Freshfields appoints Mark Parsons as IP counsel

Posted on July 3, 2008 by Dr. Danny Friedmann

Connie Carnabuci’s Hong Kong Freshfields Bruckhaus Deringer IP team has been strengthened by appointing Mark Parsons as counsel. See Freshfields’ media release here.

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Adidas Execs Don’t Acknowledge Chinese Counterfeit Problem

Posted on July 3, 2008 by Dr. Danny Friedmann

Ms Mei Fong wrote an interesting article in the WSJ about Adidas’ efforts to become the number one in China by locating their biggest store there. Interestingly Ms Fong noticed the following: “Locating its biggest store in the world’s biggest counterfeit market could be a challenge for Adidas, but it isn’t one that its executives acknowledge. The company has said in the past that piracy isn’t a big issue for it globally.“

Read Ms Fong’s article here.

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Future of Digital Copyright Protection in Hong Kong

Posted on July 1, 2008 by Dr. Danny Friedmann

Tomorrow Professor Peter Yu (I was honoured that this prolific professor was my co-advisor when I was writing my thesis) and mr Charles Mok will give a lecture on the future of digital copyright protection in HK, at the University of Hong Kong.

Read more here.

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Chinese Copyright Law, Peer Production and the Participatory Media Age: An Old Regime In a New World

Posted on June 10, 2008 by Dr. Danny Friedmann

Just found an interesting Chapter about Chinese Copyright Law, written by Mr Sampsung Xiaoxiang Shi, read here.
Of course I am flattered that note 22 refers to my thesis. I will review the 48 pages Mr Shi has written as Chapter 13 of the following book:

B. Fitzgerald et al ed. ‘COPYRIGHT LAW, DIGITAL CONTENT AND THE INTERNET IN THE ASIA-PACIFIC’ (Sydney, Sydney University Press, 2008).

Also read Mr Shi’s interesting blawg here.

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Japan On Chinese trade marks of Japanese Locations: “Can’t Touch This”

Posted on June 9, 2008 by Dr. Danny Friedmann

The Japanese Patent Office declared it wants to stop Chinese companies registering Japanese geographical locations as trade marks.

“The two languages share many characters and Japan’s Kyodo news agency said thenames of 19 of the country’s 47 prefectures including Kyoto, Nagano and Yamaguchi had been registered as trademarks in China by the end of last year.“

Read the Agence France-Presse article via NipponExpressUSA here.

Head tip to Jeff Roberts of McGill’s IP News This Week, “a 5-minute report about the latest IP news in the world”, worth reading much longer.

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Born Thanks To Counterfeiters?

Posted on June 9, 2008 by Dr. Danny Friedmann

Mr Robert Kessler of Newsday tells about counterfeit ring raids and warns that counterfeit condom of the Trojan Horse brand can be less than effective in preventing pregnancies and protect against diseases.

“A spokeswoman for Church and Dwight, the company that manufactures the legitimate Trojan condoms in the United States, declined to comment on whether the counterfeit Chinese condoms could fail to prevent pregnancies or the spread of sexually transmitted diseases. But a source familiar with the federal investigation said that while the counterfeit condoms were of inferior quality, samples had been tested and they were no riskier to use than legitimate ones.“

Ironically, these counterfeit Trojan Horse condoms could be like the trojan horse in the classical sense (striking unexpectedly, leaving the victim unprotected)
Read Mr Kessler’s article here.
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Smoking, the New Olympic Sport. What About Torching Your Smoke? Demonstration Sport

Posted on June 9, 2008 by Dr. Danny Friedmann

Smoking and sport seems like a match of heaven. At least that might be the thought process of some counterfeiters who were caught by Beijing police:

“Beijing police said on Wednesday they had detained seven people for allegedly producing and selling counterfeit cigarettes, some bearing the Beijing Olympic Games emblem on the packaging.“

Read the Xinhua article here.

And how to light up your smoke? Of course, with an Olympic torch…

Gao Ying writes for China View that “Hong Kong customs officers have arrested a 33-year-old woman for selling counterfeit Beijing 2008 Olympic Games torches on an Internet auction site.“

Read the China View article via Xinhua here.

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How to Prevent and Act Upon Intellectual Property Rights Infringements in China

Posted on June 5, 2008 by Dr. Danny Friedmann

I wrote an article for Duncan Bucknell Company, the Australian company specialised in Global IP Strategy about how to protect and enforce your IPR in China. Read it on the site of Duncan Bucknell Company or below:

By Danny Friedmann

Intellectual property infringements in China are prevalent and a challenge for every company in every industry. If companies that do business in China take adequate precautionary measures, and at the same time anticipate infringements and be prepared to aggressively enforce their rights, they can substantially minimise their risks and damages. Below you will find an overview of the ways to protect and enforce intellectual property rights infringements.

Be prepared

Be aware that your intellectual property is a high risk factor in China.
Be committed in the protection and enforcement of your most valuable property: your intellectual property rights.
Budget enough financial means to protect and enforce your intellectual property rights.
Raise the awareness in your whole organisation about the risks of intellectual property infringements in China.

Do your homework

One of the clichés about doing business in China is the importance of guanxi (relationships). Indeed, guanxi are very important in China, however, one should by no means overlook the phase before one enters into a relationship.
Do a due diligence research of your potential business partners. Were they in any way involved in an intellectual property infringement before?
Demand that potential business partners sign an confidentiality agreement before you hand over any sensitive business information.
Set up a contract that includes all aspects of intellectual property rights. Who owns what intellectual property right? In what way can the business partner use the intellectual property rights? What is the time frame he can use these? Spell out that you can visit the plant unexpectedly to control how your intellectual property is used. If a potential business partner refuses to sign the contract, find another business partner.

No registration equals no right

If you do not register your intellectual property rights (with the exception of copyrights) in China, you are unprotected and it makes it near impossible to stop counterfeiters.
Although with copyright there is no registration needed, according to the ‘no formalities provision’ of the Berne Convention to which China is a signatory, it can be very helpful to establish prima face evidence, for example ownership. So do register your copyright at the
National Copyright Authority of China. Register your trade marks in Chinese characters too. If you want to register the phonetic equivalence of your Western name, it is possible you need different sets of Chinese characters, because Chinese characters are pronounced differently in different Chinese dialects, such as Cantonese. Make sure the Chinese characters have a laudatory meaning appropriate for your brand.
Register your patents, utility models and design rights. In China designs are, together with inventions and utility models, part of the so called inventions-creations, which are protected by the Patent Law of China..

To trust is nice, to control better

Monitor the use of your intellectual property in the plant frequently.
Know who has access to your plant, to your intellectual property rights.
Use and combine several anti-counterfeit technologies.
Monitor whether there are intellectual property infringements in your market.
If there are counterfeit products, track the origin, gather the evidence.

Be ready to enforce

In case of an intellectual property infringement act in an optimal way. Different situations ask for different enforcement routes. Timing is important too. Strike the infringers at a moment when they have added maximum value to their infringed products, because of packaging and transport, in order to hit them hardest financially.

