Archive for the 'Luckie' Category

English Abstracts of the Chinese Entries at BlawgDog (Dec. 21th – Jan. 24th)

 

This movie was made by a few Chinese WOW players. The story is well edited and all the episodes are captured from te WOW game. In this remix movie, the story of the dispute between two Chinese governmental departments on the licensing of the WOW and the the players’ rebellion of the electrotherapeutics to the “net-addiction” are narrated perfectly. The controversial electrotherapeutics was invented by a Chinese psychiatrist and supported by some parents. This is a representative work of Remix by grass-roots Chinese netizens. And it is released with CC-By-NC-SA. Watch it at here (I do wish someone may add English subtitles to it).

 

This post is contributed by Mr. Xuhui Chen, a new co-author of BLawgDog and a patent lawyer in China. The essay provides the passing rates of each year’s examination and other detailed analysis.

 

In this issue edited by Luckie Hong, the following news are included: (1) two guys are prosecuted for oporating unauthorized online-game sever of “Audition Dance Battle Online”; (2) A Beijing court ruled that funshion.com infringed copyright by providing downloading; (3) The Measures of payment of the textbooks’ royalties and the Measure of Protection of the Folklores are drafting; (4) Sany group, a major construction machinery producer wins a litigation on its trademark against the figure of “Benz”; (5) Tianjin high technology industry park promulgated a regulation encouraging the endevor of establishing well-known brands; (6) The series cases on the trademark “世界风SHIJIEFENG” was settled by the parties; (7) XGK, a company in Henan province, wins a lawsuit against State Intellectual Property Bureau for its decision of invalitation of the ZL8910393.8 patent; (8) powerdekor, a mojor producer of wood flooring in China, was involved in a patent law suit on its laminate flooring product; (9) Shanghai encourages the application of foreign patent with the maximum of 90,000 RMB financial aid.

 

This post is originally written in English. Click here.

 

This post is translated and extended in English, please click here for the English version.

 

This is a copy of the CNNIC’s notice requesting ISPs stopping to resolve the domain name which are not recorded in Ministry of Industry and Information Technology’s website registration/licensing system.

 

The Hong Kong government proposed a new version of the Proposals for Strengthening Copyright Protection in the Digital Environment. Xie Lin and Donnie co-authored this short post, which briefly introduced the content of the new proposals.

 

In this issue edited by Luckie Hong, the following news are included: (1) Google apologized openly for the first time in the copyright dispute between Google and Chinese authors; (2) A US software firm sues China for 2.2 billion dollars for using its copyrighted software in the Green Dam; (3) 50% increase of the copyright registration in China, 2009; (4) Hanwang, a Chinese company finally agree to sell the “iPhone” trademark to Apple; (5) Hengyuanxiang, a major Chinese woolen provider, was trapped in a trademark dispute on the “figure of a Sheep”; (6) the tademark of “Pierre Cardin” was finally selled to a Chinese company for 37 million euro; (7) A Fujian firm won IP lawsuit against FKK, a Japanese chemical giant; (8) A patent dispute about Mercury-free batteries falls into a vicious cycle; (9) RichtekTechnology, a Taiwan firm, sued AMD and other 5 US companies for patent infringement

 

 

 

 

In this issue edited by Luckie Hong, the following news are included: (1) Zhejiang Higher Court promulgated a guide for hearing the online copyright disputes; (2) A case on the popular book “Mawen’s War” was ruled in Nanjing; (3) The appealing case on the copyright of electronic navigation map in China (the first one in China) was ruled by Guangdong Higher Court; (4) the exposure draft of the new trademark law was submitted to the Legal Affairs Office of the State Council; (5) Google sent a lawyer’s letter to an individula who is raising an objection to the trademark of Google’s Chinese name Guge (谷歌); (6) Beijing No.1 Intermediate people’s Court affirmed the validity of Judger Group’s (a Zhejiang-based garment enterprise) trademark of GEORGE and its figures; (7) The “Interpretation of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases” was promulgated by the Supreme People’s Court; (8) the new IMPLEMENTING REGULATIONS OF THE PATENT LAW OF THE PEOPLE’S REPUBLIC OF CHINA was passed by the State Council on 30 Dec. 2009; (9) Unilin loses its acts against patent infringing products of Yekalon in Germany.

 

This post firstly briefed Donnie’s definition of “Public Domain” in the context of Chinese copyright law in his PhD dissertation at China University of Political Science, then introduced the idea of “public domain day” on each January 1st for at this day, many works will fall into the public domain every year. Lastly, the post discussed some famous/interesting Chinese works that will be fall into the public domain since Jan. 1st, 2009.

 

In 2009, 170 entries are published at BLawgDog (including 38 English ones). Among them, Donnie contributed about 120 posts, other co-authors contributed about 40 ones. Then this article highlighted a few interesting posts during the year.

