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.

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.

New Trademark Related Judicial Guidance and E-Commerce Enforcement Rule

Joe Simone at Simone Intellectual Property Services, has shared a translation of the recent Beijing Higher People’s Court Guidance on Hearing Trademark Administrative Cases (Jan. 2014).  In view of the high number of foreign-related trademark administrative appeals which are only heard in Beijing, these rules are very important to understanding relevant procedures and standards.  As I have noted in other translation postings these are unofficial translations for reference only.

Joe also provided us with a copy of the SAIC Rules on Trading on the Internet (enacted January 26 2014, with an effective date of March 15, 2014).   Unfortunately I do not yet have an English language translation of the SAIC Rules.  As a key regulatory authority for both trademarks and e-commerce, these rules are important for understanding SAIC’s role in this important area.

In case you are keeping track, this brings to five the total number of new trademark-related ‘normative documents’ in final or proposed form – the Trademark Law, the draft of the Implementing Regulations, the draft of the TRAB rules, and now these two. 

Legal “Choreography” and the Revised Draft TRAB Rules

Just as the due date for comments on the revised  Trademark Law Implementing Regulations expired on February 10, 2014, the State Council Legislative Affairs Office (SCLAO) simultaneously released proposed new Rules of the Trademark Review and Adjudication Board (TRAB) for public comment.  One translation of prior rules is found at the WIPO website.  The deadline for comments is March 11, 2014. 

Comments may be submitted to the SAIC website or the Chinese government law website for collecting comments on public comments on administrative rules.  This is a different website from the one the SCLAO maintains for public comments on State Council regulations, such as the Trademark Law Implementing Regulations.

There is some interesting legal “choreography” to all of this. 

First, the SCLAO is clearly following the order of the Law on Legislation (LoL) by soliciting comments after Trademark Law passage for the Implementing Regulations first, then the TRAB Rules.   The comments are also delivered to separate on-line accounts.    Although the close timing of the new drafts suggests that timing will be tight to comment on TRAB Rule changes that may be adopted based on new changes to the Trademark Law Implementing Regulations, it is nonetheless clear that the SCLAO and SAIC are coordinating closely to try to make the implementation of the new law as seamless as possible, thereby minimizing conflicts between inferior rules and superior regulations or the law itself.

In addition, the proposed TRAB rules, which will be implementing simultaneously with the new Trademark Law and Implementing Regulations, also seek to clarify in Article 54 when the revised rules should retroactively apply, in accordance with China’s LoL, particularly Article 84 (“Laws, administrative regulations, local regulations, autonomous regulations, separate regulations and rules shall not be retroactive, but the regulations formulated specially for the purpose of better protecting the rights and interests of citizens, legal persons and other organizations are excepted.”).  The principle of application of Article 84 to examination practices was also recently clarified by SIPO in its revised practices regarding “enablement.”   

Finally, there are some interesting developments regarding evidence that could reflect more general trends.  The TRAB is now considering electronic service including accepting electronic evidence and other materials (Art. 52).  There are also relatively extensive rules on the types of evidence that the TRAB will consider (Chapter IV: 证据规则). Considering the tight time frames for TRAB procedures, this will help in expediting case handling.  However there appears to be little consideration to the procedural formalities for evidence from overseas (legalization/consularization), which can disadvantage them when procedures have been so expedited (Art. 39).   The TRAB Rules also require Chinese language translation of documents and provide dispute resolution procedures if the parties disagree on translations (Art. 40).  Consideration is also given to whether the evidence submitted is a copy and the chain of custody for the evidence (for example, Arts. 41- 44). The TRAB will also constitute new panels on remand from the courts and new evidence can be accepted in the new panel.  This will provide an additional cross-check for more independent adjudication (Art. 35). Image

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.

Comments on the PRC Trademark Law Amendments

by Joe Simone

 

The National People’s Congress (NPC) issued a draft revision of the PRC’s Trademark Law for public comment in December, setting a deadline of January 31, 2013, for the receipt of comments.  The NPC’s Standing Committee is expected to pursue two or three readings of the draft before enacting it, perhaps as early as mid-2013.  The NPC is unlikely to provide further drafts for public comment. Continue reading