Administrative enforcement route

In China the administrative enforcement route is the most commonly used. The Administration for Industry and Commerce (AIC) enforces trade marks, the State Intellectual property Organisation (SIPO) enforces patents, utility models and design rights and the National Copyright Administration of China (NCAC) enforces copyrights. Apart from the enforcement of patents, SIPO is responsible for the patent work throughout the country. At the national level SIPO is also responsible for the examination of foreign and domestic patents (Patent Re-examination Board). The Trademark Office (TMO) is responsible for the registration of trade marks and the Trademark Review and Adjudication Board (TRAB), which deals with trade mark disputes, are both under the control of AIC.
The advantage of the administrative enforcement route is that it is an easy and a cost efficient way. The disadvantage is that no damages are awarded and that the punishment is often limited to the confiscation of the infringing goods and/or a fine for the infringers. And often the infringers use another company as vehicle to continue their infringements.
Customs is one of the underestimated routes of enforcement. The Chinese customs authorities are willing and able to cooperate with intellectual property right holders. So instruct them on how to recognise genuine from infringing goods and how to track down infringing cargo.
A lesser known way for trade mark and design rights holders is to base their case on infringements of the Product Quality Law at the Administration of Quality Supervision Inspection and Quarantine.

Civil enforcement route

If the complexity of the infringement is high and the scale serious, then going to the People’s courts is the preferred route of enforcement.
The advantage is that the People’s courts can award damages. Disadvantage is that this route is often time-consuming and costly.
Legal protectionism can be a problem outside the big cities, such as Beijing, Shanghai and Shenzhen, which makes forum shopping of crucial importance.

Criminal enforcement route

Alot is expected from the criminal enforcement route in China, because of the alleged deterrent effect. The advantage is that you can harm infringers by locking them up or punish them with serious fines. However, the disadvantage is that there are relatively high evidentiary thresholds before alleged criminal infringers are prosecuted.

Institutions that regularly give information about IPR in China

Quality Brands Protection Committee (QBPC) http://www.qbpc.org.cn/, lobby group of 180 multinational companies that want to improve the protection and enforcement of intellectual property in China.
Business Action to Stop Counterfeiting and Piracy (BASCP) http://www.iccwbo.org/bascap/id1127/index.html address intellectual property rights issues and petition for greater commitments by local, national and international officials in the enforcement and protection of intellectual property rights.
Intellectual Property Owners Association http://www.ipo.org//AM/Template.cfm?Section=Home trade association for owners of patents, trademarks, copyrights and trade secrets.
International Trademark Association http://www.inta.org/ association of more than 5,500 trade mark owners.
American Chamber of Commerce in China http://www.amcham-china.org.cn/amcham/home/index.php.
European Union Chamber of Commerce in China http://www.euccc.com.cn.
British Chamber of Commerce in China http://www.britcham.org/index.php.
Australian Chamber of Commerce in China http://austcham.org/index.html.
Websites about IPR in China
Intellectual Property Protection in China http://english.ipr.gov.cn/en/index.shtml, official website about the activities of the Chinese government to improve protection and enforcement of intellectual property in China.
IP Dragon http://ipdragon.blogspot.com, weblog by Danny Friedmann. Gathering, commenting on and sharing information about intellectual property to make it more transparent, since 2005.
China Law Blog http://www.chinalawblog.com weblog by Daniel Harris has often interesting articles about IPR in China.
China Hearsay http://www.chinahearsay.com weblog by Stan Abrams, has often interesting posts about IPR in China.

Conclusion

Prevent as much infringement as possible, protect your intellectual property rights assertive, anticipate that infringements will still happen, enforce your rights aggressively. In other words build a fierce reputation that no one can infringe the intellectual property rights of your company without feeling the consequences.

Danny Friedmann

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Theatre productions in China: “Keep your ideas to yourself”

Posted on June 5, 2008 by Dr. Danny Friedmann

I interviewed Ms Felicitas Speth von Schülzburg, director of International Performing Arts, about her experiences with intellectual property in China. She is operating in the art sector, which is, similar to the fashion industry, very vulnerable for “trendspotters”. Ms Speth has produced great performances by Chinese groups in the Netherlands such as Chinese Impressions, the China Girls (MTV Award winners and official representatives of the Olympic Games 2008 in Beijing with their Olympic song) and the Beijing Red Poppy ladies percussion, who will attend the opening and closing ceremony of the coming Olympic games. She also has worked together with real monks from the Shaolin Temple in China, The Tibetan Institute of Performing Arts ans Tibetan monks. The fame of International Performing Arts preceeded my meeting with Ms Speth, because I had already enjoyed the very swinging Shanghai Jazz Band when they performed in Amsterdam.

According to Ms Speth it is very difficult to protect and enforce the elaborations of performing arts, theatre and other formats (the use of the light, the costumes, the music, the concept etc.). Ms Speth: “In practice you can not do much with intellectual property rights. You need to be alert and keep your ideas to yourself. And be quick with your productions, because your ideas will be stolen. I found that confidentiality agreements in China don’t work in the art sector.” Ms Speth laments the state of awareness within the arts industry: “Because there is a lack in knowledge about the regulations and no enforcement at all, nobody dares to cooperate. Everybody is too scared about arbitrary financial demands, instead they rather steal the idea in a bad way, so they cannot be accused of complete copying. In the end everybody suffers, the creative people do not get the money they deserve and the public is getting lower quality.”

Ms Speth has sympathy for the freedom of ideas, but she believes in the incentive of intellectual property rights and needs to protect the rights of the people she is working with. So she has registered the elaborations of her ideas into envelopes at the Benelux Bureau for Intellectual Property Rights for 45 euro per envelop and registered some at the notary. She is wary to enforce her rights in China from the Netherlands and relies on her partner in China to do that if it is needed.
Below you will find a few centralised collection of royalties organisations in China and Taiwan.
MCSC (Music Copyright Society of China)
119 5/F Jing Fang Building, n° 33
Dong Dan San Tiao
Beijing 100005
CHINA
Tel: +86 10 6523 26 56
Fax: +86 10 6523 26 57
MCSC is affiliated with CISAC (umbrella organisation for copyright collection of royalties organisations).
Contact Mr Zhou Wen: zhwen@mcsc.com.cn
Taiwan (Chinese Taipei)
CHA2nd floor, Unit 6,7,
Ching Dao East Road
Taipei 100
TAIWAN, CHINESE TAIPEI
Tel: +8862 2975 6611
Fax: +8862 2975 6622
MÜST
3F, 130 Nanking
East Road, Section 4
Taipei Taiwan 105
TAIWAN, CHINESE TAIPEI
Tel: +886 2 2570 7557
Fax: +886 2 2570 7556
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Examination of Three-dimensional Marks by Wang Ze

Posted on May 30, 2008 by Dr. Danny Friedmann

“The three-dimensional marks are a new class of registrable trade marks introduced in the revised Chinese Trade Mark law as of 2001. Corresponding provisions were set forth with regard to the examination of three-dimensional marks in the Trademark Examination Standards issued by the Trademark Office and Trademark Review and Adjudication Board (TRAB) in 2005. This article is intended to present another interpretation of the Trademark Examination Standards on the basis of a series of cases of trade mark examination, review and adjudication in recent years.“

Read Wang Ze’s article here for China Patents & Trademarks No. 2, 2008.

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IPR in China Seminar in Rotterdam Dragons Businessclub

Posted on May 30, 2008 by Dr. Danny Friedmann

Last Wednesday, I spoke at the headquarters of the Rabobank in Rotterdam, the second largest municipality of the Netherlands, about intellectual property in China. The event was organised by the Dragons Businessclub, an organisation for young Chinese entrepreneurs living in the Netherlands.
Directly after my speech, two interesting speakers ventilated their thought on intellectual property in China:

  • Ms Felicitas Speth von Schülzburg, founder and director of International Performing Arts told about her experiences with intellectual property in China and;
  • Mr Ashok Bhalotra, architect-urban planner, chairman and CEO of KuiperCompagnons, who in fact does not believe in intellectual property at all!

