With the rapid growth of internet use and the increasing dominance of online selling, efficient enforcement of intellectual property rights has become more cumbersome for brand owners. Any infringer equipped with the right technology can easily sell counterfeit goods on e-commerce platforms, and they can often evade responsibility by merely reposting listings or switching vendor names whenever they are challenged. In this environment, brand owners have found that it is rarely enough to simply request the takedown of infringing pages. Instead, tackling online infringement effectively and stopping the spread of counterfeit products means uncovering the true source, arresting the infringer, and seizing the goods to prevent them from being relisted entirely. Panasonic’s Success When the Japanese multinational electronics maker Panasonic discovered that fake batteries were being sold in Thailand through e-commerce websites, their first step was to send takedown requests to the platforms hosting the offending pages. However, the problem remained, with several of the counterfeit retailers shifting their advertising of counterfeit Panasonic goods to other posts. Tilleke & Gibbins thus helped Panasonic attack the problem at its root by seeking to uncover the true identity of the online sellers. We confirmed that the same infringing sellers were continuing to post counterfeit Panasonic items for sale, and during a preliminary investigation, we discovered that five online sellers even shared the same shipping address. Unsurprisingly, the address was a fake as well—our investigation team found that the given location had nothing to do with the Panasonic counterfeiting operation, and further investigation was required before the team found the hidden location of the real warehouse. We then shared the results of our investigation with the Economic Crime Suppression Division (ECD) of the Royal Thai Police to alert them to the true identity and address of the online infringer, and coordinated with them to conduct a successful raid action on May 18, 2021. The police seized and inspected 82,464 counterfeit Panasonic items and arrested the actual infringer, a Chinese national who confessed that he had brought over counterfeit Panasonic batteries from Shenzhen, China, to sell and distribute via online channels. He was then charged with possession of goods under a counterfeit trademark registered in Thailand, which is punishable by up to four years’ imprisonment, financial penalties of up to THB 400,000, or both. Based on the value of the goods seized in the raid, the damages amounted to more than THB 2.7 million (USD 86,800)—one of the largest seizures of Panasonic-branded counterfeit goods in the whole Asia-Pacific region. IP Enforcement in the Digital Age As this case shows, effective enforcement of intellectual property rights in the digital age requires a sterner course of action by brand owners. While takedown requests are a useful initial tool that can sometimes succeed, more and more trademark owners are finding that takedown requests on their own are insufficient for tackling online infringement, as many infringers respond by simply moving their goods to sell on different platforms. Instead, a thorough investigation that uncovers the root source of the counterfeit goods is a much more effective approach that can ultimately lead to the arrest of the infringer and prevent the sale and distribution of the infringing goods altogether.

Under current law, the term of protection for photographic works is 50 years from the work’s creation or first publication. The draft amendment of the Copyright Act extends this to be the lifetime of the author plus an additional 50 years. This change would put Thailand’s protection for photographic works in line with the WIPO Copyright Treaty, of which Thailand is getting ready to be a member. Online infringement: safe harbours and takedowns While the current Copyright Act provides injunctive relief against online infringement for copyright owners, together with an exemption from infringement liability for ISPs, the mechanism for doing so has proved ineffective. The new draft therefore replaces this mechanism with safe harbour provisions that exempt ISPs from liability for copyright infringement committed by users, as long as the ISPs comply properly – including by implementing the notice-and-takedown system. The draft provides a detailed definition of ‘service providers’ and divides ISPs into intermediary ISPs, caching ISPs, hosting ISPs, and search engine ISPs. The draft’s definition of ‘users’ of ISPs includes anyone who uses an ISP’s service (paying or otherwise). In order to be exempted from liability for copyright infringement for their provided services, an ISP must have explicitly announced (and complied with) a policy to terminate services to repeated infringers. ISPs must also adopt the notice-and-takedown system – a new addition by the draft. Under this system, which can be compared to the Digital Millennium Copyright Act in the US, copyright owners can send a notice of infringement (backed by evidence) to caching, hosting or search engine ISPs, informing them of any allegedly infringing data. An ISP that has been notified is required to immediately take down the allegedly infringing data, its references, and access points from their system – or block access. The ISP must then notify the user who posted the material to allow him or her to oppose its removal. If the user responds with a counter-notice, the ISP must notify the copyright owner and confirm with the copyright owner whether to bring the relevant data back onto the system or maintain the takedown. Anyone who falsely files an initial notice or counter-notice is liable for any resulting damages. Further details on the criteria, rules, and conditions for the notice and counter-notice procedures will come in additional regulations. Technological protection measures Technological protection measures (TPMs) are also defined more broadly in the draft, which identifies various TPM violations, prohibits providing services to circumvent TPMs, and imposes liability against manufacturers, sellers, or distributors of products, equipment, or services intended to circumvent TPMs. Exceptions for each type of violation still exist, but the draft narrows their scope by specifying that the exact exceptions will be enumerated in forthcoming ministerial regulations. This is a more targeted approach than the current Copyright Act, under which the exception to liability arising from TPM circumvention only refers back to the exceptions for copyright infringement. Takeaways The draft amendment to the Copyright Act indicates that copyright owners will have more up-to-date tools to tackle online copyright infringement, while the safe harbor provisions should be a boon to ISPs that comply with the law. By tracking the progress of this draft law and its subordinate regulations, these parties will be able to combat online copyright infringement in Thailand and lower their risk of liability. This article first appeared in Managing Intellectual Property.