Copyright Litigation

UntitledCopyright Litigation The first edition of this publication aimed to provide
practical guidance to anyone involved in multi-jurisdictional
copyright litigation. This second edition has been updated
to include more topical issues such as liability of internet
service providers and protection of computer software.
Laws and procedures regarding copyright are so different
worldwide, that endless opportunities for forum shopping
exist both when bringing a claim for infringement or when
countering a third party’s claim. This book is intended as an
easy reference guide to the differing regimes in some of the
world’s most important jurisdictions.
After the great success of our two previous books, Patent
Litigation and Trade Mark Litigation, we were proud to be
able to include a record number of top level contributors.
Foreword Thierry Calame, Lenz & Staehelin & Massimo Sterpi,
Studio Legale Jacobacci & Associati
Pinheiro Neto Advogados
Ecuador Santiago Mosquera Alcocer & Mario Ruiz Fernandez Falconi Puig Abogados
Finland Mikko Manner & Tiina Komppa Roschier, Attorneys Ltd.
France Jean-Mathieu Bertho, Olympe Vanner & Alexia de Maulde Jacobacci Avocats
Germany Albrecht Conrad & Fabian Seip Hengeler Mueller
Greece Alkisti-Irene Malamis & Ioanna Charalabous Malamis & Associates
Hong Kong Charmaine Koo Deacons
India Dhruv Anand & Tanvi Misra Anand and Anand
Italy Massimo Sterpi & Angela Tasillo Studio Legale Jacobacci & Associati
Japan Masao Torikai, Koichi Nakatani & Koji Ohe Momo-o Matsuo & Namba
Malaysia Karen Abraham Shearn Delamore & Co.
Malta Dr. Luigi A. Sansone Salomone, Sansone & Co.
Mexico Luis Schmidt Olivares
The Netherlands Michiel Rijsdijk Arnold + Siedsma
Singapore Regina Quek One Legal LLC
South Africa Herman Blignaut Spoor & Fisher
South Korea Jay (Young-June) Yang, Chang-Hwan Shin & Nayoung Kim Kim & Chang
Spain Iban Díez López & Jaime Bello Ayala Gómez-Acebo & Pombo
Sweden Håkan Borgenhäll & Tobias Kempas Advokatfirman Vinge KB
Switzerland Thierry Calame & Peter Ling Lenz & Staehelin
Thailand Nandana Indananda, Suebsiri Taweepon & Hassana Chira-Aphakul
Tilleke & Gibbins
United States Jonathan D. Reichman, Maria Luisa Palmese & Abhishek Bapna
Kenyon & Kenyon, LLP
Vietnam Linh Thi Mai Nguyen & Loc Xuan Le Tilleke & Gibbins
General Editors: Thierry Calame, Lenz & Staehelin & Massimo Sterpi, Studio Legale Jacobacci & Associati
Copyright Litigation Jurisdictional comparisons Second edition 2015
SECOND EDITION
General Editors: Thierry Calame, Lenz & Staehelin
& Massimo Sterpi, Studio Legale Jacobacci & Associati
General Editors:
trading as Sweet & Maxwell
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ISBN: 9780414035249
Thomson Reuters and the Thomson Reuters logo are trademarks of Thomson Reuters.
Crown copyright material is reproduced with the permission of the Controller of HMSO and the
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While all reasonable care has been taken to ensure the accuracy of the publication, the publishers cannot
accept responsibility for any errors or omissions.
This publication is protected by international copyright law.
