International Intellectual Property Protection and Enforcement

September 19, 2014

• Flor M. Colón, Associate General Counsel, Xerox Corporation

• Noni Ellison-Southall, Assistant General Counsel, Turner Broadcasting System, Inc.

• Devika Kornbacher, Attorney, Vinson & Elkins LLP

Introductions

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• Types of Intellectual Property– Trademarks (including domain names)– Copyrights and other works of authorship– Patents and patent-related rights– Trade secrets

• International Protection of Your Brands

• International Protection of Your Works

• International Protection of Your Inventions

• Enforcement Principles

Discussion Points

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• A “trademark” is a word or a logo used to identify the source of goods

• A “service mark” is a word or logo used to identify the source of services

• A “trade name” is a word or words that used to identify the owner’s business (as distinguished from its goods and services)

Trademarks

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• “Trade dress” is the visual characteristics of a product (color, size, shape, etc.) used to identify the source of goods

• The underlying rights in and toa trade name, a trademark, a service mark, or trade dress areterritory specific and acquiredthrough use in the marketplaceor filing, depending on jurisdiction

Trademarks

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• “Reserved” through a registrar – Neither reservation nor registration requires actual use in commerce

• Registrars governed by the Internet Corporation for Assigned Names and Numbers (ICANN), which operates the Internet Assigned Numbers Authority (IANA)– ICANN has international reach but is in the U.S.

• Registration of one top-level domain (e.g., “.com”) does not include other top-level domains (e.g., “.br” or “.ca”)– Certain top-level domains are restricted to certain types of

organizations (e.g., “.gov” is limited to U.S. governmental entities)

Domain Name Registrations

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• In the U.S., trademark law governs domain name disputes

• Internationally, trademark owners can also demand arbitration pursuant to the Uniform Policy for Domain Name Dispute Resolution (UDRP)– UDRP is also overseen by ICANN

Domain Name Disputes

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• Governed by country specific statutes in view of Berne Convention– U.S. did not become a party to the Berne Convention until 1989; 102 years

after the convention’s creation

• Applies to original “works of authorship” fixed in a tangible medium, for example:– Literary works (books, articles, software)– Dramatic works (plays) – Audio-visual works (musicals, movies, music scores)– Paintings, sculptures, choreographic works, architectural plans– Compilations of other copyrighted works

• Digital qualifies as tangible, not just “hard copy” or “print”

Copyrights

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• Facts, ideas and functional aspects of software are not protected

• In general, a copyright owner owns five exclusive rights:– Copy, distribute, modify, perform, and display.

• Ownership is determined by law unlessmodified by contract (where suchmodification is permitted)

• Term depends on country specific statutes

Copyrights

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• Moral Rights: A translation of the Frenchterm “droit moral,” the term refers to theability of authors to control the eventualfate of their works – Limited in the U.S.– Recognized more often internationally

• Database Rights: Recognize the investment made in collecting data or other materials, arranging them in a systematic or methodical way, and making them individually accessible by electronic or other means.– Does not protect the software for collection, arrangement, or access– In the U.S., not recognized apart from copyright

Other Works in Rights of Authorship

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• To be patentable, an invention must exhibit utility, novelty, and be non-obvious (U.S.)/ have an inventive step (Europe)

• Patentable subject matter depends on jurisdiction. In the U.S., the following are patentable:– Articles of Manufacture– Processes– Compositions of Matter– Machines– Improvements

Patents

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• Inventorship can be different than ownership

• In March 2013, the U.S. joined the rest of the world in becoming a “first to file” instead of “first to invent” jurisdiction

• Does not confer a right to necessarily do anything– Only a right to prevent others from making, using, selling, offering for sell, or

importing the claimed invention

• Can file internationally through PatentCooperation Treaty (administered by the World Intellectual Property Organization)

Patents

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• Supplementary Protection Certificates (EU version of PTE)

• Statutory Invention Registrations (no longer available)

• Industrial Design Rights (UK/EU version of design patent)

• Mask Works Rights (for semiconductor chips only)

Other Patent-Related Rights

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• In the U.S., the definition of a trade secret depends on the state

– “...any formula, pattern, device or compilation of information which is used in one’s business and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.” • Restatement of Torts, § 757, comment b (Texas and New York)

– “information that derives independent economic value from not being generally known that is the subject of reasonable efforts to maintain its secrecy”• Uniform Trade Secrets Act (UTSA) (enacted by forty-six states)

• Internationally, the definition of a trade secret also varies by jurisdiction– Most definitions require economic value/competitive advantage

Trade Secrets

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• Trade secrets, unlike patents, do not give the owner of trade secret rights against the world but only against those who breach confidence or steal the secret

• Trade secret owner cannot exclude others from independently developing and using the information

• Protection lasts as long asthe information is secret

Trade Secrets

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International Protectionof Your Brands

Practical Pointers

• There are four practical tips to ensure international protection of trademarks:– Register– Monitor and protect– Use the trademarks properly and educate others to do

the same– Protect/enforce

International Protection of Your Brands

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• An owner must register its trademark in every country where it intends to use the mark (directly or via license)– Provides the owner the most control over the use of the

mark by others

– Prevent others from registering the mark or one that can be deemed confusingly similar