I will try to interview both in the coming days.

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Mr László Kovács: “Customs in 2008, a real test for EU-China trade relations”

Posted on May 19, 2008 by Dr. Danny Friedmann

Mr Lászlo Kovács, European Commissioner for Taxation and Customs Union wrote an interesting article to commemorate the 40th anniversary of the Customs Union. Is there something to celebrate you might ask yourself?

Well at least the Commissioner is belligerent to fight counterfeit and pirated products:

“The growing trend in counterfeiting in some health-threatening sectors like foodstuffs, pharmaceuticals or spare parts is worrying. The EU is a target market of fake products, and China the main source of production, with almost 80 % of all articles seized by EU customs coming from there. Chinese people and companies are equally affected by this illegal industry. But we can do something about this. The EU is committed to strengthen customs cooperation with China in the fight against counterfeiting and the enforcement of IPR. We want to see concerete results in the shape of less counterfeited products on our markets. I am confident that this year, the EU and China can agree on an ambitious strategy to effectively reduce trade in counterfeit goods.“

If the EU wants to see concrete results, a plaudible goal, it should consider applying the enforcement/infringement ratio, as IP Dragon suggested here and in its thesis, see here.

Read Mr Kovács article he wrote for the China Daily here.

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EU Internal Market Commissioner: Anti-counterfeiting and -piracy Solutions To Be Found In Public-private Cooperation

Posted on May 14, 2008 by Dr. Danny Friedmann


On a 13 May commission-sponsored high level conference, the Internal Market Commissioner Mr Charlie McCreevy stressed that regulation is not the only answer to fight counterfeiting and piracy, but that the private sector itself is best placed to lead the battle against the fakes. Tomorrow exactly two years ago, when Mr McGreevy visited China to advance the international regulatory agenda, he probably had higher hopes for regulation, read here (pdf).

Marc-Antoine Jamet, president of l’Union des Fabricants, whose members include Pfizer, Lacoste, Microsoft and Disney, said:

“There is qualitative change as activities become global, and diversification into goods and products such as wine, car parts, clothing, and toys, he said. Counterfeiting is increasingly carried out by organised crime, and industrialisation means tourists no longer have to travel to Thailand to buy fakes from China but can find them anywhere, including online [..]”.

Read Dugie Standeford’s article for Intellectual Property Watch here.

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China and EU Customs Unveiled Plans to Share Information

Posted on April 17, 2008 by Dr. Danny Friedmann

The EU and China unveiled plans for an intelligence network to share information among ports to crackdown on counterfeiting. Source WIPO Magazine (February 2008, no.1).

“Despite the increased efforts of the Chinese authorities to crackdown on counterfeiting, EU Customs Commissioner Laszlo Kovacs said that China is currently the main source of counterfeit goods seized in European ports. The intelligence network will help to tighten enforcement, resulting in greater controls in both European and Chinese ports.”

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Professor Susan Scafidi on Li-Ning on Nike

Posted on April 14, 2008 by Dr. Danny Friedmann

李宁versus 耐克

Even if you are not a victim of fashion Counterfeit Chic is the weblog to regularly frequent. Ms Susan Scafidi, visiting professor of Fordham Law School, blogged about Li-Ning versus Nike in her own funny tongue in cheek style.

Don’t miss it, read here.

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Olympic Torch Tanzania Brings Protests Against … Chinese Counterfeit Products

Posted on April 14, 2008 by Dr. Danny Friedmann

BBC News has every day the news ‘In Pictures‘. Today picture six of this item showed the Olympic Torch “in peaceful Tanzania relay”. There were protests, however not against human rights violations in T 1b ET, but against counterfeit and substandard products from China, no less. If the protest messages give any clue the protest might be organised by the Tanzania Consumer Advocacy Society.
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Netac versus PNY settled out of court

Posted on April 7, 2008 by Dr. Danny Friedmann

Remember the Netac versus PNY case, read here? After two years of litigation, the patent infringement conflict between Shenzhen-based Netac Technology Co Ltd and Texas PNY Technologies was settled out of court. The Netac versus PNY case is seen as a milestone, because it could highlight a trend of Chinese companies suing overseas companies for the infringements of their intellectual property rights overseas.

Read the article by Jiang Jingjing of the China Daily here and .

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Which Event Is 2007 China Top Ten IPR Event?

Posted on March 26, 2008 by Dr. Danny Friedmann

China’s Intellectual Property Protection in China (IPR in China) started with democracy of some kind. Although 30 nominations of the events were already given, netizens can vote untill 12 o’clock of April 8. However, then IPR in China will decide 15 final candidate events according to the results of the vote and then the experts appraisal committee will determine the Top Ten Events. It gives a good overview of the events China deems important and is proud about.

The following the 30 candidate events are nominated:
1. Chinese century-long food brand “Wangzhihe” wins lawsuit against German company
2. NCA, MPS and MII jointly combat Internet piracy
3. Notice on time-honored brand ICH released
4. MOA releases plan for protection and development of new varieties of agricultural plants
5. SPC promulgates opinions on strengthening IPR trial
6. SIPO: revised Patent Law submitted to the State Council for examination
7. MOFCOM releases trial measures on brand appraisement and protection
8. No. 1 Document: strengthen IP protection in agriculture
9. China signs Singapore treaty on law of trademarks
10. SAIC promulgates measures on symbols of GI products
11. SPC hears Yamaha trademark infringement case
12. Chinese government releases China’s Action Plan on IPR Protection 2007
13. New Interpretation issued to enhance criminal protection of IP
14. U.S. petitions WTO for China’s IPR issues
15. Shanghai seizes illegal audio-video product hideouts
16. China, U.S. customs sign memorandum on IPR law enforcement
17. China announces selected intangible cultural heritage inheritors
18. WCT and WPPT comes into force from June 9
19. China Customs awarded for anti-counterfeit, piracy efforts
20. China’s first IPR-related case of online game in 2007: Zhengtu Private Server Case
21. China, U.S jointly launch “summer solstice” action
22. Proceedings against Japanese TV station launched
23. SAIC to combat misleading brands
24. SASAC convenes first IP conference of central enterprises
25. Implementation of IP Strategy clearly indicated in Hu Jintao’s speech
26. China ratifies protocol amending WTO’s TRIPS agreement
27. Installation of genuine software in enterprises achieve remarkable results
28. China patent applications reach 4 million 29. China trademark registration hits 3 million
30. Amount of fake cigarette cases investigated by Fuzhou Customs ranks first

Read more and vote here.

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How Should China Spend Its Extra Yuan On IPR Enforcement?

Posted on March 26, 2008 by Dr. Danny Friedmann

Mr Stan Abrams of China Hearsay has another interesting article. He is criticising yet another public awareness campaign by the Chinese Ministry of Culture (MOC).
Mr Abrams writes: “Advertising, seminars and training courses arranged by MOC will have limited effect. Public education only goes so far.” He suggests that it might be better to hire more cops to enforce IPR. I concur.

Public awareness campaigns, if done in a smart way, (that means something else than “a special day for the destruction of illegal audiovisual products”, which will be on April 26, exactly one month from today, I cannot wait, my o my) could bring down the level of IPR infringements in the long run. But then again it is only logical that IPR enforcement will become better in the long run, because when IPR is becoming more important to Chinese companies if they develop more innovative products, that will be the point when there will be an internal pressure to the Chinese government to enforce IPR more stringently. For this we only have to be patient.

