IP Developments in Beijing

The newsletter of the Beijing Intellectual Property Institute (www.bipi.org) reports the following related developments in Beijing in its January 2014 edition:

First, due to the rapid increase in IP cases in the Beijing Number 1 Intermediate Court, particularly IP cases involving patent and trademark validity, the Beijing Intermediate Court will split its Intellectual Property Tribunal in two.  The number one IP Tribunal will primarily hear trademarks and unfair competition cases, while the slightly smaller number two IP tribunal will primarily hear patent and copyright cases.

Second, it is also reported that the Beijing courts have been hearing more IP cases, and that their share of the national docket is about 10%.  First instance cases increased from 4,748 cases in 2008 to 11,305 in 2012, and increase of nearly 150%.  Copyright cases represented about half the total.  

It is my hope that this division of the courts will increase expertise and efficiency, as this court likely hears the most foreign IP cases of any court in China.  The reason: foreigners are a small percentage of the total civil IP docket, but a large share of the administrative docket involving appeals from the patent and trademark offices.  

Although Beijing represents “only” 10% of China’s IP docket, it has an outsized influence on foreigners, with the Beijing Intermediate Court likely hearing well over 50% of foreign-related IP cases. 

 Here is a chart of the Beijing IP court system, from the BIPI newsletter:

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USPTO China Position Open for Applications

The US Patent and Trademark Office has posted an Attorney Adviser position on Chinese IP matters.  The position is open for applicants now and closes January 30, 2014. 

The position is open to US citizens.  It involves assisting the the Senior Counsel for Policy-China in the Office of Policy and International Affairs (OPIA), and the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO.

More specifically, the successful applicant will manages a collection of resources related to intellectual property and innovation issues in China, and will also monitor new developments and conduct on-line research using Chinese and foreign sources.  The position also involves researching, coordinating and supporting analyses of Chinese intellectual property issues by analyzing existing data, developing an effective platform for aggregating IP-related data, and determining where additional data may be needed.

Requirements also include a law degree, a minimum of one year relevant legal experience, the ability to conduct research in Chinese, and experience in conducting data-driven analysis of IP trends in China by analyzing current patent, trademark, and copyright trends in China, Chinese IP trends in the U.S. market, IP acquisitions, and other statistical data.

The specific requirements for the position are found at: https://www.usajobs.gov/GetJob/ViewDetails/359405600.

Here is a recent speech on USPTO’s activities in China, which mentions its efforts to collect statistical data: http://www.uspto.gov/news/speeches/2013/rea_fordham_china.jsp.

 

 

Trademark Law Implementing Regulations Open for Public Comment by SCLAO

Since the Trademark Law was passed last year, the State Administration for Industry and Commerce had solicited comments from trademark agents, experts and other third parties in August and September 2013, and more recently from the full range of affected Chinese government agencies and local governments.  

SAIC has now delivered a draft of the revised Trademark Law Implementing Regulations to the State Council Legislative Affairs Office, which has made a  draft and comments on the draft  available on line in Chinese.   According to the proposed calendar, the final Implementing Regulations will go into effect the same date as the revised Trademark Law (May 1, 2014).   

There is much in the draft that merits further study, including provisions dealing with sound marks, trademark examination, regulation of trademark agents, and third party liability for trademark infringement.   Comments are due by February 10, 2014.

Top 10 Internet “Sword” Piracy Cases For 2013

On December 30, the National Copyright Administration of PRC (NCAC), together with the National Internet Information Office, the National Internet Information Office , the Ministry of Industry and Information Technology (MIIT), and the Ministry of Public Security (MPS), held a briefing on the achievement of “Sword Network Campaign” for 2013 (Jian Wang Xing Dong, 剑网行动), which dealt with internet copyright piracy.

 During this special operation, a total of 512 complaints and reports from all over the country have resulted in 190 administrative cases and 93 (presumably criminal) judicial cases.  In addition, 137 sets of servers and related equipments were confiscated, and 201 websites were referred to MIIT for shut-down.

The cases show an increasing sophisticated by China’s administrative agencies in handling the complex challenges posted by on-line infringements.  In particular, the cases showed increasing use of cross-provincial cooperation, cooperation with agencies such as public security, procuratorate and MIIT, and an increasingly active role for local “cultural task forces”.  Enforcement agencies took steps to shut down or confiscate servers, pursue third parties who provided payment services, and work on cases which an international element.  Companies that might otherwise be viewed as local “champions”, such as Baidu and Taobao were not immune from enforcement actions.  Less traditional forms of infringement, such as infringement of the copyright in industrial standards were pursued as well.  The cases also demonstrate a geographic breadth, which is no doubt due to the augmentation of the administrative copyright authorities’ personnel with support from numerous other national and local agencies.

