Battling for information on Counterfeiters: Can Courts and Litigants Do Better?

On October 7 of last week, several news services picked up on the September 29, 2015 order of Judge Richard J. Sullivan in the Southern District of New York in the long running battle of Gucci America, Inc., et al versus Weixing Li et al (No. 10 Civ. 4974).  In his recent decision, Judge Sullivan decided to compel the Bank of China to produce documentation regarding its customers that were selling counterfeit versions of luxury products on-line in 2010 (2015 U.S. Dist. LEXIS 131567).

Earlier decisions in this long-running battle have been discussed on this blog.  This decision responds to the remand by the Second Circuit (the intermediate appellate court) (Gucci Am. v. Bank of China, 768 F.3d 122, 2014 U.S. App. LEXIS 17948 (2d Cir., 2014) ) of the earlier August 23 and May 18, 2011 orders of the court (the “Orders”) which required BOC to comply with a 2010 Subpoena and asset freeze motions and denied BOC’s cross-motion to modify the injunction to exclude assets held by BOC in any of its locations in China.  On November 30, 2011 BOC filed a motion for reconsideration of the Orders based on a letter received from the People’s Bank of China and the China Bank Regulatory Commission regarding application of China’s bank secrecy laws to disclosures of customer information outside of China, the efficacy of China’s commitment to using the Hague Convention for judicial document requests, and the possibility of sanctions being imposed on BOC by reason of compliance with the Orders.

On September 23, 2014, the Second Circuit affirmed the Court’s injunction but vacated the Orders to consider whether the court had specific, personal jurisdiction over BOC and whether exercising such jurisdiction is consistent with principles of comity in light of recent Chinese court decisions involving BOC and some of the defendant/counterfeiters in this action.

Judge Sullivan concluded, based on evidence presented, that the BOC has shown “purposeful availment of New York’s dependable and transparent banking the system… and the predictable jurisdictional and commercial law of New York and the United States”  He based his determination in particular on the fact that BOC provides banking services to individuals in China and the United States, including through use of a correspondent account at a New York bank to conduct secure, efficient and quick wire transfers.    BOC’s conduct in New York was found to be not “random, isolated or fortuitous”, satisfying New York requirements for minimum contacts with the jurisdiction.  In sum, BOC’s subsidiaries in New York did not insulate the parent company from exposure to the courts in New York for conduct undertaken there as there was a sufficient direct jurisdictional nexus to BOC.

With respect to New York’s interests in adjudicating this dispute, Judge Sullivan noted that apart from New York’s manifest interest in providing effective means of redress for its residents, which include several notable luxury good companies that are incorporated in New York and have a principal place of business there, New York also had an interest because “allegedly ill-gotten gains” were routed through New York, and the litigants have a strong interest in compliance with discovery obligations.  Finally, Judge Sullivan noted that New York and the United States “ha[ve] a powerful interest in enforcing the acts of Congress, especially those, such as the Lanham Act, that are design to protect intellectual property rights, and prevent consumer confusion.”  In fact, Judge Sullivan found these Lanham Act interests so important, he repeated them twice in his opinion.

With regard to the discovery requests, Judge Sullivan concluded that “Hague Convention requests in circumstances similar to those presented here are not an available alternative method of securing the information [Gucci] requests.”  The Court thereafter ordered BOC to produce all documents requested in the 2010 and 2011 subpoenas, including all documents and communications regarding defendants on their accounts, and all documents associated with any accounts or deposits held in any defendants’ name, and all documents related to negotiable instruments obtained by defendants.   The court’s approach to use of Hague Convention requests is similar to that of my former student, Minning Yu, who, in her note in the Fordham Law Reviewendorse[d] a presumption against the Hague Convention whenever cooperation from the foreign sovereign is unclear… [T]his policy will incentivize sovereign states to be more accommodating with their handling of foreign requests for evidence and any conflicting laws that might hinder such production.”