In the mean time the IPR infringements level is much too high, and the PBS (police) and other administrative enforcement authorities, in particular the National Copyright Administration of China which has only 300 (!) persons for the enforcement of copyright in the whole of China, surely need a boost (which is still an understatement).

Read Mr Abram’s article here.

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WorkTools: “We Won the Judgement But it Did No Good” Part II

Posted on March 21, 2008 by Dr. Danny Friedmann

Yesterday, Mr Mike Marks, inventor and co-founder of WorkTools explained in Part I how is it possible that although they won at court in Taiwan it really did no good. In Part II below you will find a more detailed explanation by Mr Brad I Golstein, partner of WorkTools who manages their IP.

Mr Brad I Golstein wrote:
“In this particular instance in Taiwan, the case dragged on so long that the applicable law changed before it was decided, so the court threw out the case as being moot (irrelevant) in light of the changed law. It is the strong suspicion of many that Taiwan laws are designed more to protect home industry than to protect intellectual property rights. In general, the “proof” requirements are much greater and the penalties for infringement are much less than in the United States. What is often recommended to achieve success is that the foreign company have a Taiwanese partner who is the actual party to the lawsuit (such as the company that has the official rights to manufacture the product in Taiwan)–that makes it a case of Taiwan company vs Taiwan company rather than Taiwan company vs Foreign company. Larger Taiwan companies are probably more likely to respect IP rights, and less likely to simply close up the offending shop and just open anew down the street (although this is still possible).“

“Success” in stopping Asian knock-offs is a relative term–many times that means driving the infringer underground rather than being able to> eliminate them entirely. Many times it means getting major retailers to agree to not stock the offending product rather than actually stopping the manufacture of it. And while some degree of success> might be achieved in North America and Western Europe, it is much harder in less regulated parts of the globe, such as Africa, the Middle East, Eastern Europe, etc. Heck, even mega-corporations such as Disney, Levi’s, Microsoft, etc. have their hands full and cannot stop all the infringers. “

“As a bit of an elaboration, the penalties for infringement in Taiwan in the matter we were pursuing before it was dismissed were quiteminor–something like putting a notice in the local paper and a fine of$4,000 (which the government would keep, it would not go to us tocompensate for our losses!).“
Brad I Golstein WorkTools, Inc.

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WorkTools: “We Won the Judgement But it Did No Good” Part I

Posted on March 20, 2008 by Dr. Danny Friedmann

Yesterday I blogged about an interview on WorkTools’ patent challenges in Taiwan and China, read here.

I was like Mr Stan Abrams of China Hearsay, who came up with some interesting suggestions here, very interested to know the real answer. So I asked Mr Mike Marks by email who came up with some very interesting and elaborate answers and is also referring the answer to his partner Brad Golstein, who manages WorkTools’ IP for more detail:

1. How is it possible that although you won at court in Taiwan it really did no good whatsoever? Was it the enforcement of the judgement that did not work? Or did Taiwanese infringers continue under a different name?
2. Why don’t you publish your Chinese and Taiwanese patents online?

Mr Mike Marks’ answer:
“My recollection is that we won our case in Taiwan but the penalty was so minor that it was meaningless. We should publish ALL of our patents online, both US and International, including Taiwan and China. Thanks for the push. I have some updating to do on the website!“

“On another note, one thing we’ve seen from Taiwan and China are companies that pursue and receive patents on top of our patents. Example: Company-1 has a patent on a pneumatic tire. Company-2 gets a patent on a pneumatic tire that’s filled with a mixture of 1/3 helium and 2/3 nitrogen. Company-2 can’t use its patent without violating the patent of Company-1, but Company-2 can claim “patented”. Company-2 presents its claim to retailers to make them feel comfortable buying Company-2’s tire. Now Company 1 must educate retailers that Company-2 is selling a patent-infringing pneumatic tire, that the patented “improvement” does not give Company-2 any meaningful rights. In short: Company-1 can prevent Company-2 from making and selling ANY pneumatic tire. Company-2 can prevent Company-1 from making a version of pmeumatic tire.“

Mike Marks
http://worktools.com/
http://inventioncity.com/

See Part II where Mr Brad Golstein, who manages WorkTools’ IP, gives a more detailed explanation here.

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WorkTools Inventor’s Experience With Taiwanese and Chinese Patents

Posted on March 19, 2008 by Dr. Danny Friedmann

Mr John Eastman of Black and White interviewed Mr Mike Marks, inventor and co-founder of WorkTools about patent infringements. WorkTools specializes in the development and licensing of patented mechanical products for consumers. The company invents products and enhances products brought to it by others.

According to Mr Marks American companies in general try to work around patent claims,
“[w]hereas companies in Asia, whether by request from a foreign company or on their own, have on occasion knocked us off very explicitly, imitating our tool to a tee.“

“I don’t think that a lot of companies even bothered looking at the patent at all, they just saw the product and said oh, this is an item that is being sold and we’re going to just copy it explicitly. Maybe they were unaware of intellectual property laws. I don’t think companies are quite that bad about it today, but 10 or 12 years ago that was definitely the case.
Even though we have enforceable Taiwanese and Chinese patents issued, we have had no success in stopping any Asian companies. We even won at court in Taiwan, and it really did no good whatsoever. Perhaps it would be a little different for us if we were a Taiwanese company.“

Read Mr Eastman’s interview here

WorkTools is showing their US issued patents on their website, and inform that they can be
contracted to evaluate international and pending patents, see here. That is probably a good decision, transparent and can function as a deterrent. It is also good that you can see that Mr Paul Y. Feng is their outside patent council, partner of Fulwider Patton, which can have an deterrent effect.
The question is, however, why WorkTools doesn’t put its Chinese and Taiwanese patents online? Mr Marks said that a lot of companies don’t even bother to read patents, but I don’t understand why he at least put WorkTools’ Chinese and Taiwanese patents online. One can argue whether it works as a deterrent, but at least it would not harm them.

UPDATE:
Mr Mike Marks gives the answer to the question why it does not help to have won a judgement in Taiwan here.

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China Most Designated As Country in International Trademark Applications

Posted on February 27, 2008 by Dr. Danny Friedmann

WIPO has a press release about the number of applications using the Madrid System for the Registration of Marks.

Over 2007 China ranks number 8 in international trademark applications:

  • 2003 472
  • 2004 1,015
  • 2005 1,334
  • 2006 1,328
  • 2007 1,444

China’s international trademark applications were 3.6% of the the applications by all countries; China’s number of applications grew by 8.7%.

China ranks number 1 as country that was most designated in new registrations and subsequent designations.

  • 2004 7,106
  • 2005 9,265
  • 2006 13,575
  • 2006 15,801
  • 2007 16,676

China’s share of international trademark applications was 4.5 percent and the amount of China’s applications grew by 5.5 percent.

Top filers of China were:

  • Zhejiang Elegant Prosper Garment
  • Shanghai Vanwa Industrial
  • Ningbo South Electronical Appliance Co.
  • Beijing Posh Furniture Co.
  • Jiangsu Sunshine Garment Co.
  • Guangzhou Panyu South Star Co.
  • China Tea Co.
  • Shandong Jinyu Tyre Co.
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One Minute Film Contest to Promote IPR in China

Posted on February 27, 2008 by Dr. Danny Friedmann

The movie industry uses professional producers and movie stars such as Jacky Chan to promote that youngsters abide by the IPR laws, read here. Now, during the 15th Beijing Student Film Festival, the China Film Copyright Protection Association (CFCPA) and the Motion Picture of America Association (MPAA) launced a one minute film contest (in the categories of digital video, cartoons and mobile phone films) to let the group that might be most susceptible to copyright piracy to promote respect for IPR. Read Du Guodong’s article for the China View here.

