Taringa as accessories to the main crime. Attachment of money or property also upheld. Holding: operating a library of hyperlinks is the reason the page exists. This has allowed people to publish links so as to illegally download the work described by complainants... with the management of the defendants site failing to avoid the maneuver, thus facilitating the copies in question.Defense grounds of the defendants were rejected, such as: not possible to determine the content of the files uploaded when an average of 20.000 posts were made daily.

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Iconic cases

Cuevana case: (Preliminary investigation 4/2011 was initiated on December 20, 2011)

Disney Enterprises, Paramount Pictures, Columbia Pictures, Universal City Studios, Warner Brothers Entertainment Inc. and other vs Cuevana’s management responsible for the internet site regarding fraud of IP.Argentinean site distributing cinema and television production free.

Films can be watched online or downloaded to their own computers.Cuevana provides users hyperlinks to the other servers hosting the content.

Holding: Cuevana held liable for: a) illegal reproduction of TV shows, and b) illegal reproduction, live and in real time, of the official station LS82 TV, Channel 11, Telefé being its licensee and holder of rights.

Commentator’s opinion (Taki Georges Skiadas): 50% of Cuevana content titles of works owned by Motion Pictures Association of America; 98% of Cuevana material would be illegal since it was protected by copyrights.

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Iconic cases

Supreme Court of Justice ordered the proceedings to be sent to the Court of Cassation (issue of jurisdiction). Court of Cassation has to issue a final judgment regarding such issue.

Preliminary measure in Civil Court: ordering the pertinent ISP to immediately block the access of any internet user to resources of the website known as Cuevana, provided they required the reproduction or communication of audiovisual works “Falling skies, Bric, 26 people to save the world”.

In 2013 the Court of Appeals of the Federal Capital rejected a preventive blocking requested by HBO partners against Cuevana TV.

Allegedly the platform had broadcasted episodes of the series of “Epitafios” belonging to HBO partners.

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Iconic cases

Federal Court holding: it has not been yet been possible to ascertain whether Cuevana is a link based or content indexing website under the care of isolated users, or whether effectively, there are people who control it.

It is argued if it can be validly considered that administrators of a link based website only become effectively aware that contents protected by copyrights have been exchanged through the website when they are notified of such circumstance or else on the contrary, such administrators cannot seek relief by claiming an alleged lack of knowledge when the unlawful is notorious and evident.

Taringa issued an agreement in 2014 with the Argentine Book Chamber to jointly moderate the contents included in the website.

Conclusion: practice has shown that while this legal mechanism might minimize the impact of infringement they do not address the heart of the matter.

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Increase of Illegal and Countertfeiting Markets in Latin America

Argentina: “La Salada” and “Saladitas” markets.Biggest ilegal market in the world- USTR- European Union

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Increase of Illegal and Countertfeiting Markets in Latin America

Colombia: “San Andresitos” markets: Bogotá, Cali and other cities. Ecuador: “Bahia market” : Guayaquil and other cities. Paraguay: Ciudad del Este: Triple Frontier: Argentina, Brazil and Paraguay

Pharmaceutical products: Danger!

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Bills on ISP Liability

Capitanich bill (2006)

Jenefes bill (2009)

Pinedo bill (2011)

Obiglio-Pérez bill (2012)

Pinedo II bill (2013)

Amendments to the Civil and Commercial Codes

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Pinedo bill II (2013)

Definition of ISP.

Liability in case of knowledge

Effective knowledge through court ruling

Counterfeited party may obtain immediate precautionary measures

Jurisdiction

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Today’s Strategy of Enforcement

Effective use of IP Laws in Argentina Immediate reaction of Federal Courts On-Line Monitoring

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Balance

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Avoid Conflicts

Agreements with audiovisual producers.

- ID of content

- Registration of content

- Digital print

- Blockage of archives

- Notice and take-down systems

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Conclusions

Crisis of traditional patterns of IP rights Balance between freedom of speech and IP rights New frame business and IP rights ISP Liability IP EDUCATION and AWARENESS

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Thank you! ¡Muchas Gracias!

San Martín 663, Piso 9 | Buenos Aires | [email protected] | [email protected]

www.oconorpower.com.ar

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ADDITIONAL INFORMATION PROVIDED BY SUBSTITUTE SPEAKER

Mexico

Pending bill to amend copyright law

1-Preliminary measure ordering the ISPs to take down a website suspicious of violating copyrights.