Sadly, Judge Sullivan’s decision provides additional support for those who believe China is doing little to address global counterfeiting, and that Chinese authorities are unwilling to cooperation on case-specific matters.  Judge Sullivan noted that BOC, in addition to failing to prove that Hague Convention requests are a viable alternative to discovery, failed in its submissions to address “the clear and obvious harm caused by counterfeiters to mark holders” and “the fact that such counterfeiters have deliberately utilized institutions such as [BOC] to thwart Congress and the reach of the Lanham Act.”

With a one-year plus average response time to Hague Convention requests, as well as reservations by China concerning the type of information it will produce, requesting comprehensive time-sensitive information via a Hague Convention request is, of course, not likely to be satisfactory.  This is especially true in China, where first instance civil litigation is typically concluded within six months and has been used by Chinese litigants to get a strategic advantage in transnational litigation.  Of course, US discovery demands can also be excessive and costly and are easily misunderstood by foreign litigants.   However, almost anybody who has used the internet necessarily understands that on-line infringements demand timely enforcement responses.  Moreover lack of cooperation on trademark-related matters undercuts the important policies set forth in China’s revised trademark law (2013) which recognizes that institutions that facilitate infringement can be held liable along with their counterfeiting partners (Art. 57) and that certain types of pre-trial evidence production regarding damages should be made available to plaintiff/victims (Art. 63).

The bottom line: Had BOC or a Chinese court sought to enhance China’s reputation on intellectual property, they might have shown a greater willingness to cooperate on discovery requests, to enable a Hague Convention request to be handled in an expeditious manner with a robust response, or otherwise taken pro-active steps to settle this matter such as by addressing brand owners concerns during the five years that this matter has been pending.  Such efforts could have helped to avoid future liability by BOC under Chinese law, helped address on-line counterfeiting,  support enhanced judicial cooperation between our countries,  and help address the perception that China has institutions that “deliberately thwart” anti-counterfeiting legislation in the United States.  While aggressive discovery tactics are of concern to many overseas litigants, the “thwarting” and delays of this case are also particularly concerning in light of increased efforts at judicial cooperation, including some limited enforcement of Chinese judgements in the United States (see my presentation, referenced below), a forthcoming program of the Federal Circuit Bar Association and other efforts.

How is this case being perceived in China?  I was fortunate to be able to discuss this and other decisions at the recent US-China IP Conference held at Berkeley, in the context of a presentation on “When IP Systems Collide – True Adventures in Foreign-Chinese Judicial Interaction.”   My presentation generated some interest by Chinese scholars and practitioners who may not have been fully aware of the numbers of cases overseas involving Chinese litigants.

I hope we can do better in the future.

USPTO/SIPO Program on Patent Licensing and Technology Transfer – A Quick Readout on a 41 Billion Dollar Business

A China-U.S. Joint Seminar on Patent Licensing and Technology Transfer was jointly hosted by SIPO and USPTO at SIPO’s China Intellectual Property Training Center in Beijing on April 15, 2015.  The focus of the program was on contractual and non-antitrust aspects of technology transfer.  Program speakers included an economist discussing the economic reasons for licensing and current trends, an accountant on tax planning for licensing transactions, Chinese and American lawyers and officials, as well as wide spectrum of company representatives primarily in the IT sector, but also including the life sciences.

Here are my personal, general observations of the points made by the speakers:

To begin, speakers  addressed difficulties in understanding the data on technology transfer.  According to China’s Statistical Yearbook on Science and technology (2007-2014), the value of technology import contracts into China was 41.09 billion USD for 2013, nearly triple of what it was in 2005.   Patent license fees accounted for 15.4% of the total and proprietary technology was 37.7%.  Technology consultation and services were  29.7%.  However, many speakers also noted the difficulty in collecting comprehensive data.   Moreover, payment mechanisms such as extensive use of tax havens and transfer pricing in licensing technology further distorts data on bilateral technology flows.