This encouraged (by the governement and interest group) grass-roots movement might be better perceived by the target group than a top-down approach.

Last date to hand in a film is March 15th, 2008.

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PCT International Applications: China Ranks Number 7, Huawei Ranks Number 4

Posted on February 27, 2008 by Dr. Danny Friedmann

A WIPO press release stated the following statistics:

Again China is part of the top 10 countries that had the most PCT (Patent Convention Treaty) international applications.

  • 2003 1,295
  • 2004 1,706
  • 2005 2,503
  • 2006 3,952
  • 2007 5,456

In 2007 China’s PCT International applications were 3.5 percent of all PCT international applications; between 2006 and 2007 the amount of PCT international applications grew by 38.1 percent.

Huawei ranks number 4 PCT applicants

Huawei Technologies Co., Ltd. ranked number 4 in the top 50 of PCT applicants. Like a shooting star this Chinese telecommunication device producer rised 9 places. Huawei’s PCT applications published in 2007 were 1365, this is 790 applications more than in 2006.

Head tip to the prolific Mr Jeremy Phillips of IP Kat.

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China’s Third Patent Amendment: Curb Your Enthousiasm

Posted on February 27, 2008 by Dr. Danny Friedmann

China’s upcoming third amendment of its patent law has moved a lot of pens, or rather fingers, to write critiques and analyses.

Mr Timonthy J. Maier partner of Maier & Maier PLLC, a law firm in Alexandria Virginia (US) and blogger of Post-Grant gives a good overview of the most controversial paragraphs of the draft. These include articles 49, 50 and 74, read Mr Maier’s article here.

Mr Thomas T. Moga of law firm Butzel Long, which is a member of the China Alliance (which includes two other US law firms: Armstrong Teasdale LLP, Michael Best & Friedrich LLP, and Canadian Blake, Cassels & Graydon LLP and is combining its resources to support their clients in China), is looking whether the draft is compliant to the Agreement on Trade-related Aspects of Intellectual Property rights (TRIPs), read here.

Read the draft and the comments upon it by the International Chamber of Commerce the World Business Organization (ICC) here. The comments of the Intellectual Property Owners Association (IPO) can be found here.

The Fédération Internationale Des Conseils En Intellectuele Propriété (FIDCI) has an elaborate power point presentation about the subject here.

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Pirated DVD Brands and Brand Awareness

Posted on February 26, 2008 by Dr. Danny Friedmann

Dan of Mission: Don’t get Shanghaied wrote ‘Better than a casino’, about the differences in the quality of pirated DVDs. Dan of Mission: Don’t get Shanghaied can give us an insight into the mind of the consumer of pirated products.

“The funniest part is, there are pirated DVD brands. On the box there will sometimes be a sticker or a mark of some kind, denoting who produced this illegal copy. The quality of the DVDs with ‘the smiley face’ and’ the McDonalds logo’ have been so overwhelmingly superior, I struggle to imagine why I won’t buy them exclusively in the future.“

This, let’s call him a participatory journalist, shows us the value of brands. So now we only have to wait for counterfeit pirated brands.

Read more here

Angela Sun explores the world of fakes

Although this great video of Ms Angela Sun is from September 19, 2005, it is worth watching, because things have probably not changed much, or rather at all, if one reads the story above. Ms Sun “explores the world of fake Louis Vuitton, Versace and DVDs in China–the counterfeiting center of the world.” See her Current video from Shanghai here.

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Supreme People’s Court Orders Full-compensation Principle in All IPR Cases

Posted on February 26, 2008 by Dr. Danny Friedmann

“Courts should fully apply logical reasoning and everyday life experiences, and comprehensively and objectively examine the evidence for calculating the amount of compensation,” SPC vice-president Cao Jianming told a national work conference on IPR trials in Jinan on February 20, 2008, according to the China Daily.

I don’t know if the order or encourgagement to reason logically can have meaningful results. I think this has to be taught during law school and afterwards during the education permanente necessary for every lawyer and judge. But it is clear that the Supreme People’s Court wants the judges to take everything into account and be not too formalistic.

The compensation calculated in the case Yamaha versus Zhejiang Huatian is described as a model. Read more about the Yamaha case of last year here.

Read the article ‘New rules on payouts in IPR cases’ of the China Daily via China.org.cn, read here. Head tip to Mr Jeff Roberts of CIPP’s “IP News This Week”, your 5-minute report of the latest IP news from around the world, read here.

UPDATE: Mr Thomas Chow of China Esquire wrote about and referred to a case that was decided by the Hangzhou Intermediate People’s Court and described by Mr Brad Luo of China Business Law Blog called ‘G2000 v. 2000: Is 20 Million Yuan Enough for Trademark Infringement?’, read here

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.ASIA Landrush Ends March 12, 2008

Posted on February 26, 2008 by Dr. Danny Friedmann

Law firm Foley & Lardner LLP warns firms that the landrush for .ASIA domain names ends March 12, 2008 (Hong Kong time). Read more here.

.Asia is a sTLD (sponsored top-level domain name). According to ICANN: “[g]enerally speaking, an unsponsored TLD operates under policies established by the global Internet community directly through the ICANN process, while a sponsored TLD is a specialized TLD that has a sponsor representing the narrower community that is most affected by the TLD. The sponsor thus carries out delegated policy-formulation responsibilities over many matters concerning the TLD.” Read more here.

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Survey: HK Government Enthousiast About Youth Ambassadors Against Internet Piracy

Posted on February 25, 2008 by Dr. Danny Friedmann

Survey

Two years ago the HK Government started recruiting youths to fight online piracy. Now it has hailed them and said that their efforts have been very effective, read here.

Now IP Dragon starts with a survey and is very interested in your opinion.
Should the HK Government use youths to combat IP infringements?

  • Yes, getting young people involved is effective and cost efficient;
  • No, it is only the HK Government’s responsibility and task;
  • I don’t know.

On the bottom of the blogroll on your right hand side you can find the survey. Please use your right to vote.

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What Does The New Chinese Patent Law Have In Store?

Posted on February 22, 2008 by Dr. Danny Friedmann

Mr Charles C. Liu, Partner and Director of US Practice, Unitalen Attorneys at Law and Ms Jeanne J. Liu wrote a series of four installments (originally published in China Intellectual Property, 20:44-51, 2007) about the amendment of the Chinese patent law that will probably be ready in 2008.

Read here Mr Liu and Ms Liu’s ‘Waves of Changes in Chinese Patent Law and Regulations’,
Part I here;
Part II here;
Part III here;
Part IV here.

Head tip to Philip Brook of Philip Brooks’ Patent Infringement Updates whose blog has been chosen by the new Patent Law Center of LexisNexis as a Top Blog. IP Dragon, Patent Docs, Patent Troll Tracker, Patently-O, Peter Zura’s 217 Patent Blog, Generic Pharmaceuticals and IP and IPKat were also selected as Top Blogs, as can be seen at the bottom on the right of the page of the Patent Law Center, see here.

