It was the work trip of a lifetime. I joined 300 Chinese judges — from lower provincial courts to the Supreme People’s Court — to study intellectual property law as part of China’s National Judge’s College. I was in unbelievable company. Besides the incredibly accomplished Chinese Supreme Court justices and other distinguished Chinese jurists, I joined experts Mike Remington (copyright law) and Federal Circuit Chief Judge Randall Rader (patent law) to talk about new developments in U.S. trademark law. Suffice it to say, I count myself lucky to have been part of the program.
Mike Remington’s presentation
My talk focused on three main issues: pending legislative efforts to address foreign counterfeiters (including PIPA, SOPA, and OPEN), trademark bullying, and standards for online liability as reflected through Tiffany v. eBay and Rosetta Stone v. Google (slides here). That’s what I helped bring to the table.
More interesting was what I took away:
- China’s commitment to developing best practices in intellectual property law is impressive. Three hundred judges attended the program and worked ten-hour days for seven straight days. Seven straight days! Including all day Saturday and Sunday. China’s IP docket is bursting at the seams, and its judges are highly motivated to make sure they get things right.
- They’re hungry for information. My slides were translated and circulated before my talk. I got engaging questions. One judge said “everyone” in the audience had read Chinese translations of the Tiffany and Rosetta Stone cases my slides signaled I was going to discuss. A Supreme Court justice said Chinese judges would consider more American decisions if more were available in Chinese. Note to the U.S. government: if you want to influence thinking in the Chinese judiciary, translate important U.S. cases into Chinese. This also presents an opportunity for universities. Chinese judges want to know how we approach cutting-edge IP issues. We should respond to their eagerness by making our decisions easy to access.
- Chinese IP judges are struggling with the same IP issues our courts are struggling with. One judge commented that China has decided cases involving online auctions and keyword advertising similar to Tiffany and Rosetta Stone. With a huge IP docket, it’s no wonder China’s top judges are at the intersection of law and technology much like some of our judges are here.
- I received a few comments about Tiffany and Rosetta Stone. The Eastern District of Virginia’s Rosetta Stone decision — which found Google not liable for direct or indirect trademark infringement even though it made the sale of counterfeit goods more efficient — built on the Second Circuit’s Tiffany decision, which found that eBay’s response to Tiffany’s counterfeiting complaints was reasonable under the circumstances. Interestingly, at least a handful of judges found the cases sufficiently different as not to warrant similar treatment. In their view, eBay for practical purposes can’t control what third parties sell on its site (as the Second Circuit largely found), but Google is different. They argued that Google sells its own product — advertising — and, therefore, it should be charged with a greater responsibility commensurate with its ability to exercise greater control over the product it sells. I personally don’t agree with that view — I see Google’s position as being pretty close to eBay’s — but think they make an interesting point.
- Finally, though folks were too polite to point it out, the U.S. is on shaky ground with respect to the famous trademarks doctrine. We’re pushing China to adopt the doctrine in order to protect well-known U.S. brands in China that aren’t registered (and, therefore, don’t have trademark rights there). From what I gather, China has started to offer the protection our brand owners want. Yet, the U.S. itself does not recognize this doctrine. At least not in the influential Second Circuit, which in ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007), rejected the doctrine asserted by a famous Indian restaurant with no U.S. presence against a copycat restaurant that opened in New York. The Second Circuit held no U.S. trademark rights means a foreign trademark owner can’t prevail here — precisely the opposite conclusion we’re encouraging China to adopt. Our efforts would seem to be a lot more persuasive if we were able to lead by example!
The Asia Foundation and U.S. Agency for International Development (U.S.A.I.D.) funded the program, along with the Supreme People’s Court. All three organizations have the right idea. We have a lot to learn from each other, and what better way to develop best practices in addressing new IP issues than by sharing our experiences?
(Photo by STL)