Forthcoming Speaking Gigs

UNLVpostcard

The fall promises many opportunities to talk and exchange ideas on Chinese IP matters.  Here are a few of the upcoming speaking events that I will be speaking at:

On October 4, 2018, I will be speaking at the University of Nevada Las Vegas program on “Intellectual Property Rights Enforcement at Trade Fairs”.   USPTO Director Iancu will be keynoting, and I will also be joining my former USPTO colleague Conrad Wong at the event.  The seminar will be a great showcase for UNLV Prof. Marketa Trimble’s recent research on enforcement of intellectual property at trade fairs.  I am also looking forward to engaging with my fellow blogger, Prof. Thomas Cotter, who will be moderating my session.

Trade fairs, due to their short duration, their exhibition of leading edge technology, and their potential to disrupt customer and market patterns present unique challenges.  I have  followed China and US enforcement of IP at trade fairs on my blog, as well as when I was IP Attache in Beijing.   As IP Attaché, I helping a US company,  ABRO Industries of South Bend, Indiana, which detected extensive counterfeiting of its product at the Canton Trade Fair by a company called Hunan Magic.  At that time, about 10 years ago, there was a hope that judicial enforcement of IP at trade fairs in China might offer an opportunity to mitigate local protectionism in the court system by providing a judicial venue that is not where a trade fair exhibitor may have its principal place of business.  Several years later, I heard  Chinese companies were also complaining about US trade fair enforcement, and the US and China entered into a bilateral JCCT commitment on this topic.  The use of civil remedies to address trade fair infringements also implicates China’s rare use of preliminary injunctions, which has also been discussed here.

On October 9, 2018, Berkeley Law will be co-hosting the 12th Annual China Town Hall sponsored by the National Committee on US-China Relations, with former Secretary of State Condoleeza Rice joining the discussions being held virtually nation-wide. I will be joined by my colleagues Berkeley (Profs. Merges and Aggarwal) and the Asia Society of Northern California in the local discussions at UC Berkeley Law School.

On November 2, 2018,  I will be returning to John Marshall Law School to moderate a session on Global Issues in IP for its 62nd Annual IP Conference.

On November 6-8, 2018, I will be speaking at the 5th Annual IP Dealmakers Forum in New York City on “China – Has It Been a Boon for IP Licensing and Enforcement”.  I will also be giving talks at the U.S.-Asia Law Institute of NYU on November 12 and at Columbia Law School on November 13.

On December 1, 2018, I will be speaking in Shenzhen at the first joint Peking University/Transnational Law School / Berkeley Law program on “Entity Formation & Funding: Legal Fundamentals for Startups.”

On December 2, 2018,  I will be speaking in Shanghai at IPBC Asia’s conference on Maximizing  IP Value in Asia, where I will be addressing China’s licensing and enforcement environment.

On December 3-4, 2018, I will be speaking at Tsinghua Law School in Beijing at the first joint Berkeley/Tsinghua program on “Transnational IP Litigation.”  This program promises to have a solid line-up of academics, judges, officials and practitioners.  It is also a topic I have followed extensively here, and previously spoken on at Berkeley.

Note that some of the academic programs are not yet listed on sponsor websites, please reach out to the sponsors or organizers for further information.

Mark Cohen

Future Motion vs Changzhou First Int’l Trade Co: Defendant Fails In its Effort to Recover Security and Attorneys Fees at CES

Back in January 2016, a Chinese exhibitor at the Consumer Electronics Show (Changzhou Int’l Trade Co.) was reportedly raided for patent infringement by US marshals, after a US court in Nevada issued a Temporary Restraining Order.  That order was based upon a ex-parte motion of plaintiff Future Motion involving claims of infringement of a design patent and a utility patent and (reportedly) a seven minute court hearing where the defendant did not participate.  The case attracted some attention at CES, although few seemed to notice when the plaintiff dropped its case shortly thereafter.  On October 3 of this month another shoe in the case fell, when  Judge Miranda Du determined that the court did have jurisdiction over the issues of Changzhou’s requests for attorneys fees and recovery of the $10,000 security posted, but nonetheless issued an order  denying Changzhou’s motion to recover the security bond and attorneys fees for plantiff’s initation of this case.  According to Changzhou, it incurred $217,628.21 in attorney’s fees in this matter.

The case illustrates the difficulties for both plaintiffs and defendants in enforcing rights and defending rights at trade shows.  Trade shows are short-term events which typically involve exhibitors who might not otherwise be subject to the jurisdiction of the courts where the trade show is held.  It may be difficult for a plaintiff to act quickly, unless it has advance word of who is exhibiting and what products will be offered for sale.  Trade show exhibitors may also be showcasing their most recent products, which may then be used by infringers who develop copycat products.  Trade show exhibitors may come from foreign countries, such as China, with limited knowledge of the local legal regime.  If large scale infringing sales are booked, considerable harm can be caused to legitimate rights holders.  Plaintiffs may also be motivated to bring cases for improper purposes, as defendants may have little incentive to defend their case during the short term of the exhibition.

China has undertaken several efforts in China and in Europe to protect IP at trade shows.  The Blue Sky effort of China of 2007, to increase IP protection at trade shows,  was intended to “chase after cases of high attention by IPR holders for breakthroughs and special progress.”  At that time – in an era where e-commerce was less dominant, there was considerable focus on the Canton Trade Fair, among other venues, as places for display and distribution of counterfeit goods.    ABRO, an Indiana-based company that had had problems at trade fairs in China, reported in 2010 of its experience with trade fair enforcement in Guangdong “several companies were cited for selling counterfeit ABRO products and they were quickly dealt with by local Chinese authorities. These companies are now facing severe government repercussions for their illegal activities.”   Private investigators, lawyers and even foreign government officials often attend these fairs to help companies protect their rights.  When I was IP attaché at the US Embassy in Beijing, I often went to trade shows to see how IP booths were staffed, if English language information was available,  and to determine how often foreign companies used these facilities and with what results.  Often  when enforcement actions were undertaken, first and second time infringers were left off with just a warning. 

China has also worked with the European Commission to protect IP at trade shows in Europe by setting up information desks.  The success of these centers, which apparently also serve to mediate disputes and facilitate coordination with local enforcement, had also been separately evaluated, in a report prepared for the European Commission.