– Provides the strongest basis for challenging the unauthorized use of the mark

• Know the applicable laws (“first-to-file”; “first-to-use”)

Registration of the Trademark

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• Put in place a healthy monitoring program so that you are aware of any infringing conduct and can react quickly

– Internet surveillance – look for unauthorized use of the TM (name or logo) on a website or domain name (e.g., xeroxcopiers.com)

– “Watch notices” – monitor trademark applications for the same mark or confusingly similar marks (e.g., Xeros or Cerox)

Monitor and Police the Trademark

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– Recordations – record/file the TM with customs where you suspect counterfeit activity may occur (e.g., China, Brazil)

– “Boots on the ground” – make sure that your local employees and channel partners are vigilant about the use of the TM locally and report misuse when they see it• Best ambassadors of the Xerox TM in over 160

countries• E.g., use of “xerox” in Brazil dictionary

Monitor and Police the Trademark

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• Absolutely critical that the owner uses the TM properly in every country – Every employee– Every licensee– Every written communication– Every ad/marketing campaign– Every time!

• Adopt policies that address the protection of the TM

Use It Properly and Educate

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• Engage in trademark education advertising campaigns (domestically, globally, internally and externally), especially if you suspect or know about misuse– Xerox started taking steps to protect its mark early on

and by 1972 the company was aggressively protectingthe Xerox trademark

– Educational efforts were widely publicized which helped tell the company’s story (e.g., articles were written about the Xerox ad campaigns)

– Ads were educational, but adopted a humorous tone (more likely to be achieve objective)

Use It Properly and Educate

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• Don’t tolerate the misuse of the mark by third parties and have a process in place to deal with violations– Send cease and desist letters for commercial misuse

followed by administrative or court proceedings for ongoing infringement

– Send “friendlier” letters/notices in instances of innocent misuse (e.g., misuse by public figures)

– File formal oppositions to trademark applications

Protect the TM and Enforce Your Rights

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International Protectionof Your Works

An Entertainment Industry Perspective

• Similar to trademarks, once it is confirmed that the copyright owner has the necessary rights in a particular jurisdiction, the owner can deploy commonly adopted procedures to enforce its copyrights:– Send cease and desist letters– Report to the relevant IP authority– Use Alternative Dispute Resolution (ADR)– Bring a civil claim– Seek punitive damages– Urge prosecution of criminal offenses

International Protection of Your Works

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• Before reporting the matter to the relevant IP authority or commencing any legal action against a copyright infringer, it is advisable to issue a cease and desist letter to the infringer– Although this is not a legal requirement, it is highly

recommended

– The letter will help to identify theissues in dispute and establishwhether litigation can be avoidedby resolving the issues through other means, for example, mediation or arbitration

Send Cease and Desist Letter

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• If a copyright owner has concerns or is aware of any persons that may be infringing its IP, then it would be advisable to report the matter to relevant IP office in the respective country– For example, in the UK, report is made to local Trading Standards

Office and/or the anonymous reporting system of the charity CrimeStoppers, and Action Fraud

– The information provided to the Trading Standards Office may be passed on to other bodies with the power to take action against the trader (e.g., the Competition and Markets Authority, the police and the courts service)

– In Hong Kong, report is made to the Customs and Excise Department – the only department responsible for taking criminal sanctions against copyright and trademark infringements in the SAR

Report to the Relevant IP Authority

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• “ADR” refers to methods of resolving disputes without having to going to court

– The most common forms are arbitration and mediation

– Intellectual property disputes are frequently resolved on the basis of expert opinions

Use Alternative Dispute Resolution (ADR)

• The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center is a neutral, international and non-profit dispute resolution provider– Offers arbitration, mediation and expert

determination services for the resolution ofcommercial disputes between private partiesinvolving intellectual property

– The procedures are open to any person orentity, regardless of nationality or domicile

– The proceeding may be held anywhere in the world, in any language and under any law chosen by the parties

Use Alternative Dispute Resolution (ADR)

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• Legal action for IP infringement can be brought under statute and common law for IP infringement

• In some cases, issuing a cease and desist letter (as mentioned above) may not be the best way to deal with suspected infringement, because an infringer may choose to hide or destroy evidence– In these circumstances it might be appropriate to

go to court to apply for an interim injunction withoutgiving notice to the infringer

– An interim injunction is an order that the allegedinfringers stop their infringing action pending theoutcome of a trial (which can take many months)

Bring a Civil Claim

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Other Interim Relief

• Anton Piller Order– Enables the infringers’ premises to be searched for

documentation and evidence relevant to the infringement (e.g., details of purchasers or suppliers), which may otherwise be destroyed if the infringer is put on notice of the infringement

– Applied for on an ex parte injunction basis– Compels infringing party to attend subsequent court

hearing, where court decides whether to continue the injunction until trial

Bring a Civil Claim

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Other Remedies

• Apart from interim relief, there areother remedies available in copyright infringement actions– Final injunctions– Damages for loss suffered and account

of profits gained by the infringing partyat his expense.

