Infringing streams - enforcement difficulties and recent US developments
Traditionally, copyright infringement consisted of the unauthorised reproduction and distribution of tangible copies of a copyrighted work, such as through bootleg CDs, videotapes, or DVDs. With the Internet, copyright infringement proliferated through the downloading and swapping of digital files, mostly copied music and movies.
The expansion of the Internet, increase in available bandwidth, improvement of computer processing capacity, and ability to stream large-file content globally added a new dimension to copyright infringement. Innumerable websites offer music, movies, and television programmes to users for streaming consumption.
In this environment of streaming infringements, copyright owners face legal as well as practical hurdles to enforce their copyrights against infringers. To bring an infringement action against an infringer, the copyright owner must know who that infringer is or at least who would be able to identify the infringer (e.g. from the Internet service provider, or ISP, of the website used for the infringement).
Unlike the user uploading or downloading files using traceable computers, the owners and operators of many of these websites are anonymous. The websites offer no contact information or other indication of their owners. In addition, many are stored on offshore servers that make the tracing of data streams and communication to the ultimate owner or operator difficult, in particular if the servers are located in a low-enforcement area.
Moreover, the ability to use innocent computers through invasive technology in the distribution of illegal material further complicates the effective pursuit of infringers. Internet technology and specialised Internet service providers permit an owner or operator of a website to obscure its identity and location. For example, service providers such as Domains-by-Proxy permit users to register a domain name while shielding the identity of the registrant in the WHOIS domain name registration database.
Under US law, the owner of an infringed copyright may obtain a subpoena against the ISP of an infringing website requiring the ISP to identify the operator of the website. However, this right is to no avail if the ISP is located outside the jurisdiction of a US court or the website is self-hosted by the infringer.
Since websites dedicated to streaming infringing material are often hosted offshore under other countries’ domain name registries (e.g. ‘.to’ extensions), the information may be difficult to obtain. And even assuming that the copyright owner receives an injunction or judgment for damages against the infringer in a US court, the enforcement will be problematic if the infringer is located offshore and has no assets in the US.
An additional obstacle can arise under US copyright law, which requires the owner of a copyright in a US work (e.g. a work first published in the US or, if unpublished, authored by a US citizen or resident) to register the copyright before initiating an infringement suit based on that copyright. This creates problems for media that are intended to be available instantaneously to end users.
For example, television stations with programming that is produced live or shortly before air-time, the prior registration requirement can pose an obstacle to an efficient protection of its copyrights against infringers that divert the station’s signals and stream the programming through an unauthorised website.
As a global problem, these types of streaming infringements require a global solution. International treaties, such as the Copyright Treaty of the World Intellectual Property Organization (WIPO), do not provide the procedural tools necessary to effectively combat cross-border streaming infringement. Until true global cooperation exists, national law has to step in to provide solutions.
The US government has started to take aggressive legislative and executive steps to address offshore streaming infringement. Using its powers to combat criminal copyright infringement, the Homeland Security Department’s Immigration and Customs Enforcement (ICE) agency began its ‘Operation In Our Sites’, an ongoing initiative against Internet counterfeiting and piracy.
“RATHER THAN CONCENTRATING ONLY ON THE SOURCE OF INFRINGING STREAMS, THE PROTECT-IP ACT ALSO TARGETS THEIR RECIPIENTS BY CUTTING OFF THE WEBSITES’ RELATIONSHIPS WITH CRUCIAL THIRD PARTY SERVICE PROVIDERS.”
The enforcement activities have engendered controversy in the Internet community but have resulted in numerous arrests and the seizure of more than 125 domain names of websites engaged in copyright infringement, the majority of which have been forfeited to the US government. These include websites directly offering infringing content as well as a website that linked to third parties’ unauthorised streams.
Additionally, in a white paper of March 2011, the Obama administration, emphasising the economic harm from online copyright infringement, highlighted the need for legislative changes to address online infringement. Subsequently, two bills to strengthen the law against streaming infringers were introduced in the US Senate.
SB 978 would extend criminal copyright infringement, which currently expressly mentions only infringing reproduction and distribution, to infringement by public performance, thus clearly targeting streaming infringements. More significantly, the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property (PROTECT-IP) Act of 2011 would give additional remedies to both the US government and copyright owners.
The PROTECT-IP Act applies to websites that have no significant use other than to engage in, enable, or facilitate the infringing reproduction, distribution, and public performance of copyrighted works. It is limited to websites with ‘non-domestic domain names,’ i.e. domain names whose top level domain registry and registrar are located outside the US.
The PROTECT-IP Act would permit the US Department of Justice to commence an action against the registrant of the domain of such website or the owner or operator of such website, or if the registrant, owner or operator cannot be found in the US, as an in rem action against the domain name.
In such an action, a court would be authorised to issue a court order with a temporary restraining order, a preliminary injunction, or a final injunction against the domain name of such website, its registrant, or the owner or operator of such website provided that the domain name is used within the US to access such website and such website conducts business directed to US residents and harms holders of US intellectual property rights.
Rather than concentrating only on the source of infringing streams, the PROTECT-IP Act also targets their recipients by cutting off the websites’ relationships with crucial third party service providers: operators of non-authoritative domain name servers that are necessary for proliferating the websites, financial service providers, Internet advertising service providers, and information locator tools, i.e. search engines.
It does so by permitting the court order to be served on such entities if they had been identified in the action, in which case the served entity would have the following specific obligations: (i) operators of non-authoritative domain name system servers would be obliged to take the least burdensome technically feasible and reasonable measures to prevent the domain name of the infringing website from resolving to such website’s Internet protocol address; (ii) financial transaction providers would be obliged to take reasonable measures to prevent, prohibit, or suspend any payment transactions involving US customers and such website; (iii) Internet advertising services would be obliged to take technically feasible and reasonable measures to prevent providing, or to cease making available, advertising to or for, or sponsored search results, links, or other placements providing access to, such website; and (iv) search engines would be obliged to take technically feasible and reasonable measures to remove or disable access or serve a link to such website.
The PROTECT-IP Act would offer a similar process and remedies to copyright owners whose copyrights have been infringed by such offshore websites, except that service of the court order, and requiring compliance therewith as described above, would be limited to financial transaction providers and Internet advertising providers.
Both SB 978 and the bill for the PROTECT-IP Act are currently pending in the US Senate. To become law, the bills have to be passed by the US Senate as well as the US House of Representatives and then signed by the president. In view of the current political climate, it is unclear whether the bills will receive a hearing or a vote, and their future in the current Congress is in question.
The bills were also received with sharp criticism in the Internet community. Nevertheless, they represent a step in the right direction to address a vexing problem for copyright owners that will only grow in the future, where content will be provided increasingly by streaming.
These bills may also serve as a signal to other countries to address the issue. Eventually, however, the international community must formulate a common approach. As long as the majority of countries do not have coordinated enforcement mechanisms, infringers can seek safe harbours in offshore areas and continue streaming copyright infringing material with impunity.
Heiko Burow is of counsel at Baker & McKenzie LLP. He can be contacted at: heiko.burow@bakermckenzie.com