Several speakers introduced the range of regulations in China affecting technology transfer.  These regulations included the Contract Law, Technology Import /Export Regulations, rules on registering patent licenses, restricted areas of technology trade, license registration rules, and taxation rules.

Many foreign speakers expressed concerns about obligatory provisions of China’s Technology Import/Export Regulations (“Regulations”), including provisions regarding whether the foreign licensor needs to indemnify a licensee against third party infringement, as well as other provisions on grant-backs, no challenge clauses, etc.  Article 24 of the Regulations was noted several time by Chinese and foreign speakers alike, including its conflict with article 353 of the Contract Law, which would give authority to negotiate indemnities if the contract did not involve a technology import into China.  Several Chinese speakers thought that the Contract Law, as superior legislation, may govern any conflict between the two.  However there were significant contrary arguments, including the fact that the Regulations were both more recent and more specific (I tend to side with this argument).  Many felt that these Regulations were out of date and not suited to China’s current circumstances, particularly in light of China’s desire to become a technology trade player, as well as the difficulties of mandtory indemnity provisions in technology imports from start-up companies or in litigtion dense technologies (such as smart phones).

There was a general consensus of a need for more information on the impact of indemnity/grant back and other clauses on licensing transactions.  The Regulations are a source of concern even if they are of uncertain legal impact.  One speaker noted that the uncertainty caused by the Regulations had generated considerable legal work over the years.  Some speakers noted that they thought it would be helpful if the courts provided additional guidance on the Technology Import/Export Regulations and the Contract Law provisions on technology contracts in order to achieve greater assurances about how best to structure technology transfer agreements.

A few speakers suggested that an appropriate strategy in handling mandatory indemnities is to conduct a freedom to operate analysis and negotiate risks, perhaps by reducing them to a liquidated amount in a contract.   Another speaker thought that a way to bypass the warranty provisions of the Regulations is by arbitrating outside of China under New York or other foreign law. However, there was also concern expressed about whether arbitral decisions would still be governed by Chinese policy, or arbitral awards might not be enforced within China.    Many speakers noted that choosing foreign law could lead to uncertain results.  Moreover, if enforcement of some kind is needed in China, choice of foreign law may be sub-optimal as Chinese courts will not enforce foreign judgments and it will be impossible to obtain preliminary injunctions or other immediate relief.  Note that I have discussed the issue about using foreign choice of law in technology transfer contracts elsewhere on this blog, as well as problems that arise if US law is used to enforce the contract in the United States.

Another proposal of a speaker at this program was, where possible, to change the cost of the technology to zero and place more value in to service contracts.  However, one speaker thought this alternative also posed risks, including the possibility of being considered a joint infringer in the event a law suit is brought against the “licensee”/ purchaser.

The Regulations also appear to have an uncertain jurisdictional scope.  One speaker mentioned that one way to avoid application of Chinese law is by licensing foreign technology to an overseas subsidiary of a Chinese company, and then having this company license the technology back to China.  Another speaker suggested that transactions such as these might not be viewed as an import of technology into China which should be governed by the Regulations.  At the same time, regulatory officials have viewed a transfer of technology within China by a foreign-invested company to a Chinese company as a technology import notwithstanding that the transaction occurred solely within China.

Speakers discussed difficulties in differentiating improved licensed technology which belongs to the licensee and the actual licensed technology under China’s mandatory grant back regime.  Another source of concern was determining when the technology has caused infringement if the licensed technology was proprietary in nature and was to be maintained as a trade secret.

Judicial settlement agreements and covenants not to sue were also discussed as alternatives to license agreements.  For example, under what circumstances when one settles a litigation would such an agreement no longer constitute a technology transfer agreement?    Is a covenant not to sue not a technology transfer agreement? I had the opportunity to raise the question of whether the  Regulations governed settlements of technology infringement cases of a senior Chinese judge at another conference – and the quick answer I received is that the answer is — unclear.

