Berkeley China Program Update – Registration and Agenda Available On Line

The US – China IP Conference  at Berkeley (October 8-9, 2015)  now has its on-line presence fully up and running.

Here is the link to conference registration. Here is the conference agenda.

I will be talking on cross-border IP enforcement in the Friday session. The program has some fabulous speakers from both China and the United States, and has always been a great opportunity to get up to date on the latest developments and research.

See you there!

 

 

The Scotch Whisky Victory for Trademarks

On September 17, the Scotch Whisky Association announced a significant anti-counterfeiting victory in the Anqing Intermediate Court in Anhui Province.  The case is Scotch Whisky  Association vs. Anhui Guangyu Packaging Company Ltd., Wang Xuming and others (Trademark Infringement, First Instance) ,” 苏格兰威士忌协会与安徽广宇包装科技有限公司、王旭明等侵害商标权纠纷一审民事判决书.”(August 31, 2015) ((2015)宜民三初字第00024号).  The case is available on line at the Chinese court website.

This case appears to have involved the unauthorized printing of Scotch Whiskey packaging in the form of bottle caps, some of which appears to have been made available for sale on line through Alibaba.com.  The court awarded damages of 100,00 RMB, and injunctive relief.  The court found that the SWA had difficulties proving damages and therefor awarded what appears to be statutory damages, plus costs of 11,820 RMB.

Damages may seem quite low, but according to the CIELA database, the average damages for the eight trademark infringement cases in the food and beverage area that they collected in Anhui Province (where SWA likely had to bring the case) was 6,000 RMB.

The case has been picked up by the media.  One article in the spirits sector noted that it was the second victory for Scotch Whisky, in addition to some additional recognition of its GI in Africa. Another article linked the victory to the Scotch Whiskey’s “historical granting” of a “Geographical Indication in 2010”which is “fully backed by China’s government through the GI”.

Curiously, both of these articles refer, directly or indirectly, to the sui generis GI system which is administrated by AQSIQ and the Ministry of Agriculture, and failed to mention the role of trademark protection.  This might lead one to suspect that the protection arose under China’s sui generis GI system,which the SWA has been actively promoting. However, China’s trademark system is much more fully developed in enforcement by comparison to the sui generis GI system, which lacks the full panoply of TRIPS-mandated civil, criminal and border remedies that attach to trademarks as intellectual property that may be granted to, and owned and protected by individuals and enterprises.

As I read the civil decision, the basis for the civil enforcement action was the 2008 collective mark obtained by the Scotch Whisky Association in Trademark Class 33  (no. 5915031  for “ScotchWhisky”).  Information on sui generis GI protection was, however, accepted as evidence of proof of the fame of the mark, although it had been introduced for its distinctiveness (evidentiary group 2, in the court’s decision).

The court decision did not analyze in great detail issues such as the application of the newly revised trademark law, the role of statutory damages and proof of injury,  and the role of the bottle caps in the export trade.  A principal of the company,l Wang Xuming was, however, held jointly liable with the packaging company for paying damages.   The caps were, according to one media report, used to produce counterfeit whiskey for sale in Burma.

Information presented on police actions involving these defendants in prior years were accepted into evidence.  According to the English press reports, additional police investigations are also possible.

Altogether, this is a well-deserved victory for the SWA.  In addition to vindicating the role of the trademark enforcement system, the case showed the impact of such hot issues as the efforts to better coordinate civil, criminal and administrative enforcement actions, address on-line sales,  consider the impact of the new trademark law on pending cases, address transnational sales, successfully bring a case in the home court of a counterfeiter, and address those who contribute to the chain of counterfeit production.

Congratulations to the SWA and its team!

Note: Please send any corrections to the author (chinaipr@yahoo.com).  This article consists of the author’s personal opinion only.

