Matt Murphy

Raising the bar part 6: Customs raises the bar with improved mechanisms for copyright enforcement

Matt Murphy

10 April 2013

Copyright Trade marks

In Part 5 of our series on the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Raising the Bar) we discussed the improvements to the mechanics for enforcement of trade mark rights. Similar amendments have also been introduced into the Copyright Act through the Raising the Bar amendments and are discussed in this blog.

 

The existing system

 

The existing ‘notice of objection’ scheme for Customs seizures allows copyright owners (objectors) to lodge a notice of objection with Customs identifying imported copies that may infringe their copyright. Customs may then seize copies suspected of infringing the owner’s copyright and provide a notice of seizure to the importer and the objector. The objector has 10 working days from a date specified in the notice of seizure to institute and serve infringement proceedings against the importer. If the objector does not institute infringement proceedings within those 10 working days, the seized copies are returned to the importer.

 

One of the difficulties with the existing system is that it may take more than 10 working days for a copyright holder to identify and serve infringement proceedings on the importer of the alleged infringing copies – particularly where the importer is taking steps to evade service.

 

Raising the Bar – New claim for release process

 

The key change in the new Raising the Bar provisions are the introduction of a new process which obliges the importer to make a ‘claim for release’ of the seized copies to Customs within the prescribed ‘claim period’, being 10 working days, if the importer wishes to recover the seized copies. If an importer fails to lodge such a notice within time (subject to a discretionary exception detailed below), the seized copies are forfeited to the Commonwealth.

 

To resolve the difficulties encountered with the existing system and any evasion of service of infringement proceedings, any claim for release by an importer must include prescribed information including (among other things) an address for service of legal process. Existing provisions under the Commonwealth Criminal Code (see ss137.1 and 137.2) provide that it is an offence to provide false or misleading information or documents to Commonwealth entities, including Customs. Those provisions are strict liability provisions which carry a potential for imprisonment for up to 12 months in the event of a contravention. It is intended that the potential for imprisonment will act as a deterrent against importers providing a false address for service of proceedings.

 

If the importer does make a claim for release of the seized copies, Customs must notify the objector, who must then institute infringement proceedings within 10 working days of receipt of the notice from Customs. Customs will release the seized copies to the importer if

  • the objector consents;
  • the objector does not institute infringement proceedings within the ‘action period’; or
  • where infringement proceedings are instituted, a court does not within 20 working days order Customs to retain the copies.

An importer must collect seized copies within 90 days of release or else those copies will be forfeited to the Commonwealth and ultimately disposed of.

 

Other improvements to the Customs seizure scheme

 

In addition the Raising the Bar provisions also:

 

  • allow Customs to provide the objector with information about persons in Australia or overseas who made arrangements for the copies to be imported (i.e. exporter/consignor) – providing copyright owners with information to assist in taking action against the source of the infringing copies;
  • allow the objector to inspect or remove multiple samples of seized copies – reducing the risk of importers avoiding proceedings by importing mixed consignments of both legitimate and infringing copies and the copyright owner (by chance) inspecting only a single legitimate copy.

 

The Raising the Bar provisions also introduce some protections for importers:

 

  • allowing Customs to accept late claims for release where it is reasonable (late claims are possible as Customs is not to dispose of copies forfeited for a failure to make a claim for release until 30 days after their forfeiture).
  • a person may have a right to compensation from the Commonwealth for disposal of forfeited copies (equal to the market value of the copies) where the copies did not infringe the objector’s copyright, the person was the owner of the copies, and there was a reasonable excuse for failing to make a claim for release.