 

I annouced a very quick survey to Chinese twitter users: whether they are living abroad or inside of the GFW. 88.46% responed they stay in China. For the question “if you live inside of the GFW, are you use twitter frequently”, 70.21% said yes they are. For the question “if you live outside of the GFW, after going back to China, will you use twitter frequently”, 52.94% said yes, but 23.53% said he/she will use twitter only when she/he is out of GFW. For the question “Ask 5 of your QQ buddies randomly, how many of them are using twitter.” 53.85% of the respondent said none of their 5 QQ buddies is using twitter, and only 1.92% said all of the 5 QQ buddies are using twitter too.

 

Writen and edited by Luckie Hong, a co-author of BlawgDog, reporting the latest news in IP Law. This issue includes: (1) the promulgation of China’s new Tort Law, in which the ISP’s liability was eventually coded in a questionable way; (2) China association of literature copyright said Google has illegally scanned over 80,000 Chinese books; (3) Taiyuan intermediate peoples court in Shanxi Province issued a warrant of seizure to a karaoke bar for copyright infringement, which is the first time on mainland China; (4) the National Trademark Review and Adjudication Board petitioned to the Supreme Court for the Beijing Court’s rulling of its decision on the “Daohuaxiang” trademark; (5) the dispute of the trademark of *ST Sanlian (SH.600898) will be ruled soon; (6) JNJ (Johnson & Johnson) lost the case on the “Caile” trademark in China; (7) A Newyork listed Shenzhen company was sued for a patent infringement, the damages claimed by the plaintiff was 175 million RMB; (8) Aigo and Netac settled the patent dispute on USB flash drivers; (9) Up to 7 Dec. 2009, the annual number of patent granting is 3007,636.

 

This essay reviews the usage of the term “use” in China’s current Copyright Law, and find its definition is hightly confusional, which leads the uncertainty “individul use” in the list of limitations to the copyright in Art. 22 of the Copyright Law.

 

This post questioned the legitimacy of issuing a warrant of seizure to Karaoke bars for the reason of copyright infringement, which was happened in Taiyuan, the capital city of Shanxi Province.

Internet Search Engines and Trademark Rights

Internet Search Engines and Trademark Rights
By Luckie HONG
Published at China Law & Practice, March 2009

