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 to

a trade name, a trademark, a

service mark, or trade dress are

territory specific and acquired

through use in the marketplace

or 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 unless

modified by contract (where such

modification is permitted)

• Term depends on country specific statutes

Copyrights

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• Moral Rights: A translation of the French

term “droit moral,” the term refers to the

ability of authors to control the eventual

fate 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 Patent

Cooperation Treaty (administered by the

World Intellectual Property Organization)

Patents

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• Supplementary Protection Certificates (EU version of PTA)

• 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 as

the information is secret

Trade Secrets

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International Protection

of 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 protecting

the 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 Protection

of 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 the

issues in dispute and establish

whether litigation can be avoided

by 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 of

commercial disputes between private parties

involving intellectual property

– The procedures are open to any person or

entity, 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 without

giving notice to the infringer

– An interim injunction is an order that the alleged

infringers stop their infringing action pending the

outcome 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 are

other remedies available in

copyright infringement actions – Final injunctions

– Damages for loss suffered and account

of profits gained by the infringing party

at his expense.

– Attorney’s fees (U.S.)

• In some cases, the court may also

order additional damages to be paid

by 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 punitive

damages include: • flagrancy of the infringement

• completeness, accuracy and reliability

of the infringing party’s business accounts

and 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

41 https://www.youtube.com/watch?v=DRF2WZkcDr8

• 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 Protection

of 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 consultants

that 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 a

unified patent court, awaiting ratification by

at 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 enforcement

of judgment when patentee/exclusive

licensee 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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