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Copyright
The Legislative Yuan (Taiwan’s Congress) passed the Partial Amendment to the Copyright Act on April 21, 2009, titled “Internet Service Provider (ISP) Liability Limitation Bill,” which includes two key points with great impact: the so-called “safe harbor provision” and the “three-strike provision”. In 1998, the U.S. Congress enacted “Digital Millennium Copyright Act (DMCA)” which exempts ISPs that meet criteria set forth in the safe harbor provisions from liability of copyright infringement. Following the trend, Asian neighbors such as Japan, Korea and Singapore had all amended laws to impose ISPs a duty of care to users’ on-line activities via their Internet service, so as to shield ISPs from the risk of copyright infringement. Taiwan’s legislative action in this respect appears to be relatively slow. The United States had been paying much attention to the progress of the draft “ISP Liability Limitation Bill”, and the government’s effort in passing the bill was one of the key factors that removed Taiwan from the US Trade Representative’s Special 301 Watch List earlier this year.
- “Safe Harbor” Provision - Notice & Takedown
The biggest problem having long plagued ISPs in this country is that, users post unauthorized work or disseminate others’ copyrighted work via ISP’s service, which frequently causes the ISPs to become a co-defendant in copyright infringement lawsuit.
The provision mainly requires ISPs to undertake the procedural responsibility in exchange of its exemption of infringement liability. The copyright-holder should take steps to notify the ISPs of the infringing contents. As long as the ISPs receive notification from the copyright-holder, it shall respond expeditiously to notify the Internet user, and remove or disable access to the allegedly infringing contents. The “safe harbor” provision will exempt the ISP’s of civil liability for copyright infringement for the ISPs who do not have knowledge of the allegedly infringing activity, do not receive a financial interest attributable to the infringing activity and who are in compliance with the notice and takedown duty. In the event that the ISP fails to perform this duty of care, it will be liable as civil accessory even though it will not be criminally charged.
The ISP’s notice & takedown obligation aims to curb on-line infringements and prevent illegal information from spreading on the Internet. To include this provision to the Copyright Act, the TIPO held eight public hearings and made an effort to persuade the ISPs to comply. The duty imposed on ISPs apparently will increase their workload and expense either in hardware or software resources.
- “Three-strike Provision”
The “ISP Liability Limitation Bill” also stipulates a so-called “three-strike provision”, which enables ISPs to set up standard contracts with Internet users to restrict the latter in the use of ISP service. Where an Internet user has been alleged of infringement three times by the right-holders (or less, to be more vigorous than the provisions of the Copyright Act is not in breach of the law), ISPs shall have the right to terminate its service provided for the user in whole or in part, such as to suspend the Internet connection or delete the account of the user.
- “Put Back” Provision
The bill also provides a measure to safeguard the legitimate user’s rights and interests. After the allegedly infringing user receives the notice from the ISP, if they deem themselves not infringing, the user may send a counter notice to the ISPs with a request to restore the removed content or restore the access to it. The ISP shall immediately forward this notice to the copyright-holder and the copyright-holder is obligated to provide the ISP the proof of taking criminal or civil actions against the same user within 10 days. If the copyright-holder fails to do so, the ISP shall restore the removed content within 14 days to safeguard the legitimate interests of the Internet user.
“The principle of Notice & Take Down is a win-win-win provision”, said TIPO/Deputy Director General, Ms. Margaret Chen. This is because on-line infringement spreads extremely fast. To effectively save time to curb on-line infringement, ISPs are merely expected to accept and respond to the instructions from right-holders and Internet users, and do not need to make judgment of whether actual infringement has occurred or not. Even if the Internet user has committed infringement, the ISP will not be liable for civil damages as a matter of consequence. The Amendment to the Copyright Act hence effectively reduces ISPs’ risk of being sued for infringement and is favorable to the development of the Internet industries.
After the bill is promulgated, the TIPO will continue to advocate them to ISPs and will arrange explanation to the Intellectual Property Court.
Feature
Mainland China promulgates the Detailed Working Rules on Recognition of Well-known Trademarks and Related Judicial Interpretation
For a long time, mainland China has faced a problem of flooding in recognition of well-known trademarks. For the purpose of reforming the recognition standards of well-known trademarks, the State Administration for Industry and Commerce of mainland China promulgated the Detailed Working Rules of the State Administration for Industry and Commerce on Recognition of Well-known Trademarks (hereinafter “the Detailed Rules”) on April 24, 2009 and is implemented as of the date of promulgation.