Google and Baidu have become household names in China. Both companies provide internet search services, and both now offer keyword advertising programmes. Under these programmes, companies can purchase certain keywords – when a user searches for these words, targeted advertising is displayed, often in the form of links to the companies’ own websites.
Recent cases from the Courts of PRC in Beijing, Guangzhou and Shanghai have again raised questions relating to keyword advertising programmes. The issue at stake is whether the purchase or sale of keywords that constitute the whole or part of another party’s registered trademark can be classified as trademark infringement under Chinese law.
RIGHTS OWNERS DEMANDING ACTION
Trademark holders are now challenging keyword advertising in China; such challenges have also been made in other jurisdictions worldwide for a considerable time. As far back as 1999, the United States Court of the Ninth Circuit issued an opinion in Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), in which the Court intimated, based on the plain meaning of the Lanham Act, that the purchase of search terms is a use in commerce and furthermore constitutes trademark infringement after the likelihood of confusion analysis.
The Paris Court of Appeal held in 2006 that Google’s practice of selling certain words as triggers for sponsored advertisement amounted to infringement of Louis Vuitton Malletier’s trademark. Google appealed, and the French Supreme Court has referred questions on keyword advertising to the European Court of Justice for a preliminary ruling.
There have been a significant number of cases in the US and EU in connection to keyword advertising. This has caused rights owners in China to worry about their interests in this new context. On the other hand, rights owners can not ignore the huge impact of the new kind of online advertising among young Chinese consumers: Nielsen, a market research company, estimates that online advertising revenue in China in the third quarter of 2008 grew 42% from a year earlier to Rmb3.72 billion (US$543 million). This rate was more than double the growth in spending on television, newspaper or magazine advertising.
Before making important decisions as to who to sue, and where, it is important for legal practitioners advising rights owners to examine the legal frame and recent cases.
PREVIEW OF LEGAL FRAMEWORK OF PRC
The two parties involved as rights owners’ opponents in issue are the companies purchasing keywords and the search engines providing advertising programmes, namely “subscribers” and “providers” of the keyword advertising. Under the current Trademark Law, different regulations apply on these two parties:
Article 52 of the Trademark Law prescribes that, one form of infringement on the exclusive rights over a registered trademark is “using a trademark that is identical with or similar to the registered mark on the same or similar goods without permission of the owner of the registered trademark. To define furtherly the meaning of “using”, Article 3 of the Trademark Implementing Regulations illustrates that the using of a trademark in advertisement or promotion is included in the scope of “using” referred in the Trademark Law. Should the keyword service be classified as a form of “advertisement”, the subscribers are subject to the review of the Trademark Law.
On the other hand, the legitimacy of providers’ sale of keywords is dependent on a different basis. Article 50 of the Regulations prescribes that, “to intentionally provide any other person with…, and other convenient conditions” shall be an act of infringement of the exclusive right of a registered trademark. Thus it can be said that, in the case the subscriber of the keyword advertising unduly use the term included in a registered trademark, the advertising service provider who did not fulfil its duty of care should also bear the infringement liability.
The space for discretion left to China’s courts is mainly on the two issues. The first is whether the new arising keyword advertising programme falls into the range of the “advertisement” set out in the Regulations, and the second is to what extent the search engines should take the duty of care in running their keywords business.
BUYING TRADEMARKED WORDS TRIGGERING UNFAIR COMPETITION
In one case, the plaintiff, Jijia Intellectual Property Agency, initially sued rival company Guang Lixin IP, along with Google, for unfair competition in violation of the PRC Anti-unfair Competition Law. The action pertained to the purchase and sale by Guang and Google of trademarked terms belonging to Jijia. The terms were used as keywords which triggered so-called sponsored links on Google’s search results pages. Jijia complained in addition of the intentional passing off caused by Guang: the website to which users were directed by the sponsored link was designed using a similar colour, style and organisation. It also contained identical pictures and introductory text to those used on Jijia’s own site.
After the court accepted the case, Jijia withdrew its complaint against Google. This left Guang alone to confront indictments over purchasing keywords as well as misusing pirated content on its website.
Among other things, the district court at the outset examined the fact pattern regarding “keyword advertising” or “sponsored links” involved in Jijia case, and eventually held in the plaintiff’s favour. The court’s views were, in summary, that:
a) the sponsored link used here by Google is a new kind of advertising service in which the client can fulfil its marketing strategy by purchasing keywords which enable its website address to appear at the top of the search results page;
b) a real competition relationship exists between the plaintiff and the defendant;
c) the sponsored link wrongly directing users proves the bad faith of the defendant through exploiting the plaintiff’s brand reputation for commercial purposes, and meanwhile drives traffic which ought to be the plaintiff’s potential clients to its rival through a fraudulent channel; and
d) this conduct violates the Good Faith Principle and widely accepted business morality, and should be found as an unfair competitive activity.
On the basis of the above grounds, the court ruled against the plaintiff and awarded damages of Rmb100,000 to Jijia.
SPLIT OF AUTHORITY ON SEARCH ENGINE LIABILITY
In a 2008 case from Guangzhou Baiyun District, the Court analysed a similar fact pattern to that in Jijia and intimated that the function of Google’s AdWords service was to help users conveniently discover links to those enterprises or merchants who have purchased keywords from search engines, saying to bring more users’ attention to the business information belonging to the service subscribers. In conclusion, the alleged infringing conduct in nature should be held a new kind of advertising activity through certain medium in the unauthorised way in which the plaintiff owned trademark was used in commerce.
Interestingly, Guangzhou Court found that Google, which was also the joint defendant in that case, did not have the ability of editing or monitoring the internet information entered by a subscriber to the company’s AdWords service, and hence Google should not bear the duty of care to the information in dispute. Accordingly, the Guangzhou Court found Google innocent of trademark infringement in the context of a keyword service.
Ironically, in an even earlier case, another large search company, Baidu, had confronted the completely opposing stand of Shanghai No.2 Intermediate Court. The Shanghai Court concluded that in the case where a third party used another’s trademarked words without authorisation, Baidu did not duly perform its duty of care and hence should be imposed with a civil liability. In addition to the injunction order, the Court awarded damages of Rmb50,000 against Baidu for its joint infringement.
To sum up the common ground on which the two courts are standing, it can be said that Shanghai and Guangzhou both hold that the purchase of keywords falling in the scope of another party’s  exclusive right over the trademark perpetrates trademark infringement. Infringement is not only limited to the range of unfair competition stated by the Beijing Court. However, the law is divided here on the issue of whether the search engine’s sale of keywords, or the advising service, should be found to be infringing. Shanghai said yes, but Guangzhou’s answer was no.
LESSONS LEARNT
The examination of the three cases above reveals that the Chinese courts have not yet reached consensus on issues including the duty of care of a search engine which provides a keyword service, and the application of joint infringement theory to relevant cases. In the absence of guidance from a higher level, some lessons can be learnt on the basis of court practices observed until now in China.
The first clue is that, feeding off the hot debate in US and EU on what constitutes “use in commerce” for purposes of trademark infringement in the context of internet usage, China’s courts hold a common view that keywords are a new type of advertising under the regulation of the Trademark Law. At the same time, the Anti-unfair Competition Law also provides a legal basis for a rights claim.
The second suggestion is regarding rights owners and their choice of against whom they should claim their trademark rights: the service users or the service providers (the search engine companies). The stories in Beijing, Shanghai and Guangzhou all show that if the subscriber to a keyword service can be confirmed, and their keyword usage is established to be unauthorised and causing actual confusion or likelihood of confusion among consumers, then the best choice is to pursue the service user.
The third implication is the possibility of forum shopping for the rights owners. In cases where the subscribers are not easy to locate, or where they are incapable of paying damages, the plaintiff can only pursue the search engines to obtain relief from trademark infringement. The winner in any such dispute seems to be wholly dependant on the forum. Judging by the limited disclosed cases in China, rights owners should prefer Shanghai to other jurisdictions.