2- Possibility to order the ISP to give information related to people suspected of being copyright infringers.

3-Regulate the preventive notices to users suspected of violation of copyrights.

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BrazilCitizen Watch do Brasil vs. Mercadolibre.com and Ebazar.com.br

(Judgment 2013/0074298-9 August 27th, 2013). Superior Court of Justice.

Issue: whether the on-line intermediary had infringed IP rights by operating the buying/selling web without the authorization of the titleholder. Intermediary had no direct involvement in the buying/selling operations.

Holding:

1. Virtual intermediation of selling and buying products is a species of the gender of content providers, since there is no editing, organization, or any other form of management of the information related to the goods inserted by the users.

2. It is not possible, under the excuse of difficulting the propagation of illicit or offensive content in the web, to harm the right of the society to information.

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3. When the virtual intermediary has been informed of the existence of offers of products with violations of IP rights, he must remove the add immediately, subject to the risk of responding solidarily with the author of the damage.

4. When a virtual service of this kind is offered, the intermediary must have the proper care of structuring means by which each one of the user can be identified. In that way infringements will not fall in anominity.

5. Within the standard of average diligence that is expected from a virtual intermediary, he must adopt the measures appropriate to the specific circumstances of each case, for the proper individualization of the site users, subject to the risk of incurring in subjective liability due to the guilt in ommitendo concept.

6. It cannot be imposed to intermediaries of buying/selling websites the previous control duty regarding the origin of all anounced products, since that does not constitute an intrinsec activity to the service rendered.

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Uruguay

3 ways to obtain jurisdiction:

Use of a Uruguayan ccTLD domain name

Use of the services of a Uruguayan ISP

Direct infringing activities performed in Uruguay

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Chile

ISP legislation: direct consequence of the FTA with the USA.The law limits the liability of ISP as far as damages provided that certain

conditions are met:

The service providers of data transmission will not be liable for data transmitted, provided that the ISP provider:

1. Does not modify or choose the content of the transmission

2. Does not begin the transmission

3. Does not choose the destinataries of the information

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Chile

The service providers that at the request of a user proceeds with the storage, by itself or through third parties, of data in its system or performs services of search, vinculation and/or reference to another site online, will not be considered responsible of such data being subject to storage, provided that:

1. They do not have effective knowledge of the illicit character of the data.2. They do not receive an economic gain directly from such infringing activity,

in the cases in which they have the right and the capacity to control such activity.

3. They publically assign a representative to receive the pertinent judicial notification and they take down in an expedite manner the access to the stored material.

The service provider will be deemed to have effective knowledge when the pertinent judicial Court has ordered the withdrawal of the data or the blocking of the access to them, the service provider being legally notified of such resolution and non-complying with it in an expedite manner.

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Additionally the service provider must:

1. Establish general and public conditions through which they can make use of the option to put an end to the contracts of providers of content, judicially qualified as reincident infringers of the rights protected by this law.

2. They do not interfere in the technological measures of protection and management of works protected, which are widely known and legally used.

3. They do not generate or choose the material or its destinataries.

Remark: Limitation only applies as far as damages. The ISP can still be subject of preliminary and other judicial measures.

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Accepta.com S.A. and others vs. South Consulting Signature S.A. and Google Inc. regarding unfair competition and IP infringement. (Third Civil Court of Santiago - Case Nr C-55530-2009)

South Consulting hired the “AdWords” service from Google and used as key words the registered trademarks of its direct competitiors (plaintiffs)

Holding: Google Inc. not liable for the content that has been uploaded in its web.

No liability of Google Inc. in relation to the content uploaded by the users, since Google only limits itself to make available to users a mass media channel.

South Consulting was held liable of unfair competition act.

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ADDITIONAL INFORMATION PROVIDED BY SUBSTITUVE SPEAKER (Mexico, Chile, Uruguay, Brazil)

Acknowledgements: Mauricio Jalife (Jalife, Caballero IP - Mexico)Gustavo Fischer (Fischer Abogados - Uruguay)Alfredo Montaner (Sargent & Krahn - Chile)Gabriel Leonardos (Kasznar Leonardos - Brazil)

MANY THANKS,

DR. WILFRIDO FERNANDEZ

[email protected]. +59521 490608www.zafer.com.py

Asuncion - Paraguay

1 substitute speaker dr. wilfrido fernandez [email protected] tel. +59521 490608 asuncion -...

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