Here is a summary of these important cases, with our comments:

1. Beijing – Baidu Network Technology Co., Ltd. (北京百度网讯科技有限公司) and Shenzhen QVOD Technology Co., Ltd (深圳快播科技有限公司)

On Nov. 19, the NCAC established a case against Baidu and QVOD in response to the compliants from Youku (优酷), Tencent (腾讯), Letv (乐视), Sohu and other rights holders. The investigation revealed that Baidu and QVOD facilitated public access to massive piratical websites through targeted search and hyperlinks.  This constituted infringement of the copyright holders’ “making available’ and harmed the public interest. Baidu and QVOD received an administrative sanction of 250,000 RMB respectively on December 27th, which appears to be the highest statutory penalty that NCA could levy for this type of matter.

Prof. Eric Priest from the University of Oregon has noted the following with respect to this case:

“I think the major players in China, including Baidu, are inevitably tending toward offering legitimate content, at least in the video space. The MPA and the film industry as a whole in China have done a good job over the last several years of cultivating a group of local stakeholders who have taken on the internet piracy fight as their own. These stakeholders aren’t just local copyright owners—they include leading local websites like Sohu and Youku Toudou. This does more than just increase the number of local plaintiffs involved in copyright lawsuits. It has helped change the norms in China’s online video industry. Today the expectation within the industry is that the major players play by the rules and stream licensed content. It puts considerable pressure on major sites that provide access to unlicensed content because they are now acting outside the norm. I think it also empowers authorities like the NCAC, because if no one is following the rules then meaningful enforcement is difficult and rather impotent across the board—the laws and the actual industry practice are so misaligned. But when the industry norms and laws begin to converge, authorities are emboldened to take action, and the action resonates more with its targets, in this case Baidu and Qvod.”

Prof. Priest’s observations on the pressure put on major sites that offer unlicensed content can equally apply to many of the cases that follow.

 2.Beijing – Si Lu Wang(思路网)

In early 2013, Beijing municipal and local authorities formed a task force to investigate “siluhd.com”, the largest HD web portal in China.  The website users paid a monthly fee to access 18,772 HD films and TV dramas, as well as 3316 music works, and 208 video games. This website had more than 10 thousand active users on a daily basis, generated more than 20,000,000 illegal downloads cumulatively, and had 1.4 million registered users. In April, the task force arrested 11 suspects.This case is still under further investigation.

3. Shanghai – Online Sales of Foreign ISO Standards

NCAC received a complaint from the Standardization Administration of China (SAC) that some websites were selling ISO standards without authorization.  Shanghai municipal authorities investigated this matter with the assistance of the Copyright Protection Office of National Standards Committee’s Working Group and the Shanghai Quality and Technical Supervision Bureau. The investigation revealed that since 2010, the suspect Wang and his accomplices founded “www.pdfstd.com” and five other websites to sell thousands of foreign standards. Wang and his accomplice rented four servers from aboard but also employed overseas third-party payment services.  Wang and Yi were arrested on September 24th and are awaiting sentencing.  Their online payment cooperator is also under investigation.

 4. Jiangsu – Copyright Infringement of Jiangsu Cathay Xin Dian (国泰新点) Software  

 In December 2012 Cathay Xin Dian reported that the piracy of its software product “A Little Wisdom”(一点智慧),  which is popular in the construction industry, had been sold on Taobao (淘宝) illegally since 2010. An investigation by Jiangsu authorities revealed a well organized and wide spread criminal network. On March 29th, the Police Administration of four provinces, Jiangsu, Anhui, Hunan and Zhejiang took unified act to attack the net work: arrested 12 suspects, crashed 4 criminal gangs, shut down 13 online shops, and destroyed 8 piracy dens, where the counterfeiting software (“加密狗”) had been produced, stored, and sold.  The Police Administration of Zhangjiagang City thereafter destroyed another den in Chengdu on June 5th.  This case, involving up to 650 million RMB, is currently under prosecution.

 5.   Beijing –  Online Shop “Sunshine Education”(“阳光教育”)Engaged in Selling of Pirated Children’s publications

 In October of 2013, the Beijing Municipal Cultural Market Law Enforcement Team started investigation of the Taobao shop “Sunshine Education”. The investigation evidenced that this online shop together with four branch shops were selling pirated children’s publications, cartoons, and children’s music discs. The Shop concluded 33,000 deals since 2006, including 160,000 RMB between June and October 2013. Four suspects were arrested and 6000 pieces of pirated audiovisual products were seized. The case is still under investigation.

  6. Zhejiang – ‘Popcorn Net’ (爆米花) Illegal Online Dissemination of Film and Television Productions

 In September of 2013, upon receipt of NCAC’s transfer letter, the Copyright Administration of Zhejiang Province established “popcorn” website case (www.baomihua.com)’ alleging an online infringement in response to a complaint from the International Federation of Phonographic Industries. The website disseminated without permission 52 film and television works, and 10 music videos for its members to viewing online and download. On October 14th, Zhejiang Province Copyright Administration issued a warning to the operator of this website with a 100,000 RMB administrative penalty.

 7.  Yangzhou – “www.dm5.com” Illegal Online Dissemination of Pirated Comics

 In October of 2013, the Copyright Administration of Jiangsu Province established the case of “www.dm5.com” (“动漫屋”网站).  The case involved alleged infringement of comic works, and was filed in response to a complaint from a Hong Kong association.