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Counterfeit iPhones Smuggled Outside China; Genuine iPhone Smuggled Back Into China

Posted on February 20, 2008 by Dr. Danny Friedmann

Stop the press! Although also iClones (fake iPhones) exit China to Europe and the US, read here, also genuine iPods manufactured in China for/by Apple are exported abroad. There is a lack of the real thing in China, so the price people want to pay for it rises. Enter smugglers of genuine iPhones, that bring these products back to China.

Mr David Barboza wrote the interesting article: “After China Ships Out iPhones, Smugglers Make It a Return Trip” for the New York Times about counterfeits, genuine products and the so called grey market of parallel import, although one would mention parallel import most of the time in case of cheaper products entering a market. Read Mr Barboza’s story here.
Paul Midler of The China Game, has an elaborate two part series about Apple in China. Part 1 is “Apple takes an unfair beating on iPhone”, read here.
Tony, who commented on China Law Blog on the misconceptions about China’s IP enforcement Catherine Sun debunked in a video presentation, see here, pointed to an article of Mr Patrick Mannion on EETimes about iClones that are better than iPhones, read ‘Under the Hood-Video: iPhone clones surpassing original’ here.
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Catherine Sun Debunks Misconceptions About Chinese IP Protection

Posted on February 14, 2008 by Dr. Danny Friedmann

Foley & Lardner LLM Partner Ms Catherine Sun discusses the three biggest misconceptions about Chinese IP protection:

  • The belief that IP is not enforceable in China;
  • keeping brands and technology within the U.S. will keep them safe;
  • and counterfeiting products are of poor quality.

See Ms Sun’s video presentation here. IP Dragon fully agrees with her explanations.

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Possibly 50,000 Counterfeit Train Tickets (Guangzhou-Hengyang) Sold During Spring Festival

Posted on February 14, 2008 by Dr. Danny Friedmann

The People’s Daily Online runs with the story of Xinhua that three people were arrested after they allegedly sold 50,000 counterfeit train tickets during Spring Festival.

Read more here.

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Origin Fake Malaria Medicine Traced By Scientific Effort

Posted on February 14, 2008 by Dr. Danny Friedmann

Every year about 500 million people become ill of malaria. Every year 1 million people die, because of one version of malaria called Plasmodium falciparum. One major problem is that not all malaria medicines are genuine and some have only a low dose of the active ingredient, so that the malaria parasite becomes resistent. Jeremy Laurance of The Independent wrote the article entitled ‘Scientists trace fake anti-malaria pills to dealer in southern China’, read here.

The Public Library of Science (PLoS) Medicine gives the full report about this extraordinary scientific effort:

“Since 1998 the serious public health problem in South East Asia of counterfeit artesunate, containing no or subtherapeutic amounts of the active antimalarial ingredient, has led to deaths from untreated malaria, reduced confidence in this vital drug, large economic losses for the legitimate manufacturers, and concerns that artemisinin resistance might be engendered.“
The methods were taking samples, assessing physical appearance, chemical and biological investigations and intelligence.

“The results were crucial in helping the authorities establish the origin of the fake artesunate. For example, the authors identified two regional clusters where the counterfeit tablets appeared to be coming from, thus flagging a potential manufacturing site or distribution network. The presence of wrong active pharmaceutical ingredients (such as the older antimalarial drugs) suggested the counterfeiters had access to a variety of active pharmaceutical ingredients. The presence of safrole, a precursor to the illicit drug ecstasy, suggested the counterfeits may be coming from factories that manufacture ecstasy. And the identification of minerals indigenous to certain regions also helped identify the counterfeits’ origin. The researchers concluded that at least some of the counterfeit artesunate was coming from southern China. The Secretary General of INTERPOL presented the findings to the Chinese government, which then carried out a criminal investigation and arrested individuals alleged to have produced and distributed the counterfeit artesunate.“

Read about this impressive WHO-Interpol project here.

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Kung si fa chai! 恭喜发财

Posted on February 8, 2008 by Dr. Danny Friedmann

Happy Chinese new year to you!

恭喜发财

My new year’s resolution for the year 4706 is to increase the frequency and relevancy of my postings.

Cheers,

IP Dragon

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Does China’s Copyright Law Has A Sense Of Humour?

Posted on January 29, 2008 by Dr. Danny Friedmann

Tavis Coburn created in 2007 “Mao Jordon”, using Mao holding a Nike Air in his hand and wearing a hair band with swoosh, a registered trademark of Nike. The artist provokes a lot of questions with a limited edition of 100 prints.

Besides whether Mr Coburn’s work would be censored in China, would it be protected under China’s author’s right?

Article 1 Copyright Law: This Law is enacted, in accordance with the Constitution, for the purposes of protecting the copyright of authors in their literary, artistic and scientific works and the copyright-related rights and interests, of encouraging the creation and dissemination of works which would contribute to the construction of socialist spiritual and material civilization, and of promoting the development and prosperity of the socialist culture and science.

Does Mao advertising Nike on a reproduction of a painting contribute to the construction of socialist and material civilazation?

Article 46 Copyright Law: Anyone who commits any of the following acts of infringement shall bear civil liability for such remedies as ceasing the infringing act, eliminating the effects of the act, making an apology or paying compensation for damages, depending on the circumstances: (4) distorting or mutilating a work created by another;

The original maker of the Mao portrait could claim this personal right was breached.
I think that the artist by using parody makes a statement that refers to China’s effort to combine socialism and capitalism into a hybrid. However, parody is at the moment in China not protected under the Copyright Law.

Head tip to Susan Scafidi of Counterfeit Chic. Read her excellent Knockoff News Edition 76 here

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Zhongyi Electronics to Microsoft: “See you in Court”

Posted on January 23, 2008 by Dr. Danny Friedmann

According to MarketWatch (head tip to China Economic Review) Microsoft is sued by Zhongyi Electronics for alleged copyright infringement for its Chinese character input method editor that Microsoft applies in Windows 95, Windows 98, Windows 2000 and Windows XP operating systems. The case will te held before the Beijing’s No.1 Intermediate People’s Court. Microsoft has denied any copyright infringement and said that is has written license agreements.

Read the article from MarketWatch here.
UPDATE: Stan Abrams of China Hearsay raises some good questions about the case here.
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Africa Preferred Route Chinese Counterfeits To Europe

Posted on January 23, 2008 by Dr. Danny Friedmann

Thailand is the preferred route into Asia for counterfeit and pirated goods originating from China, read here. Now IP Dragon learned from Jeremy Phillips, known from the renowned IP Kat, but also contributor to the new blog Afro-IP who is quoting Christophe Zimmermanna, head of the Brussels-based World Customs Organisation’s counterfeiting and piracy unit, that the African continent is the favourite transit route to Europe for goods infringing IP coming from China.

Read more on Afro-IP here and its source Reuters here.
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Patent Challenge in China: What’s the State of the Art?

Posted on January 16, 2008 by Dr. Danny Friedmann

The last quarterly newsletter of the European Patent Office (EPO) has an interesting article about the difficulty for foreign patent applicants to determine prior art (state of the art) in China, because all prior art in China is in Chinese. To determine prior art is crucial, because the patent can only be granted to an invention that is both new and inventive. So what is already known and what is new in China if you cannot search in and read Chinese? Machine tranlations are expected to be possible in three years time.Mr. Ruud Peters, CEO of Philips Intellectual Property and Standards, who spoke at the EPO Patent Information Conference in Riga criticised “missing out the increasingly large collection of Chinese prior art”. The translations of only the claims from Chinese into English is estimated to be 15 million euro per year. The EPO would like the funding to be done in a way that allows that the translations are published for free online, Commercial companies such as Thomson Scientific, East Linden and Beijing Zhongxian Tuofang Co. Ltd. of course want to earn money for their translations. Mr. Peters had some harsh words about the patent system in relation to China: “stifling” instead of “stimulating innovation”. Then again, an amendment of the Chinese patent law is coming up, so maybe all is not so bleak.
Read the EPO article here.

