Bradley LectureInternational IP Law

IM 350 – Fall 2012Steven L. Baron

November 15, 2012

Top Trends In International IP

• Foreign infringement of U.S. IP.• Trademark – The Chinese … as plaintiffs.• Patent – Harmony.• Copyright – First Sale Doctrine• Trade Secrets – ITC enforcement outside U.S.• Libel Tourism – SPEECH Act

Foreign Infringement of U.S. IP

Foreign Infringement of U.S. IP

Foreign Infringement of U.S. IP

• Impact:– In 2011, U.S. Customs agents seized nearly 25,000

counterfeit goods– Average large company lost $101.9 million in

revenue, incurred $1.4 million to identify and enforce IP rights, leading to average decline in profits of $43.3 million

– Small companies, which comprise 79% of all U.S. businesses, only bring 10.9% of enforcement actions

International Trademark

• Infringement against Chinese companies is on the rise

• Applications by Chinese companies to register trademarks is on the rise

• Increased use of the International Trade Commission to resolve disputes

Trademark

International Patent

• It’s all about “harmonization”• Patent Prosecution Highway at USPTO– speeds up the examination process for

corresponding applications filed in participating countries by allowing examiners to reuse search and examination results.

– More efficient and less expensive

International Copyright

• They are at it again…

International Copyright

• John Wiley & Sons v. Kirtsaeng– Does “first sale” doctrine apply to overseas purchases of

copyrighted works?– “First sale” doctrine generally allows the purchaser of

copyrighted works to re-sell or use the work without the copyright holder’s permission.

– Facts: Kirtsaeng was re-selling on-line Wiley textbooks he purchased overseas for a lower price.

– Trial court and Second Circuit both said that first sale doctrine did not apply to purchases outside of U.S.

– Supreme Court will decide case this term.

International Trade Secrets

• Section 337 of the Tariff Act of 1930 – ITC has had the authority to consider unfair trade

practices – including trade secret misappropriation – involving imported goods

– Question: Does Section 337 authorize the ITC to apply domestic law when the trade secret misappropriation occurred outside the U.S. and articles related to those trade secrets thereafter were imported into the U.S.

– Answer: Yes

International Trade Secrets

– TianRui Group Company v. International Trade Commission, 2011 WL 4793148 (Fed. Cir.)

(1) ITC has authority to consider conduct occurring in foreign countries; (2) ITC should apply federal trade secret law; and (3) a domestic manufacturer can assert a trade secret violation claim even if that manufacturer is no longer practicing the trade secret.The rulings on all three issues favor domestic companies and creates a potential hammer to enhance negotiations and enforcement of trade secrets when sharing technology outside of the U.S.

International Libel - Whose law applies?

• Why does it matter?– First Amendment does not protect publishers

outside the U.S.– Plaintiff’s engage in “libel tourism” (i.e. suing U.S.

defendants in countries with most favorable law.)– Forces publishers to adopt publishing practices

aimed at the least protective jurisdictions.

Whose law applies?

• U.S. Response:– Enactment of SPEECH Act – August 2010• Securing the Protection of our Enduring and

Established Constitutional Heritage Act• U.S. courts will not recognize a foreign judgment in libel

suit unless the judgment was entered under principles consistent with the First Amendment.

Ask Mr. or Ms. IP – International

• Like all true-blue Americans, you like to spend a little bit of time at the Black Jack tables. On your last trip to Vegas, the light bulb went on in your head that you and other “gamers” should be able to play virtual black jack for virtual dollars that can be traded in for premium prizes. You are concerned about the legality of online gaming in the U.S. so with a little ingenuity, you decide to incorporate your company in Barbados, keep the servers off shore and register the domain name www.caesarsonline.com.bb. It’s all pretty easy and a dream come true for you. Just before you fire up the servers for the first time, you think it might be good to check with a lawyer to make sure everything you’re doing is ok.

Ask Mr. or Ms. IP – International

Questions:1. Do you see any potential intellectual property problems,

if so, what?2. If it’s illegal to operate a gaming site in the U.S., have

you immunized you and your company from liability by forming the company off shore and keeping the servers in Barbados?

3. If you continue to live in the U.S. and maintain your permanent residence here, will you or your company be subject to suit and/or criminal prosecution here?

4. What steps would you take to limit your legal liability?