Speakers were generally optimistic about future prospects of enforcing audit clauses particularly in light of recent changes in China’s civil procedure law, judicial practices, and proposed changes to China’s patent law regarding production of documents and provisional measures.

Former Chief Judge Rader of the CAFC also provided a useful update on US case law involving no-challenge clauses, and smallest saleable unit as a basis for calculating damages.  He noted that in fact in some cases he now believes the market value of the infringing product should prevail, although the SSU doctrine was originally of his creation.

The role of registering contracts with MofCOM or assignments with SIPO was discussed, as well as MofCOM’s continued supervision of contracts when it registers a contract.  Several speakers also discussed an earlier MofCOM  (or perhaps MofTEC) notice which established an “unoffical cap” of royalties equalling 5% of net sales.  The experience of several speakers was that MofCOM will not say that there is a 5% cap, and that the contract needs to be “fair and reasonable.”  One speaker thought that this unofficial cap was not necessarily a deal breaker, although there remains a persistent belief that 5% is fair and reasonable.  This cap is of especial concern as data from the Licensing Executive Society suggests that average royalties for high tech sectors are 6%, and for life sciences about 5%.

Tax planning in licensing was also discussed, including indirect licensing from tax havens such as Belgium, Holland, Luxemburg and Ireland, as well as advantages to owning IP or technology locally in order to benefit from local Chinese incentives (such as High and New Technology Enterprise or R & D deductions).  An accountant noted that transfer pricing is of increasing concern in China – imposing a burden on licensors and licensees to prove that a transfer is priced at fair value.  It is likely that going forward third country licensors may not be able to obtain special incentives unless one controls and orchestrates the IP from the onward entity.   Moreover, a State Administration for Taxation Announcement (no. 16) provides that if you are paying from China to an overseas entity and the entity just owns the legal rights but doesn’t conduct substantive activities, the tax deduction may be completely denied, and they will reopen 10 years of tax returns.  This Announcement builds upon a previous announcement (146) of 2014.

China’s High and New Technology Enterprise program offers numerous incentives but also contains numerous restrictions, including regarding IP ownership, sufficiency of R & D conducted in China, and percentage of R & D of total turnover or percentage of profits derived from HNTE profits.   An accountant noted that this deduction is of declining use due to aggressive tax auditing when the incentives are used.   Moreover, there is a tension between transfer pricing and HNTE status.  One speaker noted that changes to the HNTE program are due in 2015.   This speaker noted that there is also an R&D super deduction is available, which is more readily obtained, but is also a strong audit risk.  Another HNTE risk is that if a company is developing core IP further and your original IP is no longer necessary, one could lose HNTE status.   Moreover, licensors may risk establishing a permanent establishment in China, particularly if the licensor is engaged in onshore trading.

All speakers and attendees I spoke with believed that this topic is nonetheless of increasing importance.  One academic privately noted to me that she thought licensing was not adequately discussed in academia, and that there was not enough focus by industry and government.   Attendees were also unanimous in wanting to see more programs of this nature going forward.

The preceding is an unofficial summary and should not be construed as a substitute for professional legal advice.  I hasten to add that one should also seek a tax professional for advice on tax planning.

Licensing: A Forthcoming Program and Some Historical Perspective

With recent antitrust investigations in China, as well as China’s design to have more market-oriented targets for IP, export growth in IP rights from China is slated to grow from 1.36 billion USD in 2013 to 8 billion USD in 2020, according to the Action Plan for the National IP Strategy.  Commercialization-related goals were also found in the Third Plenum, to increase IP utilization generally.

In this light, attached is the agenda for a forthcoming USPTO-SIPO program on licensing of intellectual property, which will take place April 15 in Beijing.  There is no fee for the program.  Seats are currenlty only available on a wait-list basis.   U.S. companies and their counsel can wait -ist for the program by contacting Ms. Liu Jia at the USPTO office in Beijing: jia.liu@trade.gov.