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Service Of Process in China… eeh People’s Republic of China

Posted on January 10, 2008 by Dr. Danny Friedmann

In case you want to sue an IP infringer that has residence in China from your own country, you can make use of the Convention on Service Abroad of Judicial and Extrajudicial Documents in Civil and Commercial Matters, The Hague, November 15, 1965. Although China is a convention member state, it deals in a very strict way with service requests from abroad.

Geert Theuws, an attorney-at-law, found out that the legal translation company translated People’s Republic of China into China, which meant return to sender, because this country name is not deemed correct in they eyes of the Chinese authorities. So make sure you got all the formalities right, including the right address on the letter and envelope; street, street number, zip code, city, province and last but not least the People’s Republic of China (中华人民共和国) in stead of just China.

Thanks Geert.

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Message from IP Dragon

Posted on January 2, 2008 by Dr. Danny Friedmann

Happy new year!

Today, I started working for Howrey LLP, an international law firm that is specialised in intellectual property, litigation and antitrust.

Cheers,

IP Dragon

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IPR Officials Say The Darndest Things: Progress in Collecting Karaoke Copyright Royalties

Posted on January 1, 2008 by Dr. Danny Friedmann

Yan Liang of Xinhua News reports that “nearly half of the Chinese provinces have taken initiatives to collect karaoke copyright royalties by the end of 2007 in an effort to protect intellectual property rights (IPR) in audio and video sectors.“

“An official with the country’s IPR protection group echoed Liu, saying that the move marked new progress in property protection.” One could describe 15 out of a total of 22 provinces, where initiatives to collect karaoke copyright royalties took place, as a meagre result. Then again, from 0 to something is progress.

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Internet Copyright Law 2006 Difference Between Winning (Baidu) And Losing (Yahoo China)?

Posted on January 1, 2008 by Dr. Danny Friedmann

Although both Baidu.com and Yahoo China basically provided deep links to pirated mp3’s, Baidu won in court, while Yahoo China lost. What are the differences?

7 (minus EMI) IFPI members versus Baidu.com

Wang Hongjiang of Xinhua reports about a group of record companies who lost again a lawsuit against Baidu.com (a Chinese search engine and the first Chinese company that became a component of the NASDAQ-100, read here), because of alleged copyright infringements.

  • In 2005 the group, represented by IFPI, consists of EMI, SONY BMG, Warner Music, Universal Music, Cinepoly, Go East and Gold Label, “accused Baidu.com of engaging in illegal downloading and playing 137 pieces of music (195 sound recordings, according to IFPI, read here IP Dragon) owned by the record companies online without their permission.“ The demands by the group were a public apology from Baidu, the suspension of its download service and compensation of 1.67 million yuan (226,000 U.S. dollars);
  • November 2007, Beijing’s First Intermediate Court ruled “that Baidu’s service, which provides web links to the music, does not constitute an infringement as all the music is downloaded from web servers of third parties.“
  • December 30, 2007, the People’s High Court of Beijing agreed with Beijing’s First Intermediate Court and ruled that Baidu’s service does not constitute an infringement.

Read Wang Hongjiang’s article here.

If you cannot beat them join them

John Liu and Jannet Ong reported for Bloomberg News that EMI dropped the appeal and joined Baidu, read here.

7 IFPI members versus Yahoo China

  • April 2006, IFPI, on behalf of the 7 members asked Yahoo China to take the necessary stepts to stop the copyright infringement. Negotiations between Yahoo China and IFPI took place, but Yahoo China, according to IFPI, walked away from those talks;
  • January 2007, IFPI filed a lawsuite at the Beijing No. 2 Intermediate People’s Court against Yahoo China; Eleven separate claims were brought against Yahoo China by local and international record companies, who presented evidence of widespread infringement of their copyrights. The claims filed concerned infringement of tracks by international artists such as U2 and Destiny’s Child, as well as local repertoire performed by singers such as Penny Tai and Kelly Chen;
  • April 2007, Beijing No. 2 Intermediate People’s Court ruled Yahoo China was found liable for facilitating copyright infringement; Yahoo China appealed to the Beijing Higher People’s Court;
  • December 20, 2007, the Beijing Higher People’s Court, upheld the verdict.

Mr John Kennedy, Chairman and CEO of IFPI said:

“We are disappointed that the court did not find Baidu liable, but that judgment was about Baidu’s actions in the past under an old law that is no longer in force. The judgment is irrelevant since it has effectively been superseded by the Yahoo China ruling. Baidu should now prepare to have its actions judged under the new law. We are confident a court would hold Baidu liable as it has Yahoo China.“ Read the IFPI press release here.

China is no Common Law country and the final court, in this case the Beijing Higher People’s Court, is not bound by precedent. Music 2.0, which is “exploring chaos in digital music” doubts whether Mr Kennedy’s “old law” is no longer in force. Music 2.0 quotes Chinese lawyer Yu Guo Fu who said on Sina:

“Even though the Provisions of Copyright Protection regarding Transmissions through Digital Networks (Internet Copyright Law 2006) was introduced in July 2006, it is not the underlying reason for the different results in both the Yahoo and Baidu cases. Fundamentally, the higher level Copyright Law and also the General Principles of the Civil Law were unchanged throughout both cases and that has been the basis for both rulings”. Read Music 2.0’s article here.

Other factors that could explain the differences between the outcomes is whether there was sufficient evidence for direct and/or contributory infringement.

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Data Key On Road To IPR Transparency

Posted on December 19, 2007 by Dr. Danny Friedmann

The MailTribune runs an LA Times article called ‘Writing their own tickets, Knockoffs still a thriving business in China’ by Mr Don Lee. The article draws a picture of Wengang, a city in Jiangxin province famous for its pens/infamous for its counterfeit pens. That the enforcement of IPR is very difficult in this city, thanks to local protectionism, becomes clear in the article.

Mr Lee writes the following passages:

“In a survey in 2007 by the Quality Brands Protection Committee, an industry group made up of 164 multinational companies operating [the organisation has currently 181 members IP Dragon] in China, 70 percent said the situation was worse than or the same as before.

Chinese scholars and government officials contend that there’s been a lot more progress in protecting intellectual property rights than that survey would suggest. Nationwide, in 2006, Chinese courts took on nearly 20,000 civil and criminal cases related to such protection, up from about 13,000 two years earlier.

“This shows that IPR awareness in China is getting much stronger,” said Tao Xinliang, dean of Shanghai University’s Intellectual Property School. Yet lack of enforcement, and even collusion, on the part of local authorities remains a major barrier. And few places may be as tough to crack as Wengang.“

When the Chinese courts took on more civil and criminal cases related to IPR protection in comparison to a year before, this does not necessarily mean that IPR protection/enforcement is better. Because even if the enforcement actions have gone up, it is possible that the infringements have also gone up. In this light the outcome of the survey of the Quality Brands Protection Committee saying the situation was stable or had deteriorated is not strange at all.