Cardozo Law China Program September 24 In NYC

Cardozo Journal of International and Comparative Lawin association with the Fashion, Arts, Media & Entertainment (FAME) Center sponsored a program on The US & China: Perspectives on Brand Protection and Intellectual Property at 5 PM in New York City.  Here was the agenda:

5:30 p.m. Opening remarks by Dean Leslie

5:45 – 7 p.m. Panel 1: U.S. Issues for Chinese Businesses

Moderators

Geoffrey Sant  |  Special Counsel at Dorsey & Whitney LLP

Barbara Kolsun  |  Professor and Director of FAME at Cardozo School of Law

Panelists

Cindy Yang  |  Partner, Schiff Hardin LLP

Helen Su  |  Counsel, Alston & Bird LLP

Mark Cohen  |  Senior Counsel, U.S. Patent and Trademark Office and author of the China IP Blog

7:10 – 8:35 p.m. Panel 2: China Issues for U.S. Businesses

Moderators

Geoffrey Sant  |  Special Counsel at Dorsey & Whitney LLP

Barbara Kolsun  |  Professor and Director of FAME at Cardozo School of Law

Panelists  

Dan Harris  |  Founding Partner, Harris Moure and author of the China Law Blog

Cedric Lam  |  Hong Kong Partner, Dorsey & Whitney LLP

Ling Zhao  |  CCPIT Patent and Trademark Law Office and Cardozo LLM Student

Lara Miller  |  Associate Counsel, International AntiCounterfeiting Coalition

Stephen Lamar  |  Executive Vice President, American Apparel & Footwear Association

—————————————————

Update from October 28 — Here’s a report on Cardozo Law School’s Semi-Annual Fashion Law Symposium:

Here is a link to a recording of the symposium.

The first panel addressed the issues that Chinese businesses face while entering the U.S. market. The speakers discussed the challenges that businesses based in China encounter when they file intellectual property claims in the United States, and the use of Section 337 remedies to address unfair competition, including design and patent infringements from China-origin goods.  Mark Cohen discussed the increase in “dueling cases” in recent years, including suits involving Vringo, InterDigital, SI Group, as well some lesser known cases such as the recent SDNY judgment in the Gucci case, and the Global Material Techs., Inc. v. Dazheng Metal Fibre Co., which involved US enforcement of a foreign money judgment contract claim, while adjudicating a trade secret claim.

The discussion during the second panel focused on the obstacles that U.S. brands face in China. The speakers analyzed the problems of on-line counterfeiting from such e-commerce providers as Alibaba, as well as the role of organizations such as the IACC (International AntiCounterfeiting Coalition) and the US government in its “Section 301” and “Notorious Market” reports.  Issues involving drafting of contracts and licensing agreements that include counterfeit and infringement clauses were also discussed.

Authors of summary: Anna Radke and Avery Nickerson, with additional edits by Mark Cohen.

A New Winner: China’s First Patentee in the US and One of China’s First Patentees in China

Zongli_Yamen_members_1894 China’s First Patent Office?

In an earlier blog, I noted that Dr. Jin Fuey Moy (梅振魁; Mei Zhenkui, 1862-1924) was the owner of a 1908 patent on an enhanced nutcracker for chestnuts  (“Attachment for Nutcrackers”, USPN 883,558). Dr Jin was perhaps one of the more colorful Chinese inventors, having been the subject of two US Supreme Court cases involving the regulation of opium sales 241 U.S. 394 (1916) and 254 U.S. 189 (1920).

Alert scholar and reader Scott Seligman has  pointed out there appears to be one earlier patentee, Ding Cie Sui (Romanized Chen Tzu-sui in diplomatic correspondence), who had a residence in Fuzhou, China and filed three patents in the United States by assignment to two Americans, the Reverends George S Miner and William N. Brewster, of Hing Hua, China (莆仙儂, in Fujian language, or Putian 莆田 in Mandarin).   Moroever, his story is perhaps even more colorful to those interested in early Chinese IP history.

Mr. Ding seemed to have an active career in the late 1800’s as in inventor.  US Patent Office records show that he filed and obtained three patents US626195, (machine and process for spinning, 1899);  US640716 (spinning machine, 1900) and US733299 (spinning machine 1903).  He was also granted a patent in China by the Zongli Yamen (总理各国事务衙门), on June 17, 1898 for a spinning machine for a patent term of 15 years, which, it appears, had been transferred to the Reverends Miner and Brewster, who licensed the rights to manufacture the machine in 1898. This patent itself had been “examined” by the Zongliyamen which had found it to be a “useful machine, showing that … great skill in inventing.”

