Collecting Evidence from China in US-Based IP Litigation

One of my students, Minying Yu, just had her note  “Benefit of the Doubt: Obstacles to Discovery in Claims Against Chinese Counterfeiters.” published in this month’s Fordham Law Review. The note addresses how courts should collect evidence involving Chinese defendants in US-based IP litigation.

Here is a summary:

What is the proper method for U.S. litigants to obtain evidence located in a foreign country for trademark litigation in the United States? The Lanham Act authorizes trademark owners to recover profits made from the sale of goods that infringe on their trademarks. In order to account for and ultimately recover these profits, trademark owners need access to the infringers’ bank records. But access to such records can be a challenge when the infringers and their banks are located outside the United States.  In recent years, several brand owners have instituted a series of trademark infringement lawsuits in the Southern District of New York against Chinese vendors selling counterfeit goods online. This Note focuses on the conflict within the Southern District of New York over whether the Hague Convention or the Federal Rules of Civil  Procedure is the appropriate method for obtaining bank records from Chinese banks. At issue is the lack of transparency in the Chinese legal system, leaving the U.S. courts in need of guidance. Ultimately, this Note endorses a presumption against the Hague Convention whenever cooperation from the foreign sovereign is unclear. This Note argues that this 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.

The note looks at Chinese and US civil procedure, and the use of the Hague Convention to collect evidence.  It is available here.

Simulating the China IPR Enforcement case

For the past few years, I have been conducting moot court simulations of DS/362, the WTO US-China IPR “enforcement case” with students and colleagues at Fordham University and elsewhere. The heart of DS/362 was the US’s argument that, by establishing prosecution and conviction thresholds that were too high, China did not provide an adequate criminal remedy to address commercial scale counterfeiting and piracy. The WTO panel determined that the United States had not made out an adequate case that China did not, in fact, provide such protection.   The U.S. argued that China had not complied with an earlier request, under “Article 63” of the TRIPS Agreement, to provide additional data (including cases) about its IPR enforcement system that would have been germane to the case, while the panel believed that such data would not have been difficult to obtain. Continue reading