I also recently recovered from my own files an unpublished case on technology transfer from China to the United States, from over 10 years ago in the Eastern District of Texas.  The case involved a Chinese university professor that licensed his technology to a US company to collect revenue and litigate, as necessary.   I was an expert witness in that case, involving Infineon Technologies.  Although China’s tech transfer regime has since changed considerably, as I recall the case dealt with using US choice of law for the licensing of a Chinese-owned Chinese patent and US patent, including whether defects in Chinese ownership or regulatory approval for the license could be cured after the case was filed.

In a previous blog post, I noted that “choice of law in IP and technology transfer contracts is a “sleeper” issue – i.e., one that is too infrequently considered for all its strategic implications.  There may be situations where foreign law is preferred for a Chinese contract, or when Chinese law is preferred for a contract to be implemented overseas, or where choice of Chinese law brings some unhappy surprises.”  Although the choice of US law was ultimately sustained by the court, this decision demonstrated that there could be “unhappy surprises” in China’s then-existing over-regulation of technology contracts, including choosing United States law as a means to avoid these controls.

Since this case, China’s antitrust regime has interjected another level of uncertainty into licensing contracts for standards setting including by substituting Chinese law for a previously agreed choice of law.  .

Here’s a link to recent testimony I gave in an official capacity on licensing challenges in China. 

As always, this blog reflects my non-official, personal views.

Choice of Law in IP Contracts with China: A Sleeper Issue?

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Practical Law (Thomson Reuters) has recently made available its analysis of a survey (free sign in required) on the use of governing law for China-related agreements which reveals trends in choice of law for foreign-related IT and IP contracts in China.

In my own experience, if you require enforcement in China, choosing a foreign court (other than arbitration) to resolve a dispute, or a non-Chinese law for a dispute in China, is often a mistake.  The survey data generally agrees: it shows that if local enforcement is going to be an issue for an IP or IT contract, the majority of respondents will choose Chinese law.

The Chinalawblog put the general proposition it this way: “China’s laws do technically allow for contracting parties [in transnational transactions] to make their own decisions regarding a contract’s governing language and law, but in the practical world of Chinese litigation, having an English language contract or a contract calling for foreign law is nearly always going to be a mistake.”

For intellectual property and information technology contracts, choice of PRC law remained significant (31% of respondents).  After Chinese law, New York law (21%) “blazed ahead” of Hong Kong (17%) and English law (10%). ‘Other’ jurisdictions accounted for 19% of responses.   The jurisdiction of enforcement was cited as an important factor by 86% of respondents, and the availability of certain remedies was cited by 80% of respondents

The global nature of information technology and IP transactions may also explain why respondents in this practice area are comparatively open to contracting under unfamiliar laws.   Only 69% of respondents cited familiarity with a body of law as an ‘important’ or ‘very important’ factor in this practice area, against 77% of respondents overall.

Generally speaking, for those lawyers negotiating commercial contracts who choose Chinese law, the key drivers were jurisdiction of enforcement (87%) or of performance (77%) and the location of the contracting entity (71%) or counterparty (63%). Fewer respondents who preferred China rated the neutrality of the legal system as “important” (52%).

I had previously encouraged readers of this blog to complete the survey, as I believe choice of law in IP and technology transfer contracts is a “sleeper” issue – i.e., one that is too infrequently considered for all its strategic implications.  There may be situations where foreign law is preferred for a Chinese contract, or when Chinese law is preferred for a contract to be implemented overseas, or where choice of Chinese law brings some unhappy surprises.  Those, however, are topics for another blog.

Unfortunately the response rate for this survey was relatively low.  In total 127 respondents answered the survey. In addition, the survey did not address choice of law considerations in international technology transfer agreements, where there are mandatory provisions of Chinese law that contracting parties may wish to avoid.

What has been your experience in technology transfer or IP contracts?