At some point, the Americans discovered another Chinese – a wealthy, retired government official named Kung I-tu  also of Fuzhou – was manufacturing something similar.  The licensees lobbied the US mission to ask the Chinese government to stop the infringement.  The local government advised that there was no law permitting the transfer of the patent in China and the right was issued only to Chinese natives.  An additional argument was made that the accused product relied on water power, while the patent invention relied on foot power, and there could be no infringement.  Moreover, the Zongliyamen replied, China had no treaty obligations to protect foreigner’s patent rights at this time. 

The U.S. legation noted that a patent treaty was not necessary as the matter involved a Chinese patent, not a foreign patent and questioned why the Zongliyamen issued patents which “it does not intend to protect from infringement.”

Further detail is set forth in the Papers Related to the Foreign Relations of the United States (1899), beginning at about page 178 under the caption “Protection of Purchasers of Chinese Patents.”  These papers include correspondence between Miner and Brewster, the US legation (Mr. Edwin Conger), and none other than John Hay (1838-1905), then serving as Secretary of State under President William McKinley.  Hay had begun his government career decades years earlier as private secretary to Abraham Lincoln.  During 1899 Hay also negotiated  the Open Door Policy (1899), which kept China open to trade with all countries on an equal basis, with international powers.  Conger was a civil war veteran who served as Ambassador to China beginning in 1898, through the Boxer Rebellion, returning to the United States in 1901.

Note: Alert readers may also remember I also described another very early patent litigation in China in the late Qing, which involved two foreign entities in Shanghai pursuant to U.S. law.  This case occured before the Guang Xu patent law was even enacted (the“振兴工艺给奖章程”), which (May 1898).  These various cases suggest that there was more patenting and IP activity in the late Qing than has previously been believed.  Indeed, some suggest that the earliest effort at a patent law may have occurred during the Taiping rebellion (1850-1864).

Here is an article from the The Culver City Herald (Culver City Indian) (December 10, 1897) about Mr. Ding (Chen)  I repeat it in its entirety, despite its unhappy racial overtones.  This article was brought to my attention by an alert reader:

Ding's invention

Photo source: wikipedia 

Revised Copyright Administrative Enforcement Punishment Rules Available for Public Comment

NCAC has published a  public comment draft of revised Copyight Administrative Punishment Implementing Measures “著作权行政处罚实施办法(修订征求意见稿)”, with comments due Sept 30, 2015.  The new draft addresses certain important emerging issues for administrative enforcement, including: punishment of network service providers, harmonizing administrative enforcement with recent judicial interpretations and enforcement guidance, including lowering thresholds for what constitutes a “serious circumstance” and providing for seizures of servers used for providing infringing network service, and clarifying time lines and procedures for enforcement. I speculate that the timing of this draft may also be linked to NCA’s needs to ramp up enforcement of copyright protection in light of delays in the copyright law revisions.  As with the patent law amendments, NCA may wish to be making the case that it needs improved enforcement in the copyright law, by first taking the steps within its control to improve administrative enforcement.

Asking the “Better Questions”: Lessons for the AML … from a Nobel Physics Laureate

fitch_cronin_ting_yang_rabi_photo

Several people have reached out to me in the past few weeks about questionnaires that have been sent out by China’s National Development and Reform Commission, which brought the Qualcomm IP abuse cace, to academics, companies and experts regarding IP abuse in preparation for the drafting of the IP Abuse Guidelines. I understand that some of these responses were due at the end of August, while others may be due mid-September. The guidelines themselves are being prepared by the Antimonopoly Enforcement Agencies (NDRC, MofCOM and SAIC), with NDRC as the coordinator and the additional involvement of SIPO. Due to their interagency drafting process, they will be more authoritative than the IP abuse rules issued by SAIC in April which came into effect August 1.

Hopefully by soliciting information from the right groups, the relevant agencies will collect the information needed. Hopefully as well the group of respondents is broad enough to avoid any selection bias in responses. However good questions drive good policies as much as good answers. Although respondents are free to supplement their responses, I was nonetheless reminded of Nobel Laureate Isidore Rabi’s explanation of his own upbringing: ”My mother made me a scientist without ever intending it. Every other Jewish mother in Brooklyn would ask her child after school: ‘So? Did you learn anything today?’ But not my mother. She always asked me a different question. ‘Izzy,’ she would say, ‘did you ask a good question today?”’

