The copyright law currently in effect in Thailand is the Copyright Act B.E. 2537 (1994), which came into force in March 1995. After 20 years, a new amendment came into effect in August 2015, with a focus on updating the law for the digital age, followed by a further amendment that became effective in March 2019 to comply with the Marrakesh Treaty providing exemptions to copyright infringement for people with disabilities. Recently, to comply with the World Intellectual Property Organization Copyright Treaty (WCT) and update practices in combating online infringement, the Thai Copyright Act has been amended once again. This article will explore the backstory behind this amendment, highlight the law’s successes and potential areas of concern, and explain what copyright owners, practitioners, and—most importantly—internet service providers (ISPs) should be aware of in order to comply with this law, which was published in the Government Gazette on February 24, 2022, and will become effective on August 23, 2022. The Backstory Despite the modernizing focus of the 2015 amendment, in recent years Thailand recognized the necessity of strengthening copyright protection and modernizing the law further to cope with online infringement problems fueled by today’s rapid technological change. Previously, the Copyright Act B.E. 2537 (1994), as amended in 2015, provided a specific mechanism to solve online copyright infringement. This mechanism, which appeared in Section 32/3 of the law, differed from the clearly defined notice-and-takedown system favored in several other countries by relying on the courts to resolve copyright infringement matters in relation to the provision on ISP liability and safe harbors. As the law did not include adequate notification procedures or rapid dispute resolution mechanisms, the implementation of Section 32/3 became impractical. In addition, the definition of an ISP was broad, so “mere conduit” (or intermediary) ISPs would often receive court orders to remove infringing content, even though, technically, most of them were not capable of doing so. As such, the limitation of liabilities or provision of “safe harbors” for ISPs under Section 32/3 was not practically feasible. The Department of Intellectual Property thus initiated amendments to this law, with the goal of enhancing copyright protection in accordance with the WCT, clarifying ISPs’ safe harbors, adopting a notice-and-takedown system, and revising provisions on technological protection measures Summary of the 2022 Amendments Two notable changes introduced by the amended act are simple: an extension of the term of protection for photographic works to be the author’s lifetime plus an additional 50 years after the author’s death (an increase from the previous term of 50 years from the work’s creation), and a provision allowing members of the Copyright Committee to stay on the committee past the end of their term if new members have not yet been appointed to replace them. However, a few other significant developments in the law are considerably more detailed. These are described below. ISP Safe Harbors The amended act classifies ISPs into four types: Intermediary ISPs, Caching ISPs, Hosting ISPs, and Search engine ISPs. In addition, the amended act clarifies that “users” of ISPs are legally defined as such regardless of whether payment is required. With these definitions established, the amended Copyright Act replaces the problematic Section 32/3 (described above) with a new section titled “Exemption of Liability of ISPs.” This newly drafted section sets out both general and specific requirements for ISPs to be exempted from liability for copyright infringement: General requirements: ISPs must have explicitly announced and complied with their policies to terminate service to users who are repeat infringers. This requirement applies to all types of ISPs as a general rule. Specific requirements: Each ISP must also comply with specific requirements based on its services and technical activities. Under the amended act, the obligation to remove data or block access is only for caching ISPs, hosting ISPs, and search engine ISPs. This clarifies that intermediary ISPs are not required to remove data from or block access to their systems. It is also clear that only hosting ISPs and search engine ISPs are required to provide channels for copyright owners to report infringing content. Notice-and-Takedown System The steps in the amended act’s notice-and-takedown procedure are as follows. Under the amended act, copyright owners can send a notice of infringement to inform hosting ISPs or search engine ISPs of allegedly infringing data. An ISP that has been notified must take down the data, its references, and any access points from their system, or block access, without delay. The ISP must subsequently notify the user who posted the allegedly infringing material to allow the user to oppose the removal by sending a counternotice to the ISP. If such a counternotice is received, the ISP then has to forward a copy of the counternotice to the copyright owner and notify the copyright owner that it will bring back the removed content or cease blocking the access within 30 days of receiving the counternotice. After the 30-day period ends, unless the copyright owner files a lawsuit against the alleged infringer/user, the ISP is required