The Detailed Rules list the factors and evidential datum that shall be considered in recognizing well-known trademarks in the procedures of trademark administration, examination and opposition, as well as in the re-examination procedures.
In response to the stipulations of the Detailed Rules, the Supreme People’s Court further promulgated the Interpretation on Several Issues concerning the Application of Laws in Adjudicating Civil Cases Involving Well-known Trademarks Protection (hereinafter “the Interpretation”), to be implemented as of May 1, 2009.
With respect to the factors that shall be considered in recognizing a well-known trademark, Article 10 of the Interpretation points out:
“Where the plaintiff claims to prohibit the defendant from using a trademark or enterprise name same with or similar to the plaintiff’s well-known registered trademark in the products not similar to those of the plaintiff, the people’s court shall make adjudication by taking into consideration all the following factors according to the specific circumstance of the case: 1. the extent of distinctiveness of the well-known trademark; 2. the extent of this well-known trademark being known to the relevant public who uses the products of the trademark or enterprise name that is being sued; 3 the extent of correlation between the products of the well-known trademark and the products of the trademark or enterprise name that is being sued; and 4. other related factors.”
The judge of the Intellectual Property Tribunal of the Supreme People’s Court analyzed that, the definition of a well-known trademark as referred to in the Interpretation does not include the element of “the market reputation of the trademark”; rather, it regards “the market reputation of the trademark” as one of the facts to recognize the well-known trademark. The proof of which includes 1. the market share, the regions of sales, profit and taxes of the products using the trademark; 2. the period that this trademark has been continuously used; 3. the method, duration, extent, capital input and geographic scope of the publicity or promotional activities of this trademark; 4. the record that this trademark was once protected as a well-known trademark; 5. the market reputation that this trademark enjoys; and 6. other facts that prove this trademark has already been well-known.”
To prevent the parties in trademark litigations from purely obtaining the judicial recognition of well-known trademarks, the Supreme People’s Court explained that, it becomes necessary to recognize a trademark at issue only when the “well-known trademark” is an essential factual issue that would constitute trademark infringement or unfair competition. The judicial recognition of a well-known trademark is the recognition of fact conducted out of the need for protecting a well-known trademark in an individual dispute. Whether a trademark is well-known or not falls under the scope of factual recognition rather than a legal issue. Therefore, Article 13 of the Interpretation stipulates that, “in the civil dispute cases involving protection of well-known trademarks, recognition of a well-known trademark by the people’s court provides merely the fact of a case and rationale of adjudication, which shall not be written to the main body of the adjudication.”
As to the cases concluded by means of mediation, the Interpretation also stipulates that “the fact of a well-known trademark shall not be recognized in the mediation document” to prevent the interested parties from pursuing recognition of well-known trademark by means of the various judicial procedures.
Mainland China Recognizes Civil Judgments of Taiwan’s Courts
After the Provisions on People's Court's Recognition of the Judgments on Civil Cases Made by Courts of Taiwan (hereinafter referred to as the Provisions) of Mainland China in 1998 entered into effect, the civil judgments made by courts in Taiwan and recognized by the People’s Court in Mainland China shall, in theory, have the same effect as the effective judgments made by the People’s Court in Mainland China. However, the types of civil cases that may apply for recognition in the courts of Mainland China were not specified; it was generally understood in practice that the Provisions only applied to a limited scope that did not cover civil cases related to Intellectual Property.
The Supreme People’s Court of China, on May 14, 2009, announced the Supplementary Regulations on the People’s Courts’ Recognition of Civil Judgments Made by Courts of Taiwan (hereinafter referred to as the Supplementary Regulations), which entered into force upon promulgation. The Supplementary Regulations have expanded the scope of the application for recognition, in addition to civil judgments in a general sense, it specifically includes the recognition of civil adjudications of commercial, intellectual property and maritime cases made by courts in Taiwan. Also, it accepts to recognize decisions of arbitration, mediation and payment order. The most important thing is that the Supplementary Regulations provide a property preservation system for the first time, which will have a dramatic effect on the future cross-strait economic and trading relationship.
The applicants shall bear the burden of proof for the genuineness of the judgment and shall prove that the judgment is final in Taiwan. In addition, to prevent waste of judicial resources due to non-existence of properties in Mainland China upon recognition of the judgment, the Supplementary Regulations also require the applicants to bear the burden of proof for the existence of the property to be executed in order to prevent errors in recognizing Taiwan’s civil judgments.
Therefore, how much impact the new rule will have on the justice of the two cross-strait sides in the future still needs to be observed.
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