There are several “good questions” being asked globally today about such issues as antitrust and standards, patent trolls, F/RAND obligations to license, “smallest saleable patent practicing unit” and the standards setting process.  China is certainly an important part of those debates and these questionnaires tend to focus on these concerns and their role in Chinese law.  However, I think some equally interesting questions involve issues specific to China’s stage of IP development.

In the spirit of Izzy Rabi, here are the questions I might ask:

How Much Should China Be Focusing on Harmonizing Its AML Regime with International Practices in Light of Its Current IP and Licensing Environment?

China has long sought to have a more aggressive global antitrust posture which has been at odds with traditional notions that focused on territoriality of patents and judicial sovereignty in dispute resolution.  With the Huawei/InterDigital case, Chinese courts recognized that initiation of a litigation on a standards essential patent in an overseas court (USITC) could constitute a per se abuse of China’s AML law, essentially showing no deference to foreign proceedings or notions of patent territoriality.  Moreover, the Court applied Chinese law, nothwithstanding that the relevant agreements were based on French law.  China-based global antitrust cases are occurring at a time when our legal systems are increasingly interacting, when Chinese judgments are being enforced in the US, when US courts are struggling with delays in obtaining evidence from China, and when Chinese courts are misunderstanding US decisions involving identical fact situations.  Moreover, China persists in aggressive use of pre-AML practices, such as pricing to determine of abuse of dominance, and invalidating of mandatory grant-backs without the benefit of economic analyses.  These are practice that are not typically found in jurisdictions such as the United States.  Despite these nationalistic views of IP and antitrust, China is also seeking to become a major IP and technology consumer and exporter and will increasingly need a more harmonized environment for its own intangible exports.  In short, Chinese regulators may wish to consider how much they wish to continue to create AML and enforcement disciplines that factor into global best practices.

How Much Should A Patent’s Pro-Innovation Effects Outweigh Alleged Anticompetitive Effects?

Chinese officials, like officials in many companies are asking about right “balance” between IP protection and antitrust enforcement.  The questions often assume that some of those balances have not already been established and that new doctrines need to be created.  In the United States our constitution clearly establishes that patents were established for a pro-competitive purpose, namely to “promote the progress of the … useful arts.” The basic notion is simple: this pro-competition process requires a disclosure of information that might otherwise be maintained as confidential, in order to secure a limited right to exclude others from practicing the invention.  Overly aggressive antitrust enforcement can result in a diminution of incentives to disclose and affect global innovation ecosystems.  In short, patent and antitrust doctrines are not necessarily in conflict, and, in fact, help foster competition together.  The starting point of that discussion however is the incentive afforded by the patent system to disclose technology in order to exclude others and ultimately contribute to the public domain of technology when the patent lapses.  As the world’s largest high tech exporter of goods that China in large part did not invent and the country with the largest patent system, China has benefitted enormously from the stability afforded by that patent system.  Rather than seek to minimize IP rights through euphemisms such as “balance” perhaps a better approach would be how to optimize the patent system to foster long term innovation and competition and insure that the competition system supports and does not retard such development.

Is There Sufficient “Use” of IP Rights in China to Justify Aggressive Enforcement Against IP Abuse?

China has long had problems in protecting and enforcing IP, which the Chinese government itself has publicly acknowledged.  Considering the high incidences of infringement and the low rate of utilization of IP, how much an antitrust regulator must take into account the weak IP environment that creates incentives to infringe, in determining whether a patentee is abusing its rights.  In short, can a country strongly support doctrines of IP abuse(滥用) if there is inadequate IP use (用)? Overly aggressive enforcement against “abuse” might in fact delay development of markets for “use.”

Available data suggests that China is a remarkably under-licensed economy – accounting for a lion’s share of high tech production and exports with a limited share of licensing revenue.  China is also a major “exporter” of IP litigation, with many companies reluctant to bring suits in China against Chinese infringers but preferring to bring suits which they believe will afford a more effective process, such as the United States or Germany.  The Chinese government has complained that patents, in particular, are difficult to enforce, due to challenges such as damages being far too low, litigation too time consuming, difficulties in satisfying burdens of proof, etc.