The operator of the website conducted webpage design, website promotion, and software development and other network technology services. Since 2009, the operating company has posted more than 70 pieces of infringing works without copyright holders’ permission and had been profiting illegally from advertising. On November 6th, the company received an administrative sanction of 100,000 RMB from the Yangzhou City Culture Market Law Enforcement Team of Jiangsu Province.

 8. Anhui – ‘Sound Bashing Network’ Copyright Infringement

 In August of 2012, after a preliminary verification of another IFPI complaint, the Copyright Administration of Anhui Province assigned the ‘sound bashing network’ “音扑网” case to Huangshan Municipal Copyright Bureau.  The Huangshan Municipal Copyright Bureau determined that the website offered 264 infringing songs and should be subject to criminal prosecution. 

 9. Shandong – Kang and Others’ Infringement of “Legend of Mir” (“热血传奇”)

 In November of 2012, Jinan, Shandong authorities cracked the “Rose Team Server Case.” “玫瑰小组私服案”. The task force learned that the source of Legend of Mir’s game server is www.3KM2.com, which duplicated and issued Mir’s server software without permission from the right holder of the online game, Shanghai Shengda Network Development Co., Ltd (NASDAQ:SNDA). The suspects obtained more than 40 million RMB illegal profits as service fees for their development and sales of the counterfeit game.

The Jinan Police reached out to other provinces including and arrested seven principal suspects, including shutting down 110 game servers. This case is now under prosecution.

10. Shanghai – Copyright Infringement of Music Apps on Mobile Devices

On April 16, 2013, on another complaint of IFPI, the Shanghai Municipal Cultural Market Law Enforcement Team brought a case against an information technology company which provided an Android app for mobile devices to enable users to search, browse, play, and download copyrighted music works without copyright holders’ permission. The infringed works include 47 songs of Jason Chan. The infringer thereafter immediately corrected its mistake after the investigation.  On June 21st, Shanghai authorities decided to mitigate the administrative penalty to a fine of 28,000 RMB.

Although this news is very positive, what remains to be seen is a comprehensive report on overall copyright administrative enforcement efforts.   NCAC has not issued such a report in years.  Unlikely other administrative agencies, we do not know how many cases NCAC overall brings on behalf of foreigners, how many get transferred to criminal prosecution, average fines, etc.  Considering the accomplishments to date, I hope that such reports can be prepared in the future. 

 Prepared by Mark Cohen with assistance of Amanda Ma.

Bilingual Position on China Trade Compliance at Department of Commerce Opens

The US Department of Commerce has posted a trade compliance position on USAjobs.gov: https://www.usajobs.gov/GetJob/ViewDetails/358610800.  The position involves serving as a Trade Enforcement Analyst-Mandarin Chinese Speaking for the Interagency Trade Enforcement Center (ITEC).

The primary purpose of this position is to provide expert Mandarin Chinese-language research, and analytical support to ITEC on a number of technical trade issues related to trade-enforcement related negotiations and dispute settlement.  The position closes on Jan 13 (one week from this posting).  In addition to knowledge of Chinese, applicants must possess 52 weeks of specialized experience.  If invited for an interview, the applicant may be required to demonstrate an ability to read and understand information in  Mandarin Chinese.

This appears to be a trade-specific (not IP-specific) position.  According to the announcement, the experience can be substituted at the GS-9 level by a master’s or equivalent graduate degree or two full years of progressively higher level graduate education leading to such a degree OR LL.B. or J.D., if related.  For the GS-11, a candidate may qualify for this position with either a Ph.D. or equivalent doctoral degree or 3 full years of progressively higher level graduate education leading to such a degree or LL.M if related.

U.S. citizenship is required.

Trade Secret Updates

From the Linkedin Chinese European Intellectual Property GroupCNet, the Taipei Times and other sources: six HTC employees have been indicted on the charge that they stole company secrets.  The employees, including a Vice President are alleged to have leaked phone designs with the goal of setting up a company in China and Taiwan.

It is interesting to speculate how this matter might be handled in China if Taiwan prosecutors had not stepped in and if Taiwan had not newly amended its trade secrets law to provide greater deterrence.  If HTC brought a civil action in China after its employees set up shop there, it would likely need to pursue the civil case in the jurisdiction where the misappropriation is actually being used, rather than where  products were sold (elsewhere in China), at least according to Article 10 of the Law to Counter Unfair Competition, which does not consider sale of an infringing product an act of trade secret infringement.  See Siwei v. Avery Dennison (Min San Zhong Zi No. 10/2007) (Sup. People’s Ct. 2009) (China).  Of course, if one is forced to bring a law suit in a place where there may be more employees associated with the actual misappropriation of use of the infringing information, there are also greater risks of local protectionism, the case is also less likely to succeed. 

In a separate trade secret development, proposed revisions to China’s Administrative Litigation Act provide for protection of trade secrets in administrative litigation, including their disclosure under court order.  See Articles 21 and 45 of the draft revision.