All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any
means, or stored in any retrieval system of any nature without prior written permission, except for permitted
fair dealing under the Copyright, Designs and Patents Act 1988, or in accordance with the terms of
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Contents
Contents Foreword Thierry Calame & Massimo Sterpi 1
Brazil José Mauro Decoussau Machado & Matheus Chucri dos Santos 3
Pinheiro Neto Advogados
Ecuador Santiago Mosquera Alcocer & Mario Ruiz Fernandez 61
Falconi Puig Abogados
Jacobacci Avocats
Hong Kong Charmaine Koo Deacons 155
India Dhruv Anand & Tanvi Misra Anand and Anand 183
Italy Massimo Sterpi & Angela Tasillo Studio Legale Jacobacci & Associati 201
Japan Masao Torikai, Koichi Nakatani & Koji Ohe Momo-o Matsuo & Namba 223
Malaysia Karen Abraham Shearn Delamore & Co. 241
Malta Dr. Luigi A. Sansone Salomone, Sansone & Co. 269
Mexico Luis Schmidt Olivares 291
The Netherlands Michiel Rijsdijk Arnold + Siedsma 309
Singapore Regina Quek One Legal LLC 327
South Africa Herman Blignaut Spoor & Fisher 351
South Korea Jay (Young-June) Yang, Chang-Hwan Shin & Nayoung Kim 375
Kim & Chang
Spain Iban Díez López & Jaime Bello Ayala Gómez-Acebo & Pombo 391
Sweden Håkan Borgenhäll & Tobias Kempas Advokatfirman Vinge KB 411
Switzerland Thierry Calame & Peter Ling Lenz & Staehelin 433
Thailand Nandana Indananda, Suebsiri Taweepon & Hassana Chira-Aphakul 459
Tilleke & Gibbins
United Kingdom Nicola Dagg Allen & Overy LLP 479
United States Jonathan D. Reichman, Maria Luisa Palmese & Abhishek Bapna 509
Kenyon & Kenyon, LLP
Vietnam Linh Thi Mai Nguyen & Loc Xuan Le Tilleke & Gibbins 527
Contacts 547
Foreword Thierry Calame, Lenz & Staehelin & Massimo Sterpi, Studio Legale Jacobacci & Associati
COPYRIGHT IS THE NEW STEEL In recent years, copyright has taken a central role in the global economy.
Creativity, once the elitist domain of artists, has become the bread and
butter of daily life. Anyone posting a comment or a snapshot online can be
an author for copyright purposes. In addition, virtually every digital start-up
is based on copyrightable contents, such as graphic design, texts, images or
music.
In the job market, what counts is no longer the physical energy of
the worker, but rather his creativity. At the same time, trying to enlarge
copyright protection for new forms of creations – such as programme
formats, culinary recipes or fragrances – is a growing trend.
In such a scenario, copyright takes a fundamental role in protecting one’s
creativity, and often becomes the basis for one’s success.
At the same time, another form of copyright protection becomes
increasingly relevant, namely that afforded to databases. When data mining
represents an essential prerequisite in decision-making processes, ownership
of data becomes the new source of power.
However, circulation and distribution of content also raises serious and
yet unresolved issues. Can an Internet Service Provider, who not only takes
advantage of the circulation of content but is often actively involved in
shaping such circulation, avail itself of exemptions of liability for underlying
copyright infringements? Where should the limits be drawn between
hosting, granting access to and transporting (infringing) content on the one
hand and active participation in the content distribution on the other?
Finally, projects of massive appropriation and distribution of content
(such as the scanning of entire libraries) increase the conflict between the public interest to access knowledge and the rights of the authors, originally
created to enable authors to live off their creations.
A rising source of power, copyright is the steel of the current world
economy.
Thailand Tilleke & Gibbins Nandana Indananda, Suebsiri Taweepon & Hassana Chira-Aphakul
1. SOURCES OF LAW 1.1 What are the principal sources of law and regulation relating to
copyright and copyright litigation?
Thailand is a civil law jurisdiction. The principal legal sources are acts,
statutes and regulations. The principal source of law relating to copyright is
the Copyright Act B.E. 2537 (1994). As a civil law country, Thai courts will
interpret and apply existing law according to the intent of the legislative
drafters. Accordingly, the court is not bound to follow the reasoning used in
precedents; however, they can be used as a reference on a case-by-case basis.
International agreements protecting copyright of which Thailand is also a
member include the Berne Convention for the Protection of Literary and Artistic
Works and the TRIPS Agreement. Thailand, thus, is bound to protect copyright
works of member countries of both international agreements. However, Thailand
is not a signatory to the Rome Convention of 1961 or the Universal Copyright Convention. Therefore, only persons with unpublished works who are nationals,
subjects or residents of a country party to the Berne Convention, and those
whose works were first published in such a member country may claim copyright protection in Thailand, provided certain conditions are met.
1.2 What is the order of priority of the relevant sources, ie which takes
precedence in the event of a conflict?
The Thai system of jurisprudence is dualistic. The fact that Thailand
has entered into a treaty or convention with a foreign country does not
automatically give the provisions of that treaty or convention the force of law
within Thailand. Treaties are not law in Thailand until they are made law by
legislative enactment, such as an act, royal decree or ministerial regulation. In
accordance with principles set out in the Act on Conflict of Laws, foreign law may serve as the law governing a particular case. It must, however, be proved
to the satisfaction of the court that the foreign law is not contrary to public
order or good morals; otherwise the court will apply Thai law.
