[pp.int.general] Fwd: [The IPKat] Lock them up or make they pay?

Amelia Andersdotter teirdes at gmail.com
Fri May 27 09:35:22 CEST 2011

how incredibly informative :D

mark down march 15th in your calendars. it's the chinese 
we-destroy-counterfeited-goods-day :D

-------- Original Message --------
Subject: 	[The IPKat] Lock them up or make they pay?
Date: 	Fri, 27 May 2011 00:09:33 -0700 (PDT)
From: 	Jeremy <jjip at btinternet.com>
Reply-To: 	jjip at btinternet.com
To: 	ipkat_readers at googlegroups.com


/What shall we do with them?
(photo by hmmlargeart <http://www.flickr.com/photos/e_hmm/489030150/>)/

*The IPKat put in four 16-hour days *at the recent International 
Trademark Association Meeting in San Francisco, but was still unable to 
cover more than a small amount of the programme.  He is therefore 
grateful to his friend and fellow blogger *Aurelia J. Schultz 
<http://www.blogger.com/profile/04296562132231894342>*for providing him 
with this note on one of the Table Topics which she attended:

    *"Counterfeit Goods, Civil Liability and Criminal Punishment*

    Lock them up or make them pay? An international group of lunch
    munchers explored the various considerations in this choice at one
    of this year’s *INTA* <http://www.inta.org/Pages/Home.aspx>**Table
    Topics: The Intersection of Criminal Prosecution and Civil Trademark
    Enforcement, moderated by *Michael J. Allan*
    <http://www.steptoe.com/professionals-596.html> of Steptoe & Johnson
    LLP.  In opting for one or other option, there are two main
    questions to ask: What do you want?  How likely are you to get it?

    /What do You Want? /

    In China, a successful criminal prosecution will get you the
    satisfaction of jail time for the defendant and a guarantee that
    confiscated counterfeit goods will be destroyed on 15 March,
    National Customs Day, when all confiscated counterfeit goods from
    across the country are destroyed.  It will not however, get
    destruction of the machinery used to produce the counterfeit goods
    and it will not get the trademark owner any money.  In the US, a
    successful criminal prosecution can include money for the trademark
    owner in the form of restitution, but the amount is far less than
    possible damages in a civil suit.

    Occasionally, it may happen that law enforcement begins a criminal
    investigation before the trademark owner brings a civil suit. 
    Things can get a little tricky when both cases wind up in the court
    system at the same time.  In the United States, the common procedure
    is for the defendant to ask for a stay of the civil proceedings
    until the criminal proceedings are complete.  Whether the court
    grants this stay can greatly affect the procedure of the civil case;
    thus the plaintiff needs to decide whether to argue in support of or
    against the stay.  A stay can make things easier for the plaintiff
    in the civil case because the government will do a large part of the
    discovery work through its investigation.  Plus, if the defendant is
    found guilty in the criminal case, that can be used to show
    liability in the civil case.  However, not having the stay can also
    benefit the plaintiff in the civil case by forcing the defendant to
    make some tough decisions.  Under the US Constitution’s
    *Fifth Amendment,
    the defendant has a right not to testify in a criminal proceeding. 
    But, if he chooses to testify in the civil case, that right is
    considered waived.  In Latvia, there are no choices to make; the
    stay is automatic.

    /How Likely are You to Get it? /

    One notable consistency across the countries, if you want criminal
    enforcement, you’re probably going to have to do the dirty work
    yourself.  Governments are short on resources, money, time and
    personnel.  In the United States, trademark owners who want to close
    down counterfeit operations are more likely to get results working
    with the local law enforcement and prosecution offices, rather than
    with any of the various federal agencies.  In China, success is more
    likely with engagement of officers at higher government levels, most
    notably the Ministry of Public Security.  Local decision makers are
    often friends with the counterfeiters.

    Convincing law enforcement to get involved can be challenging, even
    if you’re able to foot the bill.  Generally, you need to show that
    involvement in your case benefits the greater public.  In the United
    States, all you have to do is find some way to persuade law
    enforcement that this counterfeit goods operation is linked to
    terrorism.  In Latvia, the sell is a little more difficult unless
    the counterfeit good is physically dangerous; loss of tax revenue is
    often the best point.  But there are also some places where the
    convincing is not as needed.  In Latin America, criminal prosecution
    is the standard for trademark infringement and counterfeit goods. 
    Civil cases just take way too long.

    So when do you go for the money, when do you try for criminal
    enforcement and when do you have to choose?  Generally, you go for
    the money when you want money and you go for criminal enforcement
    when you are dealing with repeat counterfeiters and want the whole
    operation shut down, provided you can find a willing government
    partner and do some funding.  [Which  brings up a very interesting
    question about access to justice, but I’ll leave that for the
    comments section…]".

Posted By Jeremy to The IPKat 
<http://ipkitten.blogspot.com/2011/05/lock-them-up-or-make-they-pay.html> on 
5/27/2011 08:09:00 AM --
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