to restore the data or cease blocking access to it within 15 days. To prevent ill-intentioned filings, the amended act prescribes that anyone who files a false notice (such as one from someone other than the copyright owner) or false counternotice is liable for any damages arising from that action. Technological Protection Measures The amended act revises the definition of technological protection measures (TPMs), broadening the scope to refer to technology designed to protect the rights of a copyright owner or a performer (rights control), and technology designed to effectively control access to a copyrighted work or to a recording of a performance (access control). Therefore, the new definition covers both rights-control and access-control TPMs. In addition, the amended act revises the provision on TPM violations, defining any act rendering access-control TPMs ineffective as infringement of TPMs, and deleting the requirement of intention to infringe. As for the circumvention of rights-control TPMs, since it leads to actual copyright infringement activities, the circumvention is subject to higher

Attorneys from Tilleke & Gibbins’ intellectual property group in Bangkok have contributed the Thailand chapter to the recently published second edition of International Copyright Law: A Practical Global Guide. The updated edition of the book, which was first published in 2013, contains in-depth chapters on the legal framework for copyright from specialists in over 30 jurisdictions worldwide. The Thailand chapter was written by Ploynapa Julagasigorn, senior associate; Darani Vachanavuttivong, managing partner and managing director of the firm’s intellectual property group; and Suebsiri Taweepon, partner. The chapter outlines the types of work that can be protected, formalities for and duration of protection, rules relating to the ownership of copyright works, and infringement. The topics are as follows: Copyright treaties and conventions: Berne Convention and TRIPS Agreement. What can be protected: Work definition, criteria, and specific works. Formalities for protection: Thailand’s Department of Intellectual Property. Duration of protection: Literary, dramatic, musical, artistic, photographic, and audiovisual works; audio and video broadcasts; sound recordings; cinematographic work; applied art; and computer programs. Ownership of works: Initial ownership, commissioned works and works made in the course of employment, and assignment and licensing. Infringement: Primary and secondary infringement. Rights: Moral and performers’ rights. Defenses: Fair dealing/use, private use, internet safe harbors, temporary copying, and other key defenses. Enforcement of foreign copyright: Application of Copyright Act to works by foreign creators, judicial procedures, and penalties. International Copyright Law: A Practical Guide helps counsel and other professionals at multinational companies understand the varying copyright laws and practices in jurisdictions around the world, and is a resource for private-practice lawyers doing copyright-related intellectual property work. For more details, and to order the guide, please see the Globe Law and Business website. An excerpt from the Thailand chapter is available as a PDF through the button below.

The sale of counterfeit goods online is as damaging to government efforts and consumer safety as it is to the reputation of the e-commerce platforms and brand owners involved. In this guest piece, Andy Chua, senior vice president of the IP Rights Protection Team at e-commerce giant Lazada, joins Tilleke & Gibbins’ Suebsiri Taweepon and Ploynapa Julagasigorn to discuss how stakeholders can work together to combat the growing threat of counterfeits online – with recent efforts in Thailand a prime example of effective action. This article, which was first published in World Trademark Review, is the second in a two-part series about trademark enforcement against online counterfeits.   Technological developments, government policy and the covid-19 pandemic have brought about significant changes to the lifestyle and behaviour of ordinary consumers. Shopping increasingly takes place on e-commerce platforms as people become more familiar with online transactions, encouraging many sellers to turn their focus to online platforms. While this shift to online retail has brought benefits for many, it has also provided additional ways for sellers of counterfeit goods to peddle their wares. The sale of counterfeit goods online tarnishes the reputation of e-commerce platforms among users, compromises consumer trust in brand owners’ products and undermines public authorities’ efforts in enforcing anti-counterfeiting policies. This dynamic problem cannot be resolved by a single entity alone. Instead, all stakeholders need to work together to amplify their efforts in consumer and brand protection. Collaborating against counterfeits in Thailand We see such collaborations between stakeholders in regions such as Thailand, where the Department of Intellectual Property (DIP) has signed a memorandum of understanding (MOU) with various parties that are committed to combatting the spread of counterfeit products online. The inaugural signing ceremony for the MOU was held on 11 January 2021, with 20 initial signatories drawn from the public sector (eg, the DIP, the Department of Business