The challenges to foreign licensors are especially acute.  As one commentator noted: ” anti-trust compliance is just one challenge faced by licensors in China; other challenges relate to restrictions on technology imports, under-reporting of royalties, difficulties with audits, dispute resolution and more.” A related questions to this issue is What circumstances exist to suggest that a prospective licensee is engaged in patent hold-out, i.e., refusing to license in good faith which might suspend the licensor’s F/RAND obligation, or when a prospective licensee is using the licensing negotiations to precipitate a Chinese antitrust case  – circumstances which the court appears to be facing in the Vringo/ZTE case.

Other related questions are How Much Should AML Damages Be Proportionate to IP Damages? China is imposing AML damages, as in the Qualcomm case, that are fifty times or more higher than typical patent damage awards (according to http://www.ciela.cn).  Still another question is whether reducing the availability of injunctive relief for SEP’s in China makes sense as in most cases damage awards do not create incentives to license patents, and  injunctive relief is the only meaningful relief for IP infringement due to these low damage standards

How Much Should China’s AML Practices in IP be Governed by the TRIPS Agreement?

I personally believe that a too-often ignored discipline on AML practices involving IP remains the TRIPS Agreement.  Articles 7, 8 and 40 of the TRIPS Agreement discuss abusive licensing practices.  If an AML investigation involves IP licensing practices, the national treatment and most favored nation treatment obligations of TRIPS should also apply.  I believe the enforcement provisions of the TRIPS Agreement also establish certain minimal due process standards, which are further enhanced by China’s commitments at WTO accession. For example,  WTO members bringing IP abuse cases are likely obligated under TRIPS to provide “fair and equitable proceedings” (Art. 41), written and reasoned decisions (Art. 41), decisions based on evidence (Art. 41), judicial review (Art. 41), the right to written notice (Art. 42), the right to independent legal counsel (Art. 42), the obligation to substantiate claims (Art. 42), the means to protect confidential information (Art. 42), and approximate conformity of administrative procedures to civil procedures (Art. 49), amongst others.

How Much Should China Rely on Economic Analysis in Making AML Decisions and/or Explicitly Reject Industrial Planning?

China desperately needs more qualified economists in assisting with policy decisions and actual disputes in both AML and IP matters.   China’s metrics-driven approach to IP and innovation based on criteria such as numbers of domestic service invention patents in key areas, licensing revenue and costs, numbers of global famous brands, plans to develop China’s own products in IP-intensive sectors, Chinese participation in global standards setting bodies, and the subsidies that are often provided for these efforts –  place additional burdens on regulators as antitrust policies could be bent in the direction of state industrial goals to increase licensing revenue, decrease licensing expenses, provide import substitutions, develop local champions, etc.  A hopeful sign in this area would be the additional employment of economic experts by both the enforcement agencies and the courts.

How Much Should China Be Concerned About NPE’s or How Much Should China Be Concerned About Patent Quality?

China’s research entities generally play a more active role in China’s patent environment than in the US. An undue emphasis on “non-practicing entities” as a source of “IP abuse” or litigation abuse could weaken the role of this important sector of the Chinese (and global) research environment. Rather than asking if non-practicing entities are a source of IP abuse, a “better question” might be “should the nature of the patent owner have any bearing of whether the owner is engaged in abusive conduct.” In general, I side with former Chief Judge Rader’s perspective on this issue: the question is not one of the nature of the owner, but the quality of the right. High quality patents should be enforced, no matter the nature of the owner of the right. This question is especially important to China due the higher incidence of research institution and non-service invention patenting.  Moreover, the relatively high damage awards and rate of injunctive relief for unexamined utility model and design patents, suggests that there may continue to be problems with assertions of low quality patents in China.

I hope that NDRC and its sister agencies publish their surveys and the results of the surveys for the public to better understand the nature of the debate and questions being asked. This is a laudable task and I hope the right questions, in addition to the right answers, are being given to Chinese agencies.

These are my personal observations. Please feel free to supplement or correct with information that you have, and feel free to share your thoughts and opinions.

Photo source: http://www.nobelprize.org/nobel_prizes/physics/laureates/1944/rabi-photo.html

Courtesy Brookhaven National Laboratory. 1980 Laureates Val L. Fitch and James W. Cronin, and 1976 Laureate Samuel C.C. Ting. Sitting (left to right): 1957 Laureate Chen Ning Yang and 1944 Laureate Isidor Isaac Rabi.