2. COURT AND ADMINISTRATIVE SYSTEM 2.1 In which courts are copyrights enforced? Are they specialised
copyrights courts? If not, what level of expertise can a copyright holder
expect from the courts?
Copyrights are first tried in the Intellectual Property and International Trade (IP and IT) court. The Act for the Establishment of and Procedures for
Intellectual Property and International Trade Court B.E. 2539 (1996) provides
Thailand
460 EUROPEAN LAWYER REFERENCE SERIES
the IP and IT court with jurisdiction over all civil and criminal cases with
respect to intellectual property. The IP and IT court was established in 1997
as an additional court of first instance, to consider intellectual property and international trade disputes. All cases appealed from the IP and IT court will
be appealed directly to the Supreme Court.
2.2 Is there any administrative body (eg a copyright office)? If so, does
it have any jurisdiction in copyright litigation?
The Department of Intellectual Property (DIP) was established in 1992. It assumed
responsibility for the administration of intellectual property from the Department
of Commercial Registration. The DIP does not have jurisdiction in copyright
litigation; however, it provides mediation and settlement services for intellectual
property disputes which can be filed before bringing cases to the courts.
2.3 To what extent are courts willing to consider, or are bound by, the
opinions of other national or foreign courts that have handed down
decisions in similar cases?
Under the Thai judicial system, the courts are not bound by prior court rulings when deciding an issue under the Copyright Act or any other Thai law for that
matter. Every case brought before a Thai court is subject to the judge’s discretion
of the plain meaning of the applicable laws. However, published Supreme Court
decisions are an important part of the legal development of Thailand and are
frequently used as secondary authority. Likewise, a foreign court’s decision may
be submitted merely as one piece of evidence in a certain case. The Thai court
still has discretion regarding whether to consider such foreign decision.
2.4 Who can represent parties before the courts handling copyright
litigation?
Only an attorney-at-law who has acquired an attorney’s licence and has
registered with the Lawyers Council of Thailand can represent parties before
the courts handling copyright litigation.
2.5 What is the language of the proceedings? Is there a choice of
language?
The proceeding must be conducted in Thai. However, for copyright cases, if the
documents submitted to the IP and IT court are in English and the parties agree
that all or any part of such documents need not be translated into Thai, the
court may permit the parties to submit such documents as evidence in the case
without translation. However, this is contingent on the court’s determining
that such documents are not evidence on the main issues of the case.
3. SUBSTANTIVE LAW 3.1 What types of works are copyrightable under your law? Does your
national law provide for a closed list of copyrightable works or for an
open list?
Under the Copyright Act B.E. 2537 (1994), there are nine categories of works of authorship which are copyrightable:
Thailand
• literary works (including computer programs); • dramatic works; • artistic works; • musical works; • audiovisual works; • cinematographic works; • sound recordings; • sound and video broadcasting; and • other works in the literary, scientific or artistic domain.
A work is also required to meet four elements as follows: expression of idea;
expression in a recognised work; originality and non-illegality. The copyright
protection for some works may also overlap with the protection granted by
other fields of intellectual property law such as trade mark and design patent. Nevertheless, copyright protection does not extend to ideas, procedures,
processes, systems, methods of use, operations, concepts, principles,
discoveries, or scientific or mathematical theories. In light of the above, the Copyright Act generally provides a closed list of
copyrightable works.
3.2 Is software considered copyrightable under your law?
Computer software is copyrightable as a literary work under the Thai
Copyright Act B.E. 2537 (1994).
3.3 Does the author of a work have to be a national of your country
for the work to qualify as copyrightable or does a work qualify for
copyright protection irrespective of the nationality of the author?
Thailand, with its accession to the Berne Convention, Paris Act (1971), adopts
the Act’s criteria for both domestic and international protection of copyright.
Section 8 of the Thai Copyright Act B.E. 2537 (1994) states the requirements
regarding nationality as follows:
‘The creator shall be entitled to copyright protection in the work he has created
under the following conditions:
i. For unpublished work, the creator must be a Thai national or a resident
of Thailand, or a national or resident of a member country of an international
convention on the protection of copyrights of which Thailand is also a member,
during the entire time or most of the time of the creation of the work;
ii. Where the work has been published and the initial publication was made in
Thailand or a member country of an international convention on the protection of
copyrights of which Thailand is also a member, or where the initial publication was
made outside Thailand in a non-member country of an international convention on
the protection of copyrights of which Thailand is a member, if the publication in
Thailand or in a member country of an international convention on the protection
of copyrights of which Thailand is a member occurs within 30 days of the initial
publication or if the creator has the characteristics specified in (i) at the time of the initial publication. Where Thai nationality is a requirement and the creator
is a juristic person, such juristic person must be incorporated under the laws of
Thailand.’