– Attorney’s fees (U.S.)

• In some cases, the court may alsoorder additional damages to be paidby the infringing party to the copyright owner

Bring a Civil Claim

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• Punitive damages are sometimes granted depending on the conduct of the infringing party

– Reflects the aggravation, harm and damage to the copyright owner as a result of the other party’s unreasonable and deliberative wrongful conduct

– For example, in Hong Kong, under sections 108 and 221 of the Copyright Ordinance (Cap. 528) factors to be considered in awarding punitivedamages include:• flagrancy of the infringement• completeness, accuracy and reliability

of the infringing party’s business accountsand records

Punitive Damages

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• In certain countries, infringement of IP rights can be criminal offences (as well as being actionable in civil law)

• In Hong Kong, besides civil relief, criminal proceedings are also available – The Customs and Excise Department is responsible for enforcing the

criminal aspects of copyright infringement and trade mark counterfeiting, it has expensive powers of search and seizure and may co-operate with overseas authorities and rights owners to combat infringement

– Criminal provisions for trade mark counterfeiting and copyright infringement are found in Trade Descriptions Ordinance (Cap. 362) and Copyright Ordinance (Cap. 528)

Criminal Offenses

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• In Singapore, criminal proceedings are available in respect of infringing acts defined as offences under the Copyright Act and Trade Marks Act– In addition, the court may order any infringing copy or article in the

possession of the alleged offender or before the court, which has been sued for making infringing copies, to be destroyed or delivered to the copyright owner

• In the UK, the main recourse for a rights owner is to bring civil infringement proceedings. In certain circumstances, criminal proceedings may be available where there is copyright infringement (sections 107 and 198 of Copyright, Designs and Patents Act 1988) or trade mark infringement (section 92 to section 96 of Trade Marks Act)

Criminal Offenses

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• Turner’s licensing partner in China provides a list of offending sites that contain/offer Turner’s Falling Skies Seasons 1-4 (see example below). Turner assists in addressing the piracy issue by sending those sites legal take down notices

Enforcement Examples

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• Unauthorized translated (Turkish) version of Cartoon Networks’ Regular Show on YouTube:

Enforcement Examples

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• Turner’s anti-piracy vendor Irdeto Intelligence monitors the most popular UGC sites (e.g., YouTube, Dailymotion, Vimeo, and up to approximately 20 others)

• Irdeto uses their expertise in the industry to determine what sites to monitor and when to add new sites (unless Turner specifically brings one to their attention)

• Generally, once Irdeto finds potential infringements, the videos are reviewed for compliance with rules provided by Turner (based on duration and types of acceptable edits/mash-ups, etc.)

• Irdeto then sends DMCA take-down notices to the sites hosting the videos to be removed

Infringement/Enforcement Examples

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International Protectionof Your Inventions

• Same basic principles as protecting trademarks and copyrights:– Obtain rights– Monitor/identify infringing use, exportation, etc. – Send cease and desist letters– Bring claims (e.g., in court or through arbitration)– Seek injunctions and punitive damages

International Protection of Your Inventions

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• Patent Cooperation Treaty– Allows deferral of decision on protection in member jurisdictions for

30 months– Requires unity of invention

• Some jurisdictions (e.g., Brazil) require registration of license rights

• Consult local counsel to ensure acquisition of rights (via contract, etc.)from local employees and consultantsthat are hired to invent

Obtaining Rights

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• Must have evidence of infringement of each and every element of patent claim(s)– Local agents/distributers provide market information

• Federal Patent Court in Germany has become a popular jurisdiction for enforcement of patent rights– More than half of Europe’s patent litigation cases are handled by German

courts– Relatively low litigation costs

• European Patent Office is considering aunified patent court, awaiting ratification byat least 13 member countries

Bringing Claims

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• International Trade Commission (ITC) is a popular venue for enforcing U.S. patent rights against importation by international infringers and those who sell those infringing imported goods– No monetary damages awarded, but can obtain

• Cease and desist order against sellers of infringing goods

• Limited or general exclusion order against infringing importers

– Faster decision than federal court

Bringing Claims

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• Judgment/arbitral decision is only as valuable as the ability to enforce it

• May have better chance of enforcementof judgment when patentee/exclusivelicensee is local (but tax benefits may counsel against local ownership)

• Injunction against exportation, manufacture and marketing, not just use

Remedies

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Questions?

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• A Guide To Proper Trademark Use For Media, Internet and Publishing Professionals:http://www.inta.org/Media/Documents/2012_TMUseMediaInternetPublishing.pdf

• The International Chamber of Commerce (ICC) Intellectual Property Roadmap, 12th Edition, 2014: http://www.iccwbo.org/Products-and-Services/Trade-facilitation/IP-Roadmap/

• WIPO Intellectual Property Handbook: Policy, Law and Use, Chapter 4, Enforcement of Intellectual Property Rights: http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch4.pdf

Other Resources

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