The problem is, of course, that China is not willing or able to measure the total IPR infringements.

Read Mr Lee’s article here.

Mr Will Lewis run into the same kind of problems, when he tried to interpet the IP litigation data he received. Mr Lewis writes:

“This data is all cases selected for publication by the courts in each jurisdiction through January 2007. The data collector said that this is only a small number of the cases that were actually decided which raises one gigantic question: what criteria did the courts use in deciding what cases to publish? There may have been bias in the cases selected, and these cases might not be representative of the actual win/loss rates in IP litigation. Also, the low number of cases published involving foreign parties means that there might be large variation in outcomes as more cases are decided.“

In other words the data might not be objective. That is why I proposed in my thesis ‘Paper Tiger or Roaring Dragon, China’s TRIPs Implementations and Enforcement‘ (page 64) to use the Enforcement/Infringement Ratio which uses data that can be gathered independently from China.

Given the data, which can be critisised, I agree with Mr Lewis’ interpretations. His second interpretation is: “Trade secret is the most difficult IPR to protect.” This will be even more so when the new Labour Contract Law will go into effect, January 1, 2008, so that the scope of non-compete agreements will be restricted. Read more about what the Labour Contract Law has to do with IPR here.

Mr Dan Harris of China Law Blog was surprised by the frequency of victory by the IP holder: “I expected such numbers in trademark cases, but the numbers in patent cases are better than I expected and in copyright cases much better than I expected.” Read Mr Harris’ article here.

Read Mr Lewis’ IP litigation data interpretations here.

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Cheng Yongshun’s Critique On US Patent Reform Act Ammuniton To Opposites

Posted on December 14, 2007 by Dr. Danny Friedmann

Philip Brooks’ Patent Infringement Update has a great post called ‘China Weighs in on Patent Reform Bill’, read here.

It is great when intellectual property scholars of different countries can learn from each other. For a long time a stream of advice on and ideas about IP flowed mainly from Europe and the US in the direction of China. Now, the critique of Chen Yongshun, director of the Beijing Intellectual Property Institute, deemed worthy of translation by the opposites of the US Patent Reform Bill ( H.R. 1908 and S. 1145). Thanks Philip for uploading the translation of Cheng’s article and the original.

Read the translation of Cheng Yongshun here. US Representatives Michael Michaud and Donald Manzullo use Cheng’s critique in an alert letter called ‘Chinese Spell Out Weakness Of Patent Reform Act’ as ammunition to try to sink the Patent Reform Act, without really discussing the contents of the bill, at least not in their alert letter.

In the alert letter Cheng was quoted saying:
“It is not bad news for developing countries which have fewer patents. Many of the Chinese companies are not patent owners in the U.S. market and their products are often excluded from the market because of patent infringement accusations. This bill will give the companies from developing countries more freedom and flexibility to challenge the relative U.S. patent for doing business in U.S. and make it less costly to infringe.“

Michaud and Manzullo write: “[..] ominously, Mr Cheng suggests to his Chinese readers that “The US law could be used as reference when we make the third amendment of Chinese patent law.””

When messrs. Michaud and Mazullo’s alert letter is uploaded somewhere please let me know, so I can link to it.
UPDATE: Patent Warrior sent me the link here. Thanks Patent Warrior.

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Beijing, Guangzhou, Jiangsu and Zhejiang IP Litigation Data

Posted on December 14, 2007 by Dr. Danny Friedmann

Mr Will Lewis, an international business law and IP rights student at University of San Diego School of Law, tells on his blog Experience not logic that he was given a slew of data on IP litigation between domestic parties and between a domestic party and a foreign party in Beijing, Guangzhou, Jiangsu and Zhejiang courts. He posted the data and let readers interpret it for themselves. Later in the week, Mr Lewis will post his interpretation to the data along with other’s interpretations.

Find the IP litigation data on these courts in Mr Lewis’ article China IP Litigation Data: What Does it Mean? on his interesting blog called Experience not logic quoting Oliver Wendell Holmes, Jr.

UPDATE: Mr Lewis has interpreted the data and comes to the conclusion that although the data are inconclusive, they at least suggest that businesses should not be scared about an inability to protect their IP in China. Read Mr Lewis interpretations here.

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IP Dragon Starts Reviewing Books About IP in China

Posted on December 13, 2007 by Dr. Danny Friedmann

IP Dragon was happy to receive three very interesting book titles by post published by Kluwer Law International to review.

In the next few months expect the following reviews on IP Dragon:

and from the Max Planck series on Asian Intellectual Property law:

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What Global Players Could Learn From Wii versus Vii

Posted on December 2, 2007 by Dr. Danny Friedmann

Last year, on September 14, 2006, Nintendo announced the release information (launch of the product at different dates in different locations) about the Wii, a device with new form of player interaction. Read about Wii’s conception, creation, launch, reception etc, here.

Not long after the launch of the Wii, a reverse engineered clone appeared called Vii, that could capitalise on the market demand Nintendo could not fulfill. Whether or not Nintento is “PR-ing” stock shortages is another matter, read here.

This Nintendo Wii clone, also coined as Chintendo Wii was named 威力棒 (Wei1 Li2 Bang2) Vii, literally “Powerstick” Vii. Justin McElroy of Joystiq put it dryly: “See, it’s like the Wii. But it is with a “V”.” Read the Joystiq article “Wii is dead, long live the ‘Vii'”, here.

Imitatio, Emulatio

The Vii seems to have the ambition to improve upon the Wii, by providing bright coloured versions of the device and games, such as Happy Tennis with ‘Hello Kitty’ like figures, that might be better adapted to Chinese consumers’ tastes.

November 8, 2007, Ludwig Kietzmann of Joystiq wrote about the first time the Vii games were caught on YouTube, see here. Now, there are much more videos, including No Way Vids! who is bashing the Vii using explicit language, see here.

Lessons learned

Global players, can take a look at Nintendo’s experience:

  • Launch your product in every country at the same date;
  • If you build up a hype you have to be able to supply demand afterwards, to suck out the air for counterfeiters;
  • Listen to the market needs and keep improving and differentiating your product all the time;
  • Register trademarks, design rights and patents in countries where you can expect infringements (including China) and enforce infringements fiercely (including China).
UPDATE:  Only now (11 January 2009) I came across the following post of Rick Martin of CNET Asia’s Little Red Blog that suggests that at least the inside of the consoles are very different: ‘Nintendo’s Wii versus China’s Vii: it’s what’s inside that counts. 
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China Bad News For Thailand’s Counterfeit Manufacturers

Posted on November 28, 2007 by Dr. Danny Friedmann

Jeffrey Sheban wrote another insightful article about the counterfeiting industry, entitled ‘Thailand’s counterfeit pipeline’ for the Columbus Dispatch. Don’t worry, IP Dragon has not lost its focus on IP in China. Mr Sheban observed that Thailand is the hub for Chinese counterfeit products.

Rusty Lerner, who runs Quantico Ltd., one of the largest private investigation shops in the region says: “China has taken over most of the manufacturing (of legitimate and illicit goods) because the labor there is just so cheap,” he said. While Cambodia, Laos and Myanmar have plenty of factories, those countries increasingly serve as conduits for Chinese-made goods pouring into Thailand. Ray Tai, a Hong Kong-based lawyer responsible for policing adidas brands in Asia, can attest to the recent change. “They all have their counterfeit goods, but in the past couple of years, the Chinese counterfeiting machine has basically wiped them off the map.”

Read Sheban’s article here.

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