Development and the Department of International Trade Promotion), rights holders, e-commerce platforms (including Lazada) and law firms (including Tilleke & Gibbins). Since the ceremony, signatories have been actively participating in activities to ensure the effectiveness of the MOU. The first meeting of members was held on 11 March 2021, where members had the opportunity to: share information on infringement activities; collaborate in monitoring and reporting counterfeit products across online platforms; encourage and work towards the adoption of a standard cross-platform reporting system; and discuss obstacles and solutions in pursuing counterfeiters. By the time of the follow-up meeting on 19 July 2021, a further 10 stakeholders had signed the MOU. At this meeting, members discussed the information that should be required from sellers to register on platforms and the terms that should apply between platforms and sellers. They also discussed strategies for raising public awareness of IP infringement and shared crucial information on successful anticounterfeiting cases. In October 2021, a focus group of IP owners, law firms and online platforms met to discuss the reporting systems of different platforms, building on the challenges to effective enforcement identified at the previous meetings. Members discussed the IP infringement reporting systems that they use, listing all the documents that are required by each platform and identifying the need to set standard practices for all online marketplaces in Thailand. The DIP has been entrusted to coordinate with stakeholders to develop guidelines on standard reporting systems. The guidelines will allow users to easily understand and comply with the requirements of any platform, making it much easier for users to work with platforms to protect their IP rights online. Panasonic case yields positive results through cooperation Close collaboration between e-commerce platforms, brand owners, law firms and government authorities led to several successful anticounterfeiting activities over the course of 2021. A prime example of this was the successful raid of more than 80,000 counterfeit Panasonic batteries on 18 May 2021. The case began when Panasonic, which had been monitoring online marketplaces, found suspected counterfeit products being sold on the Lazada platform by several shops sharing the same address. An investigation was opened, and Lazada worked closely with Panasonic to help identify the infringers. Tilleke & Gibbins then assisted Panasonic in locating and identifying the stockroom containing the counterfeit goods and in coordinating with government officers. This collaboration led to a raid action by the Thai Police Economic Crime Suppression Division and the seizure of more than 80,000 counterfeit Panasonic batteries – the largest-ever seizure of Panasonic products in the Asia-Pacific region. The cooperation between Lazada, Panasonic, Tilleke & Gibbins and the Thai enforcement authorities resulted in the successful removal of these counterfeit products from the market to the benefit of platforms, brand owners and consumers alike. Looking ahead While much has been achieved, there are still several significant challenges to combatting IP infringement online. The sale of counterfeit goods on social media, for example, remains a major issue, highlighting the need for social media companies to become signatories of the DIP’s MOU. Another problem is the way in which infringers obscure their identities by registering fake information with the platforms on which they operate. Rather than taking down individual webpages, brand owners must be able to identify stockrooms in order to uproot counterfeiters completely. E-commerce platforms, IP owners, law firms and government authorities are continuing to work together to identify and develop solutions to these issues. In spite of the challenges, close and active collaboration between these stakeholders will pave the way to making the Internet uninhabitable for counterfeiters.

Intellectual property experts from Tilleke & Gibbins were engaged by ARISE+ IPR, a regional support program funded by the European Union and implemented by the European Intellectual Property Office, to craft a series of IP enforcement guides for Southeast Asian countries, aimed at raising local awareness of the importance of IP protection. The five-year, EUR 5.5 million ARISE+ IPR program supports regional integration through IP cooperation and aims to upgrade national IP systems for creation, protection, utilization, administration, and enforcement to be in line with international best practices and standards and the strategic objectives of the ASEAN Intellectual Property Rights Action Plan 2016-2025. The guides were developed by Tilleke & Gibbins’ lawyers in cooperation with the IP offices of each participating country, and cover issues related to trademarks, industrial designs, and geographical indications. Each guide was produced in a compact leaflet form in English as well as the local language, and is considered an official publication of the respective national IP office. The guides can be accessed from the ARISE+ IPR site (under “Leaflets, brochures and booklets”), or by clicking on the links below: Cambodia: English | Khmer Indonesia: English | Bahasa Indonesia Thailand: English | Thai Vietnam: English | Vietnamese