Thailand
The term ‘an international convention on the protection of copyrights
of which Thailand is also a member’ in this provision includes the Berne
Convention and TRIPS Agreement. Moreover, as per sub-section (ii), the
actual first publication may be made outside Thailand, including in a country that is a member of the Berne Convention or TRIPS. It is deemed
to be the first publication if the subsequent publication agreements – Berne Convention or TRIPS – are made within 30 days from the actual first publication.
3.4 What types of rights are covered by copyright? To what extent are
moral rights covered by copyright?
Copyright consists of a set of exclusive rights. Generally, these are the rights
solely given to the copyright owner to exclude others from doing the same
acts which the copyright owner is entitled to do, stated as follows:
(i) reproduction or adaptation;
(ii) communication to public;
(iii) letting of the original or the copies of a computer program, an
audiovisual work, a cinematographic work and sound recordings;
(iv) giving benefits accruing from the copyright to other persons; (v) licensing the rights mentioned in (i), (ii) or (iii) with or without
conditions with the provision that the said conditions shall not unfairly
restrict the competition.
public are conventional rights within the concept of copyright. Letting
of the original or copies of a computer program, an audiovisual work, a
cinematographic work, or a sound recording is a new right recently proposed
in TRIPS and adopted by the 1994 Act.
The present Copyright Act recognises moral rights covering the right of
paternity and the right of integrity. The author of the copyright work is
entitled to identify himself as the author and to prohibit the assignee or
any person from distorting, shortening, adapting, or doing anything against
the work to the extent that such act would cause damage to the reputation
or dignity of the author. When the author has died, the heir of the author
is entitled to litigation for the enforcement of their right through the term
of copyright protection unless otherwise agreed in writing, as stated in the
Copyright Act. The moral rights particularly protect the author’s fame or
dignity when they are no longer the copyright owner.
3.5 What defences are available to an alleged infringer? To what
extent can ‘fair use’ or ‘fair dealing’ be used as a defence? If these
doctrines do not exist, are there any comparable limitations?
An alleged infringer shall not be deemed to infringe if the act does not
conflict with a normal exploitation of the copyright work by the owner of the copyright and does not unreasonably prejudice the legitimate right of
the owner of the copyright. Thailand has no direct legislation on doctrine or
defences of ‘fair use’ or ‘fair dealing’.
Nevertheless, in accordance with the Berne Convention and the TRIPS
Thailand
EUROPEAN LAWYER REFERENCE SERIES 463
Agreement, the Copyright Act provides the similar fair use defences as the
implied three-step test. Therefore an act shall not be considered as copyright
infringement when it consists of the following three principles:
• any certain acts as stated in the Copyright Act section 32 paragraph 2, subsections (1) to (8);
• any acts which do not conflict with normal exploitation of the copyright work by the owner; or
• any acts which do not unreasonably prejudice the legitimate right of the owner.
Generally, section 32 provides for the three-step test doctrine by separating
the first step from the second and third steps. This leaves room for the second and third steps, without the first, to be used as a general provision on fair use. To date, there is no court case directly confronting the matter.
3.6 Are compulsory licences available? If so, under which
circumstances?
Compulsory licences are not available under the Thai Copyright Act B.E.
2537 (1994). However, the Act grants the Director-General of the Department
of Intellectual Property the right to permit the use of a copyrighted work
which has already been disseminated to the public in print or other similar
form to any Thai national for use in study, teaching or research, which are
for non-profit purposes. The petitioner must make a request to the Director- General and show evidence that he or she has requested permission from the
copyright owner to use the copyrighted work for translating into Thai or for
reproducing a copy of the work previously translated and printed into Thai,
but was refused or an agreement could not be reached within a reasonable
period of time. Upon receipt of the request, the Director-General will have both parties reach an agreement on the matters of compensation and
conditions for use of the copyright.
3.7 Is there a requirement of copyright registration? Is copyright
registration required to enforce a copyright, ie to obtain damages or
other relief? Is a copyright deposit…